DD IP Holder LLC v. Sai Mugdha
Claim Number: FA2107001955756
Complainant is DD IP Holder LLC ("Complainant"), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is Sai Mugdha ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkinrunsonyou-com.com>, registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2021; the Forum received payment on July 19, 2021.
On July 19, 2021, FastDomain Inc. confirmed by email to the Forum that the <dunkinrunsonyou-com.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@dunkinrunsonyou-com.com. Also on July 21, 2021, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2021, the Forum received email from Complainant containing an email message that it had received that day from Respondent.
On August 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world's largest franchised chains of coffee and baked goods shops, with over 21,000 restaurants in 33 countries and global franchisee-reported sales of approximately $12 billion in fiscal year 2019. Complainant uses the DUNKIN', DUNKIN' DONUTS, and AMERICA RUNS ON DUNKIN' marks in connection with this business. Complainant has used one or more of these marks since 1954 and asserts that they have become famous as a result of extensive and longstanding use. Complainant owns registrations for these marks in the United States and other jurisdictions around the world.
Respondent registered the disputed domain name <dunkinrunsonyou-com.com> via a privacy registration service in April 2021. The domain name is being used for a website that has the appearance of an informational blog offering information on how to access Complainant's guest survey website. The website also copies various graphic elements owned by Complainant, including its logo, portions of its website, and photographs of its shops. Complainant calls this website "a sham pretext," alleging that its real purpose is to impersonate Complainant while deriving revenue from monetized advertisements appearing on the site, or to divert traffic from Complainant's site by promoting third parties, some of whom are competitors of Complainant. Complainant states that Respondent is not commonly known by the disputed domain name and has not been granted any license or other authorization to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <dunkinrunsonyou-com.com> is confusingly similar to its DUNKIN' and AMERICA RUNS ON DUNKIN' marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant received an email message from Respondent on July 22, 2021, stating in relevant part:
Sorry for the trouble. Kindly, take away the domain. I will be redirecting to the official dunkin donuts website now. No issues, thank you, regards.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <dunkinrunsonyou-com.com> incorporates Complainant's registered DUNKIN' mark (minus the apostrophe) and much of Complainant's registered AMERICA RUNS ON DUNKIN' mark, adding a hyphen, the nondistinctive term "com," and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's marks. See, e.g., DD IP Holder LLC v. Madalene Rosas, FA 1932592 (Forum Mar. 29, 2021) (finding <dunkinrunsonyou.me> and <dunkinrunsonyou.org> confusingly similar to DUNKIN' and AMERICA RUNS ON DUNKIN'); Webster Financial Corp. & Webster Bank, National Ass'n v. Rodica Ilea, FA 1525121 (Forum Nov. 18, 2013) (finding <websterbank-com.com> confusingly similar to WEBSTER BANK); State Farm Mutual Automobile Insurance Co. v. Hildegard Gruener, FA 1521506 (Forum Oct. 22, 2013) (finding <statefarm-com.com> confusingly similar to STATE FARM). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for website that passes off as Complainant for the apparent purpose of generating revenue for Respondent by linking or redirecting users to other websites, including competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Home Depot Product Authority, LLC v. Kermit Kuehn / Trafficmasterfloors.com, FA 1733479 (Forum June 23, 2017) (finding lack of rights or interests in similar circumstances); Homer TLC, Inc. v. ZILFIQAR AHMED / SUPER ADS JUNCTION, FA 1605517 (Forum Mar. 17, 2015) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating Complainant's mark, and is using the domain name for a website that passes off as Complainant while promoting Complainant's competitors. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Home Depot Product Authority, LLC v. Kermit Kuehn / Trafficmasterfloors.com, supra (finding bad faith in similar circumstances); Homer TLC, Inc. v. ZILFIQAR AHMED / SUPER ADS JUNCTION, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkinrunsonyou-com.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 20, 2021
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