DD IP Holder LLC v. Sarika Nair / Jackline Moris
Claim Number: FA2208002007268
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, USA. Respondents are Sarika Nair / Jackline Moris (“Respondents”), Sri Lanka.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dunkin-university.com> and <dunkinuniversity.org>, registered with NameSilo, LLC and Porkbun LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2022. The Forum received payment on August 5, 2022.
On August 8, 2022 and August 5, 2022, NameSilo, LLC and Porkbun LLC confirmed by e-mail to the Forum that the <dunkin-university.com> and <dunkinuniversity.org> domain names are registered with NameSilo, LLC and Porkbun LLC and that Respondent is the current registrant of the names. NameSilo, LLC and Porkbun LLC have verified that Respondent is bound by the NameSilo, LLC and Porkbun LLC registration agreements 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 August 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dunkin-university.com and postmaster@dunkinuniversity.org. Also on August 11, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has shown that there are many common themes and interrelations between the domain names. Both add the word “university” to the DUNKIN’ mark. They were registered only one day apart. Both WHOIS records list very similar Registrant email addresses (i.e., “kanu@faydaa.win” and “sanu@faydaa.win”) and both use the same website hosting provider. The websites to which both domain names resolve follow very similar graphic and text patterns and Complainant says the postal addresses provided in the WHOIS records for the domain names are either non-existent or are for expensive resort hotels, thus suggesting that Respondent has falsified this information.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Sarika Nair / Jackline Moris as “Respondent”.
A. Complainant
Complainant, DD IP Holder LLC, operates as one of the world’s largest franchised chains of coffee and baked goods shops. Complainant operates a program called Dunkin’ Brands University. This was created 20 years ago and consists of a series of educational seminars for existing and prospective DUNKIN’ franchisees to ensure consistency in the products sold across all worldwide restaurants.
Complainant has rights in the DUNKIN’ mark through registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”). Respondent’s <dunkin-university.com> and <dunkinuniversity.org> domain names are confusingly similar to Complainant’s DUNKIN’ mark.
Respondent lacks rights or legitimate interests in the <dunkin-university.com> and <dunkinuniversity.org> domain names. Respondent is not commonly known by the domain names, nor is Respondent authorized to use the DUNKIN’ mark. Respondent does not use the domain names in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent uses the domain names’ resolving webpages to impersonate Complainant in order to benefit from the goodwill associated with Complainant’s mark. The real purpose of these sites is to divert traffic from Complainant’s legitimate page through passing off, and then either gain click-through revenue from advertisements, from infecting users’ computers with malware, or simply to harvest users’ personal information through the “Leave a Comment” forms at the bottom of its websites.
Respondent uses the domain names for a fake blog of the type which has commonly come to be known as a spam blog or a “splog”. This is described in the Wikipedia entry on the topic as “a blog which the author uses to promote affiliated websites, to increase the search engine rankings of associated sites or to simply sell links/ads.” Copying a well-known trademark for the purpose of posting a splog to harvest user information, promote monetized advertisements, or to divert traffic away from a complainant’s legitimate website through impersonation and passing off has been held not to be a bona fide use of such mark. See, e.g., Fiberweb Geosynthetics Limited v. osa bun/ Whois Privacy Shield Services, D2015-0048 (WIPO Mar. 16, 2015) and LF, LLC v. Kas Is / cas issen, FA 1958712 (Forum Sept. 9, 2021).
Respondent registered the <dunkin-university.com> and <dunkinuniversity.org> domain names in bad faith with actual knowledge of Complainant’s DUNKIN’ mark and uses them in bad faith in order to benefit from the goodwill associated with the DUNKIN’ mark. Moreover, Respondent uses the confusingly similar nature of the domain names to attract users to a website to phish for user information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the DUNKIN’ mark through registration with multiple trademark agencies, including the USPTO (e.g., Reg. No. 4,290,078, registered February 12, 2013). The Panel finds Respondent’s <dunkin-university.com> and <dunkinuniversity.org> domain names to be confusingly similar to Complainant’s DUNKIN’ mark as they both incorporate the mark in its entirety, except for the apostrophe, and add the generic term “university”, an allusion to Complainant’s Dunkin’ Brands University name. These differences are insufficient to distinguish the domain names from the mark. The inconsequential “.com” and “.org” generic top-level domains (“gTLDs”) may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <dunkin-university.com> and <dunkinuniversity.org> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainants’ DUNKIN’ mark and its Dunkin’ Brands University program when Respondent registered the <dunkin-university.com> and <dunkinuniversity.org> domain names and that Respondent has registered and is using the domain names in bad faith for the purpose of obtaining personal information by impersonating Complainant.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkin-university.com> and <dunkinuniversity.org> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: September 9, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page