DD IP Holder LLC v. Sanel Ajdinovic
Claim Number: FA2306002049887
Complainant is DD IP Holder LLC (“Complainant”), represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Sanel Ajdinovic (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkindonutsprices.com>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 20, 2023; Forum received payment on June 20, 2023.
On June 20, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <dunkindonutsprices.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 June 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2023 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@dunkindonutsprices.com. Also on June 21, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 contends as follows:
Complainant, DD IP Holder LLC, uses the DUNKIN’ DONUTS mark to operate coffee shops and sell coffee beans, ground coffee, and related products.
Complainant asserts rights to the DUNKIN’ DONUTS mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <dunkindonutsprices.com> domain name is confusingly similar to Complainant’s mark as it contains the DUNKIN’ DONUTS mark in its entirety, merely adding the generic term “prices” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <dunkindonutsprices.com> domain name. Respondent is not licensed or authorized to use Complainant’s DUNKIN’ DONUTS mark and is not commonly known by the disputed domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to pass off as Complainant by hosting a spam blog. Additionally, Respondent’s inclusion of a disclaimer at the bottom of the at-issue domain name’s resolving website does not confer rights or legitimate interests. Furthermore, Respondent’s domain name redirects to Complainant’s own website.
Respondent registered and uses the <dunkindonutsprices.com> domain name in bad faith. Respondent registered and uses the at-issue domain name to pass itself off as Complainant by hosting a spam blog. Additionally, Respondent’s failure to respond to a cease and desist letter shows bad faith registration and use of the at-issue domain name. Furthermore, Respondent’s use of a privacy service when registering the at-issue domain name shows bad faith registration and use. Finally, Respondent registered and uses the at-issue domain name with constructive and/or actual knowledge of Complainant’s rights in the DUNKIN’ DONUTS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the DUNKIN’ DONUTS mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the DUNKIN’ DONUTS trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant, display advertisements, redirect traffic to Complainant’s genuine website, and capture visitor data.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the DUNKIN’ DONUTS mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <dunkindonutsprices.com>domain name contains Complainant’s DUNKIN’ DONUTS trademark less its domain name impermissible apostrophe and space followed by the suggestive term “prices”, with all followed by the “.com” top-level domain name. Respondent’s alterations to Complainant’s trademark in creating the at-issue domain name fail to distinguish the domain name from Complainant’s DUNKIN’ DONUTS trademark. Therefore, the Panel concludes that Respondent’s <dunkindonutsprices.com> domain name is confusingly similar to Complainant’s DUNKIN’ DONUTS trademark pursuant to Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Sanel Ajdinovic” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <dunkindonutsprices.com> domain name. The Panel therefore concludes that Respondent is not commonly known by <dunkindonutsprices.com> for the purposes of Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Respondent uses <dunkindonutsprices.com> to pass itself off as Complainant and host a spam blog. To that end, Respondent’s confusingly similar domain name addresses a website that contains Complainant’s trademark and copyrighted images, displays monetized advertisements, and features a “Contact Us” page that can be used for harvesting users’ information. Respondent’s use of the at-issue domain name to pass itself off as Complainant for commercial gain and to phish for personal information constitutes neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent’s <dunkindonutsprices.com> domain name also redirects to Complainant’s own website. The use of the domain name to direct internet users to the legitimate owner of the DUNKIN’ DONUTS trademark also does not constitute either a bona fide offering of goods or services under Policy ¶ 4 (c)(i), or a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii), and does not confer rights or legitimate interests on Respondent. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (“[A]n unconnected party has no right or legitimate interest to use an otherwise deceptive trademark . . . even if it is directed to the legitimate owner of the trademark . . . .”); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (“The Respondent’s adoption of the disputed domain name was clearly calculated to attract Internet users seeking the Complainant’s website. The Respondent was not authorized to use the Complainant’s mark in this way, and such conduct is inherently misleading. As such, it cannot give rise to a right or legitimate interest in the disputed domain name.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent’s use of <dunkindonutsprices.com> and its associated website to pass itself off as Complainant, capitalize on monetized advertisements, and phish for private information shows Respondent’s bad faith registration and use of <dunkindonutsprices.com> under Policy ¶ 4 (b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also, Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the DUNKIN’ DONUTS mark when Respondent registered <dunkindonutsprices.com> as a domain name. Respondent’s actual knowledge is evident given the mark’s notoriety, given the inclusion of the suggestive term “prices” in the domain name, and given Respondent’s use of the domain name to redirect to Complainant’s genuine website. Respondent’s registration of <dunkindonutsprices.com>with knowledge of Complainant’s trademark rights in DUNKIN’ DONUTS further shows Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dunkindonutsprices.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 16, 2023
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