DD IP Holder LLC v Manpreet Badhwar
Claim Number: FA1405001562029
Complainant is DD IP Holder LLC (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Manpreet Badhwar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dunkin.menu>, registered with GoDaddy.
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2014; the National Arbitration Forum received payment on June 4, 2014.
On May 30, 2014, GoDaddy confirmed by e-mail to the National Arbitration Forum that the <dunkin.menu> domain name is registered with GoDaddy and that Respondent is the current registrant of the name. GoDaddy has verified that Respondent is bound by the GoDaddy 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 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2014 by which Respondent may file a Response.
A timely Response was filed on June 25, 2014.
On June 30, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
On June 30, 2014 Complainant filed timely Additional Submissions.
On July 10, 2014 Respondent filed Additional Submissions. Complainant objected to the admission of Respondent’s Additional Submissions. Having considered the file, this Panel has decided to admit and consider them in reaching this decision.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
Complainant relies on its rights in the trademarks DUNKIN’ and DUNKIN’ DONUTS through its trademark registrations in the United States of America and the European Union, details of which are set out in the findings below, and also through its extensive use and promotion of the DUNKIN’ and DUNKIN’ DONUTS marks in commerce in the years since Complainant was established in Quincy, Massachusetts in 1950. Complainant submits that it has since acquired substantial goodwill in the marks DUNKIN’ and DUNKIN’ DONUTS and now has almost 11,000 restaurants in 33 countries with a global franchise revenue of US$7.4 billion in 2013, throughout the world.
Complainant submits that the disputed domain name is almost identical and confusingly similar to Complainant’s DUNKIN’ trademark. Complainant submits that in making the comparison, the ”.menu” gTLD suffix may be ignored and that the only difference between the disputed domain name and Complainant’s mark is the omission of the apostrophe which is the last character in the registered trademark. Complainant adds that the gTLD ”.menu” extension amplifies the similarity between the disputed domain name and Complainant’s mark. The term “menu” is a clear reference to Complainant’s food and restaurant service business.
Complainant further submits that Respondent has no rights or legitimate interest in the disputed <dunkin.menu> domain name.
Complainant argues that Respondent is not commonly known by the <dunkin.menu> domain name; and Respondent is currently using the disputed domain name to send Internet users to Respondent’s Facebook account.
Complainant alleges that Respondent’s registration and use of the disputed domain name amounts to bad faith. Respondent is free to profit from the likelihood Internet users may believe the domain name’s resolving website evidences some connection between Complainant and Facebook. Respondent had actual and constructive notice of the DUNKIN’ mark when registering this <dunkin.menu> domain name.
Respondent submits that he is entitled to use the word “dunkin” as a domain name for his business. He argues that the word “dunkin” is a slang abbreviation of the term “dunking” which is a descriptive term is used in basketball.
Respondent claims to have rights and legitimate interest in the domain name as he is using it to develop a business providing sports training in schools in New Delhi, and in the meantime is using it as the address of a Facebook account on which he promotes his small business as a retailer of garments.
Respondent submits that the disputed domain name was registered to encompass Respondent’s basketball concept in domain name form. As evidence in support of this assertion, Respondent has submitted copies of posters which he claims were distributed in New Delhi, to promote his summertime basketball courses for students to learn techniques for playing the basketball including the move called “dunkin” and these techniques are referred to as the “dunkin menu”.
Respondent denies that he has registered and is using the disputed domain name in bad faith. He argues that he is entitled to use the domain name <dunkin.menu> for his sports business and that Complainant is not in a position to object to such use as it is engaged in a different business entirely.
He denies that he is intercepting Internet traffic bound for Complainant. He denies any commercial benefit from his use of the disputed domain name except to promote his business through his Facebook page. He denies ever having received any advertisement click income.
C. Complainant’s Additional Submissions
In timely Additional Submissions, Complainant submits that it has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name and that in such circumstances the burden has shifted to Respondent to rebut such assertions. Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No. FA741828 (2006).
Complainant submits that Respondent is a serial cybersquatter and denies his claims that it is merely a middle class entrepreneur who has been working for many years in the field of Basketball Sport. Complainant has furnished the results of a reverse Whois search against Respondent’s email address which was performed at <www.DomainTools.com> and alleges that the results show that Respondent is actually an experienced domainer who owns in excess of 360 domain names, many of which copy both locally and globally well-known trademarks. The following is a sample of Respondent’s domain names, all of which redirect to <www.Facebook.com> : <campbells.recipes>; <carlsjunior.menu>; <droetker.menu>; <hardrock.menu>; <justeatIn.menu; <kakedahotel.menu>; <leancuisine.menu; <marriott.menu; <misterdonut.menu>; <mosburger.menu>; <petrus.menu>; <planethollywood.menu>; <quorn.recipes>; <royrogers.menu>; <sbarro.menu>; <wimpy.menu>.
Complainant submits that nowhere on Respondent’s Facebook page is there any mention of basketball and barely any mention of any sport whatsoever.
Complainant further submits that the posters which Respondent submitted purporting to show that he had hosted basketball classes in schools have been fabricated for the purpose of defending this present action. Complainant’s counsel placed telephone calls to all of the schools listed in the various posters and fliers submitted by Respondent. Without exception, the representatives of each of the eight schools which answered the telephone stated that they had never heard of Respondent or any basketball course called “Dunkin”.
D. Respondent’s Additional Submissions
In Additional Submissions considered by this Panel, notwithstanding an objection filed by Complainant, Respondent accepts that he has owned some domain names since 2010 but argues that since then he has had many opportunities to make monetary gains by transferring the ownership of the domain names but has not done so because his sole objective is to use the domain names to assist him to establish several businesses in the near future. He further argues that it is not unlawful to register more than one domain name in anticipation of using it for a genuine business such as a franchise at a future date. He submits that he has never asked any organization for monetary benefits pertaining to any of his domain names nor does he intend to do so. He has in fact refused to sell the disputed domain name when approached by the Complainant’s counsel.
Referring to the allegation that he has fabricated the posters that he submitted as evidence of use of the words “dunkin” and “donuts” for his basketball training summer class, Respondent states that he has not succeeded in establishing his basketball training in the schools in New Delhi because the school administrations are reluctant to allow children of poor families to play in their playgrounds. Hence even though the flyers are real, at times when the schools refused him access to their facilities he taught the same set of children the basketball dunking styles at community grounds that are free for use anytime.
On the evidence submitted, this Panel finds that Complainant has a valuable and established goodwill in the DUNKIN’ and DUNKIN’ DONUTS trademarks that are used in its franchised restaurants over 33 jurisdictions across the world.
Complainant is the owner of the following registered trademarks:
· US registered trademark DUNKIN’ DONUTS, registration number 0748901, registered on April 30, 1963 for services in international class 042;
· US registered trademark DUNKIN’ DONUTS logo, registration number 1159354, registered on June 30, 1981 for goods in international class 030;
· US registered trademark DUNKIN’ registration number 4,290,078, registered on Feb. 12, 2013 for services in international class 043;
· Community Trade Mark DUNKIN’ logo registration number 095380, registered on January 20, 1999 for goods in class 29.
· Community Trade Mark DUNKIN’ COFFEE logo registration number 11236726, registered on May 22, 2013 for goods and services in classes
30, 32 and 43.
Respondent is a businessman who has a portfolio of domain names, some of which refer to well-known trademarks.
The disputed domain name was registered on March 31, 2014.
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.
Complainant has furnished evidence of its ownership of the DUNKIN’ and DUNKIN’ DONUTS trademark and service mark through its abovementioned USPTO and CTM registrations.
This Panel finds that the disputed domain name is almost identical to, and confusingly similar to Complainant’s DUNKIN’ trademark. In the context of the domain name registration in suit, the absence of the apostrophe is not in any way significant and certainly does not in any way distinguish the disputed domain name from Complainant’s mark.
It is well established that a panelist should normally ignore the gTLD element when making a comparison between a complainant’s mark and a domain name.
If this Panel were to simply take that approach in the present case Complainant would succeed in the first element of the test in Policy Paragraph 4(a)(i) because of the similarity of the mark DUNKIN’ and the word “dunkin”.
However because there is a reference to food and restaurants inherent in the new gTLD ”.menu”, the combination of the “dunkin” element with the ”.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.
This Panel finds that Complainant has succeeded in the first element of the test in Policy Paragraph 4(a)(i).
Complainant has argued that Respondent has no rights or legitimate interest in the disputed domain name relying in particular on the strength of its international reputation. While additional information and argument would have been useful, this Panel can infer from the file that there is no commercial relationship between Respondent and Complainant and in the circumstances, Complainant has made out a prima facie case. The burden has therefore shifted to Respondent to prove that he has such rights.
Respondent relies on his right to use a descriptive word “dunkin” as a domain name to promote his basketball courses. However Respondent has not furnished any evidence that he has ever held such courses. In an annex to the Response, he initially presented a number of copies of posters and flyers that had been prepared to promote summer courses in New Delhi schools. When challenged that such documents were fabricated for the purpose of this Complaint, Respondent then asserted that while he had used the posters and flyers for promotional literature, he had failed to organize the events due to impediments put in his way by the management of the schools. In the circumstances, this Panel finds that Respondent has failed to show any bona fide use of the disputed domain name and has therefore failed to discharge the onus of proof required to establish rights or legitimate interest in the domain name.
In the circumstances, Respondent is entitled to succeed in the second element of the test in Policy Paragraph 4(a)(ii)
Having reviewed the submissions of both parties, this Panel holds that the disputed domain name was registered and is being used in bad faith and Complainant is entitled to the relief sought in this Complaint.
Complainant has established an enormous goodwill and reputation in its use of the trademarks and service marks DUNKIN’ and DUNKIN’ DONUTS in a world-wide enterprise that has built up to an annual revenue of US$ 4.4 billion.
Respondent is clearly a sophisticated businessman who has acquired a much focused portfolio of Internet domain names which incorporate well-known marks. On the balance of probabilities Complainant’s marks were well-known to Respondent when he registered the disputed domain name.
While he denies that he has registered the disputed domain name to re-sell it or to acquire click-through revenue, he is using the domain name to divert Internet users to his Facebook page which purports to promote his business.
This Panel finds that on the balance of probabilities Respondent chose and has used the disputed domain name because of its confusing similarity to Complainant’s trademark and service marks and not for the reasons that he has put forward. His explanations are ingenious but improbable and unsupported by any evidence.
It is significant that on one hand he claims to be holding the disputed domain name which incorporates Complainant’s mark for the purpose of a planned basketball training business whereas on the other hand his explanation for holding other domain names that incorporate third party marks is that he hopes to acquire franchises. In the eyes of this panel, this very much undermines the credibility of Respondent’s explanations.
In the circumstances this Panel finds on the balance of probabilities that by his registration and use of the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his Facebook page, by taking predatory advantage of Complainant’s goodwill by intercepting Internet traffic which would benefit Complainant.
Complainant has therefore succeeded in the third element of the test in Policy Paragraph 4(a)(iii) also and is entitled to succeed in this Complaint.
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.menu> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman Panelist
Dated: July 14, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page