WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dunkiní Donuts Incorporated and Dunkiní Donuts USA, Inc. v. RandomThinkers and Patrick Huba

Case No. D2001-0104

 

1. The Parties

The Complainant is Dunkiní Donuts Incorporated and Dunkiní Donuts USA, Inc. with place of business in Randolph, Massachusetts, United States of America (USA).

The Respondent is RandomThinkers and Patrick Huba, with address in Schenectady, New York, USA.

 

2. The Domain Name and Registrar

The disputed domain name is "dunkindoughnuts.com".

The registrar of the disputed domain names is Register.com, with business address in New York, New York, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail received by the WIPO Arbitration and Mediation Center ("the Center") on January 18, 2001, and by courier mail received by the Center on February 6, 2001. Complainant paid the requisite filing fees. On January 24, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Register.com (with the Registrarís Response received by WIPO on February 1, 2001).

(c) On February 6, 2001, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.

(d) On February 24, 2001, Respondent transmitted an e-mail message to WIPO stating its position regarding the subject dispute. On February 26, 2001, the Center advised Respondent that it would consider the aforesaid e-mail to constitute a response for purposes of this proceeding, and that WIPO would proceed with the appointment of a panel in this matter.

(e) On March 1, 2001, the Center invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 4, 2001, the undersigned transmitted by fax the executed Statement and Declaration to the Center.

(f) On March 7, 2001, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the Center by March 21, 2001. On March 7, 2001, the Panel received an electronic file in this matter by e-mail from the Center. The Panel subsequently received a hard copy of the file in this matter by courier mail from the Center.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant is the holder of a trademark registration for the word and design mark "DUNKINí DONUTS" on the Principal Register at the U.S. Patent and Trademark Office (USPTO), Reg. No. 1,159, 354, dated June 30, 1981, in International Class 30, covering "plain, glazed, coated and filled fried cakes, muffins and coffee for consumption on or off the premises", and is the holder of a service mark registration for the words "DUNKINí DONUTS" on the Principal Register at the USPTO, Reg. No. 748,901, dated April 30, 1963, in U.S. Class 100, covering "restaurant services". (Complaint, paragraph 11 and Annexes C & D). These registrations are valid and subsisting.

Complainant has used the "DUNKINí DONUTS" mark in commerce since at least 1963, based on the earliest of the dates of registration of that mark, and without prejudice to whether Complainant may hold earlier-arising rights in the mark.

According to the registrarís verification response to the Center, received on February 1, 2001, "RandomThinkers" and "Patrick Huba" are the listed registrant of the domain name "dunkindoughnuts.com". According to the WHOIS database record furnished by the registrar, the record for the disputed domain name was created on January 6, 2000, and was last updated on December 21, 2000.

Respondent has used the disputed domain name in connection with the posting of a Register.com standard form notification of registration. Complaint, paragraph 8, and Panel visit of March 21, 2001.

Respondent has offered the disputed domain name for sale at its "RandomThinkers.com" website. According to the website information, interested persons are requested to "make offer" for the disputed domain name by e-mail to "huba@randomthinkers.com". Complaint, paragraph 14 and Annex E.

On or about July 27, 2000, Complainant received an e-mail from Mr. Samuel Feuer, acting as chief executive officer of "Teque.com", stating:

"Do you have an interest in buying the domain name www.dunkindoughnuts.com?

let [sic] us know as we arent [sic] asking much."

"Teque.com" appears as part of Respondentís "RandomThinkers.com" home page, and absent any suggestion to the contrary from Respondent in its response, the Panel considers "Teque.com" to have acted on behalf of Respondent in respect of the disputed domain name.

On August 4, 2000, and September 5, 2000, (and by copy of October 3, 2000) Complainant (through its counsel) sent Respondent cease and desist and transfer demands with respect to the disputed domain name (Complaint, Annexes F-H). A further e-mail follow-up was sent by Complainantís counsel to Respondent on December 4, 2000. Respondentís only response to such demands was an e-mail regarding an asserted change of address. Complaint, paragraph 17.

The Service Agreement in effect between Respondent and Register.com subjects Respondent to Register.comís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant asserts that it has rights in the trademark and service mark "DUNKINí DONUTS" based on its long use of such mark in commerce and as evidenced by registration at the USPTO (see Factual Background supra).

Complainant alleges that the disputed domain name is confusingly similar to its mark since the disputed domain name differs from its mark principally by use of the term "doughnuts" in place of the phonetically equivalent term "donuts". Complainant alleges that Internet users who are familiar with its mark, but may not be familiar with the precise spelling of the mark, would be likely to use the disputed domain name to locate its website on the Internet.

Complainant states that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant asserts that Respondent registered and used the disputed domain name in bad faith, in particular by offering the name for sale directly to Complainant, and by posting the disputed domain name for sale on its publicly accessible website.

Complainant requests that the Panel direct the registrar to transfer the disputed domain name to it.

B. Respondent

Respondent denies that it registered the disputed domain name with the intention of selling it for a profit. Respondent asserts that it has plans for a website involving an individual dribbling a jelly doughnut around a home page and then "slamming it into a basketball hoop." The resulting jelly droppings would become navigation buttons for the website. The home page would be animated "to give it that high tech look and feel".

Respondent queries why Complainant has not "registered the other popular domain name extensions to DunkinDoughNuts."

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondentís response indicates that it did receive adequate notice.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant is the holder of trademark and service mark registrations for the term "DUNKINí DONUTS" in the United States and is using that mark in commerce (see Factual Background, supra). Complainantís registration of the "DUNKINí DONUTS" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 2) The Panel determines that Complainant has rights in the trademark and service mark "DUNKINí DONUTS". Based on the April 30, 1963, date of the earliest registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainantís rights in the "DUNKINí DONUTS" mark arose prior to Respondentís registration, on January 6, 2000, of the disputed domain name.

Respondent has registered the domain name "dunkindoughnuts.com". The disputed domain name (1) incorporates Complainantís mark with a spelling variation of the "donuts" portion of Complainantís mark, (2) eliminates the space between terms and the apostrophe following "DUNKIN" and (3) adds the generic top-level domain (gTLD) ".com".

The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to "DUNKINí DONUTS" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 3) Similarly, the elimination of the space between terms and elimination of the apostrophe following "DUNKIN" are without legal significance since those changes are dictated by technological factors and common practice among domain name registrants and users.

The term "doughnut" is the common spelling of Complainantís more colloquially spelled "DONUTS". (Footnote 4) The terms "doughnut" and "donut" are phonetically equivalent. An Internet user seeking Complainantís website, but unfamiliar with the precise spelling of Complainantís mark, is likely to use the common spelling variant "doughnuts" in entering an Internet address intended to locate Complainantís website. The Panel determines that the disputed domain name "dunkindoughnuts.com" is confusingly similar to "DUNKINí DONUTS" in the sense of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a trademark and service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

Respondentís only demonstrated use of the disputed domain name has been in connection with posting Register.comís standard form notice of registration home page, and offering the domain name for sale to Complainant and the public. Such use of the disputed domain name does not establish rights or legitimate interests in the name in the sense of paragraph 4(a)(ii) of the Policy. Respondentís mere assertion regarding its intended use of the name does not constitute demonstrable preparations for its use in connection with a bona fide offering of goods or services in the sense of paragraph 4(c)(i) of the Policy.

Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondentís] documented out-of-pocket costs directly related to the domain name" (id., paragraph 4(b)(i)).

Respondent offered to sell the disputed domain name to Complainant for valuable consideration in excess of its out-of-pocket expenses directly related to the name. Respondent also offered to sell the disputed domain name on its publicly accessible website. The Panel finds that Respondent registered and used the disputed domain name in bad faith as evidenced by its offer to sell it to Complainant for a price in excess of its out-of pocket expenses in connection with the name, as well as by its offer for sale to the public.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain name "dunkindoughnuts.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, RandomThinkers and Patrick Huba, has engaged in abusive registration and use of the domain name "dunkindoughnuts.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name "dunkindoughnuts.com" be transferred to the Complainant, Dunkiní Donuts Incorporated and Dunkiní Donuts USA, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: March 21, 2001

 


Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). This sole panelist notes that in an earlier administrative proceeding he recognized, based on a USPTO determination, that the term ".com" may acquire secondary meaning under appropriate circumstances. See America Online, Inc. v. Dolphin@Heart, Case No. D2000-0713, decided August 24, 2000.

4. See Miriam-Webster Online Collegiate Dictionary for reference to "donut" as a variant of "doughnut" (http://www.m-w.com/cgi-bin/dictionary).