WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc. v. Dazzledesigns
Case No. D2004-0436
1. The Parties
The Complainants are Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc., Randolph, Massachusetts, United States of America, represented by Piper Rudnick, United States of America.
The Respondent is Dazzledesigns, Genevaraon, Sweden.
2. The Domain Name and Registrar
The disputed domain name <dunkindonutsbeware.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2004. On June 14, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 14, 2004, eNom transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2004.
The Center appointed Leon Trakman as the sole panelist in this matter on July 13, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainants, “Dunkin’ Donuts” Incorporated and “Dunkin’ Donuts” USA, Inc., instituted this proceeding against Respondent pursuant to the Uniform Domain Name Dispute Resolution Policy, as approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on October 24, 1999; the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, and the World Intellectual Property Organization (“WIPO”) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999.
Complainants provide restaurant and carry out services and products, such as coffee and donuts, internationally under their DUNKIN’ DONUTS marks. Its principal place of business for the operation and franchising of “Dunkin’ Donuts” shops is in Randolph, Massachusetts. “Dunkin’ Donuts” USA, Inc. is a subsidiary of “Dunkin’ Donuts” Incorporated, and is the registered owner of the DUNKIN’ DONUTS name and mark in the United States. Complainants themselves own all of the “Dunkin’ Donuts” names and registrations outside the United States.
The Respondent in this administrative proceeding is Dazzledesigns, that registered the disputed domain name <dunkindonutsbeware.com>. The WHOIS record identifies an address for Respondent in Sweden. The Registrar is eNom, Inc., with an address in Washington, USA.
5. Parties’ Contentions
Complainants allege the following: their franchisees have extensively used and promoted the “Dunkin’ Donuts” name and marks since 1950. To help protect their trademark rights and to put others on notice of these rights, they have obtained numerous trademark registrations for the mark DUNKIN’ DONUTS in. the United States, including but not limited to, Registration No. 748,901, and Registration No. 1,159,354 on the Principal Register of the United States Patent and Trademark Office, as attached to the Complaint. They allege further that they have obtained trademark registrations for their DUNKIN’ DONUTS marks in more than ninety (90) countries around the world, including five (5) registrations in Sweden. Complainants applied for the earliest of these Sweden registrations in 1983, which precedes, by (20) twenty years, Respondent’s registration of the disputed domain name.
Complainants maintain that their DUNKIN’ DONUTS name and mark is distinctive and famous and has enjoyed such fame since long prior to the time Respondent registered and began using the domain name. The “Dunkin’ Donuts” system is the world’s largest coffee and baked goods chain, serving more than 2 million customers a day. There are over 5,500 “Dunkin’ Donuts” locations worldwide; and there are approximately 4,000 “Dunkin’ Donuts” shops in 39 states throughout the United States, with approximately 1,500 “Dunkin’ Donuts” shops in another 31 countries. These “Dunkin’ Donuts” locations sell over 4.4 million donuts daily and 1.8 million cups of coffee daily. Complainants promotes its DUNKIN’ DONUTS name and marks through a variety of media including the Internet. They maintain a web site at the domain name <dunkindonuts.com>, which contains important brand and product information. The Complaint includes appendices in support of these allegations.
Complainants allege that they have not authorized any persons or entities other than their franchisees and licensees to use the DUNKIN’ DONUTS name and marks; that Respondent is neither a franchisee nor licensee of Complainants; that Respondent has not been authorized to use the DUNKIN’ DONUTS name and marks; and that on or about February 28, 2004, Respondent registered the domain name through eNom, Inc. without Complainants’ consent or authorization, more than 50 years after Complainants began their use of the DUNKIN’ DONUTS name and marks.
Upon information and belief, Complainants propose that Respondent was familiar with the famous DUNKIN’ DONUTS name and marks at the time of registration and intentionally registered a name that is confusingly similar to Complainants’ name and marks in order to profit from the goodwill associated with the name and marks or to profit from selling the domain name. Complainants also contend that Respondent directed the domain name to a pornographic website which contains hardcore pornographic images, and which sells various services connected with pornography; and that Respondent uses “mouse-trapping” techniques to open browser windows in order to prevent visitors from leaving the pornographic website once it has been accessed through the disputed domain name. Appendices are attached to the Complaint in support of these allegations.
Complainants contend that Respondent’s purpose in registering the domain name and associating it with a pornographic website is to wrongfully misappropriate the goodwill symbolized by the “Dunkin’ Donuts”; that Respondent’s incorporation of Complainants’ DUNKIN’ DONUTS name and marks, into a domain name for a pornographic website tarnishes Complainants’existing marks and reputation. Respondent is not known as <dunkindonutsbeware.com>; and Respondent has not used, nor intends to make legitimate use of the domain name in any bona fide offering of goods or services.
Complainants request that the disputed domain name immediately be transferred to it.
The Respondent did not reply to the Complainants’contentions.
6. Discussion and Findings
A: Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the DUNKIN’ DONUTS name and registered marks and to Complainants’ Marks, including but not limited to their website “www.dunkindonuts.com.” In particular, the disputed domain name incorporates the registered DUNKIN’ DONUTS mark. The only difference between the disputed domain name and Complainants’domain name and marks is the addition of the generic term “beware” in the disputed domain name. UDRP Panels have held in the past that the addition of a generic term to a well known trademark in a domain name does not eliminate confusion. See, eg, Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; Nokia Corporation v. Nokiagirls.com a.k.a. MCC, WIPO Case No. D2000-0102.
The Panel also finds that the use of the disputed domain name by Respondent will cause Internet users to confuse Complainants’ marks and name with that of Respondent, and that the mistaken association between the names is likely to dilute or otherwise tarnish Complainants’ long established and internationally recognized marks and name.
B. Rights or Legitimate Interests
Complainants have rights to and interests in their marks and domain name which they have exercised through their continuous use of the DUNKIN’ DONUTS name and marks for over half a century before Respondent registered its disputed Domain Name. In contrast, Complainants have not authorized the Respondent to use their marks or domain name. Nor will this Panel legitimate Respondent’s use.
The Panel holds that: Respondent has no legitimate interests in the disputed domain name under Paragraph 4(c) of the Policy; it has violated Complainants’ rights and legitimate interests through its registration and use of the disputed domain name contrary to Complainants’well recognized and global marks and name; it has failed to make a legitimate, non-commercial, or fair use of the disputed domain name; and it has registered and used that name to operate a pornographic web site. The Panel notes that previous UDRP Panels have concluded that the use of a domain name only to link to a pornographic website does not qualify as a legitimate right or interest under the Policy. See e.g, Barry Diller v. INTERNETCO Corp., WIPO Case No. D2000-1734. The Panel also holds that Respondent’s registration of the disputed domain name does not constitute a legitimate use of goods or services.
C. Registered and Used in Bad Faith
Respondent’s use of the domain name, incorporating Complainants’s name and registered marks to a pornographic website is per se evidence of bad faith. See eg. Yahoo! Inc. v. Dill Dough d/bla Yasexhoo, NAF Case No. FA00245971 (2004); Ty Inc. v. O.Z. Names, WIPO Case No. D2000-0370; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022. Respondent’s bad faith is also evident in its resort to “mouse-trapping” techniques on its pornographic website which prevent Internet users from leaving its website. See e.g. Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601.
Respondent’s registration and use of the disputed domain name also demonstrates a reckless disregard of the Complainants’ name and marks; it also has tarnished Complainants’reputation. See e.g. America Online, Inc. v. Viper, WIPO Case No. D2000-1198. Bearing in mind that Internet users and purchasers of Complainants’ products are average consumers who may well both eat donuts and use the Internet, it is reasonable to conclude that the Respondent’s bad faith extends to both.
Respondent’s registration of the disputed domain name that is distinctly similar to Complainants’world-famous marks and domain name constitutes a willful and intentional attempt to take advantage of Complainants’ name and constitutes per se bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <dunkindonutsbeware.com>, be transferred to the Complainants.
Dated: July 17, 2004