Complainant is DD IP Holder LLC of, United States of America, represented by Plave Koch PLC of United States of America.
Respondent is Registrant , Domain Administrator of Hong Kong SAR of China.
The disputed domain name <dunkindounts.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2009. On March 2, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On March 11, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2009.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on April 16, 2009. 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.
Complainant DD IP Holder LLC, its predecessors and “Dunkin Donuts” franchisees provide restaurant and carry-out services and products, such as coffee and doughnuts, throughout the United States and around the world, under Complainant's DUNKIN DONUTS trademark. Complainant, its predecessors and “Dunkin Donuts” franchisees have extensively used and promoted the DUNKIN DONUTS trademark since 1950.
The disputed domain name was registered on October 18, 2002.
Complainant's DUNKIN DONUTS trademark registrations and use predate Respondent's registration of the disputed domain name, also in Hong Kong.
Complainant claims that:
1) The disputed domain name is almost identical and therefore confusingly similar to Complainant's DUNKIN DONUTS registered trademark and to Complainant's official website “www.dunkindonuts.com”.
2) This is a “typosquatting” case. The Domain Name typografically inverts the order of the “n” and “u” that would be needed to correctly spell “donuts”;
3) Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorised the Respondent to register or use any of the DUNKIN DONUTS trademarks in any manner;
4) Respondent has never been commonly known as “Dunkindounts” or by a similar name;
5) Respondent has never used or made preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent has sought to capitalize on Complainant's goodwill in the disputed domain name, by directing Internet users to Respondent's website and using the disputed domain name and the traffic directed through the Respondent's website to promote the Respondent's website to other businesses for their advertising activities;
6) Respondent's website includes links that incorporate Complainant's trademarks and redirects to Complainant's competitors;
7) Respondent is making an illegitimate, commercial, unfair use of the disputed domain name, with the intent, for commercial gain, to misleadingly divert consumers;
8) Respondent has registered and is using the disputed domain name in bad faith;
9) Respondent knew of Complainant's trademarks when it registered the disputed domain name;
10) Respondent's failure to reply to Complainant's cease and desist letter infers that the disputed domain name was registered in bad faith;
Complainant requests that the disputed domain name be transferred to the Complainant.
Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 lists three elements that Complainant must prove to merit a finding that the domain name registered by the Respondent be transferred to the Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
2) the 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 established that it has prior rights in the trademark DUNKIN DONUTS and has stated that the fact that the disputed domain name typographically inverts the order of the “n” and “u” that would be needed to correctly spell “donuts” is not sufficient to avoid confusion.
This Panel agrees with the Complainant's thesis and previous decisions, which affirmed that names with typographical errors are confusingly similar and satisfy the first requirement of paragraph 4(a) of the Policy.
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent is making a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Respondent has no connection or affiliation with Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant's trademark. Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Respondent does not appear to make any legitimate use of the domain name for non-commercial activities. On the contrary, it appears that Respondent's used the disputed domain name to direct consumers to websites that offered goods and/or services in competition with Complainant.
Accordingly, the Panel finds that Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the holder has registered or has acquired the domain name 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 the holder's documented out-of-pocket costs directly related to the domain name; or
ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's web site or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's web site or location or of a product or service on the holder's web site or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
As regards Respondent's use of the domain name, it appears that Respondent's website was used to direct consumers to websites that offered also services in competition with those of Complainant. By deflecting users, Respondent has shown bad faith use of the domain name that clearly falls within the example given in paragraph 4(b)(iv) of the Policy: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
In addition, the contents which relate to Complainant's field of activity, set by Respondent on the website “www.dunkindounts.com” are also an indication of Respondent's knowledge of Complainant's trademarks and activity at the time Respondent applied for the disputed domain name. In Credit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. La Porte Holdings, Inc., was affirmed WIPO Case No. D2004-1110:
“It is obvious, mainly from the categories of hyperlinks used by the Respondent on the litigious websites (banking and financial), that the latter was well aware of both Complainant's identity and activities.”
Moreover, this Panel considers that Respondent's use of a slight variation of Complainant's trademark can be regarded as typosquatting. The Panel agrees with Complainant's view that typosquatting itself is further inference of bad faith.
In view of the above, considering the fame of Complainant's trademarks, and in the absence of contrary evidence the Panel finds that there are good reasons to believe that Respondent had actual knowledge of Complainant's trademark when it registered the disputed domain name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant's trademark and activities at the time of the registration of the disputed domain name may be considered an inference of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil WIPO Case No. D2000-1409. “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.
Finally, it is the Panel's opinion that not replying in anyway to the warning letter sent by Complainant's representative is further inference of Respondent's bad faith. See, Encyclopedia Britannica, Inc v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330 (Failure to positively respond to a complainant's efforts to make contact provides strong support for a determination of bad faith); see also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where respondent refused to voluntarily transfer the domain name and failed to respond to demands by complainant.)
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 <dunkindounts.com> be transferred to the Complainant.
Dated: April 27, 2009