Complainant is DD IP HOLDER LLC of Canton, Massachusetts, United States of America, represented by Plave Koch PLC, United States.
Respondent is Ali Abdelwahed (AEORG-MAHMEDO) of Sharjah, United Arab Emirates.
The disputed domain names <dunkin-donuts.ae> and <dunkindonuts.ae> (“Domain Names”) are registered with AE Domain Administration (.aeDA).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2009. On July 15, 2009, the Center transmitted by email to .aeDA a request for registrar verification in connection with the Domain Names. On July 16, 2009, .aeDA transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. After some email correspondence between the Center and the Registry on August 9, 2009 the Registry confirmed that Domain Name Dispute Resolution Policy for .ae applied to the case. The Center verified that the Complaint satisfied the formal requirements of the Domain Name Dispute Resolution Policy for .ae (the “Policy” or “aeDRP”), the Rules for Domain Name Dispute Resolution Policy for .ae (the “Rules”), and the WIPO Supplemental Rules for Domain Name Dispute Resolution Policy for .ae (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 2, 2009.
The Center appointed Knud Wallberg as the sole panelist in this matter on September 14, 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.
After the proceedings in this matter were initiated there was some correspondance between Respondent and the Center, which Complainant has been informed of and commented on, regarding the possible expiration of the domain name registrations due to non-payment of renewal fees. Since Respondent is still listed as registrant of the domain names, since Complainant has expressed his wish to continue the proceedings and since the Registry has confirmed that the domain names will remain in registrar lock until the case has been decided upon, the Panel has decided to continue the proceedings.
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.
Complainant and its predecessors also have obtained trademark registrations for its DUNKIN' DONUTS marks in more than ninety (90) countries around the world. Respondent is believed to be in the United Arab Emirates (“UAE”). Complainant owns, as further described below, at least 13 trademark registrations in the UAE, such as UAE Trademark Registration Nos. 3760 and 3801 for the mark DUNKIN' DONUTS and logo.
Additionally, Dunkin Donuts shops licensed by Complainant have been operating in the UAE since 1997, and there are now approximately 50 shops in the UAE, operated by licensees of Complainant. An authorized licensee of Complainant in the UAE maintains a website, authorized by Complainant, at the domain name <dunkindonutsuae.com>.
Complainant's Trademark Rights - Domain Names are Identical or Confusingly Similar to Complainant's Registered Trademarks
(Policy, paragraph 6(a)(i), Rules, paragraph 3(b)(viii))
The Domain Name, <dunkindonuts.ae>, is identical to Complainant's registered name and marks and to Complainant's official website – <dunkindonuts.com>. The Domain Name, <dunkin-donuts.ae>, is virtually identical, differing only in that it includes a hyphen or dash between the two words of the trade name and trademark.
Panels, including those reviewing the use of .ae domain names, have routinely held that the addition of the generic top-level domain (gTLD) “.com” or country code top-level domain, is without legal significance from the standpoint of comparing a disputed domain name to a trademark, and have similarly concluded that changes such as the elimination of spaces between terms, elimination of apostrophes, or addition of certain generic terms or permitted punctuation, are without legal significance.
Any use of the Domain Names by Respondent will cause dilution of Complainant's valuable marks through confusion among Internet users who will mistakenly assume an association between the Domain Names and Complainant. Additionally, if Respondent sells the Domain Names to any third party, then such purchaser's use of the Domain Names will cause dilution of Complainant's valuable marks through confusion among Internet users who will mistakenly assume an association between the Domain Names and Complainant.
Respondent Has No Legitimate Interests in Respect of the Domain Names
(Policy, paragraph 6(a)(ii), Rules, paragraph 3(b)(ix)(2))
Respondent registered the Domain Names through IP Mirror without Complainant's consent or authorization (the dates of registrations are not provided in the publicly available information about the registration). Respondent has never been authorized by Complainant to use its trademarks in any way.
Upon information and belief, Respondent was familiar with the Dunkin' Donuts name and marks at the time of registration, in direct violation of the Policy, paragraph 4(b) and paragraph 6(a). Moreover, at the time of Respondent's registration of the Domain Names, Respondent was on constructive notice of Complainant's trademarks registered with the United States Patent & Trademark Office and in the Trademark Register of the UAE with the Ministry of Economy and Commerce.
Upon information and belief, particularly considering the international fame of Complainant's trademark, including in the UAE, Complainant asserts that Respondent intentionally registered domain names that are identical or nearly identical to the DUNKIN' DONUTS trademark in order to trade off of the goodwill associated with Complainant's marks, and to hold the Domain Names simply for the purpose of selling them for profit – either to Complainant – or to third parties if Complainant would not agree to pay the excessive price set by Respondent.
In addition to the blatant attempts to sell the Domain Names to Complainant, Respondent's bad faith intent is further confirmed by the large number of trademarked names that Respondent apparently registered in the .ae ccTLD, apparently for the purpose of trying to sell those domain names as well.
On information and belief, Respondent has never been known as “Dunkindonuts” or a similar name. The only information available provided on the WhoIs database printout lists Respondent as Ali Abdelwahed, at @hotmail.com. Therefore, Respondent does not have rights or legitimate interests under paragraph 6(c)(ii) of the Policy.
Respondent has made no bona fide offering of goods or services using the name “dunkindonuts” or similar name. Instead, Respondent has sought to capitalize on Complainant's goodwill in the Domain Names for Respondent's own profit, as described below. As such, Respondent cannot show under paragrapd 6(c)(i) of the Policy that he has made any use of, or demonstrable preparation to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.
In addition, Respondent initiated contact with Complainant and offered to sell one of the Domain Names <dunkindonuts.ae> and another domain name to Complainant for USD 15,000, a price substantially in excess of Respondent's costs. In response to the initial email, Complainant emailed Respondent and stated that Complainant had trademark rights regarding the Domain Names, that Complainant wished to own those Domain Names, and asked Respondent about its plans for the Domain Names. This correspondence was followed by additional exchange of emails between the parties regarding these issues.
Respondent's unauthorized attempts to sell the Domain Names to Complainant, and subsequent refusal to transfer to the Domain Names to Complainant in exchange for payment of Respondent's costs in registering the Domain Names, are not bona fide use under Paragraph 6(c)(i) or in good faith under Paragraph 6(c)(iii)). Instead, this conduct is clear evidence that Respondent's intentions were to sell the Domain Names for a profit, which constitutes bad faith as further described below.
Respondent continues to hold the domain names and makes no legitimate use of the domain names. Rather, he appears to be holding the domain names for the sole purpose of selling them for commercial gain, as further described below. Previous panels (including panels reviewing .ae domain disputes) have concluded that this type of conduct can not be considered as a legitimate noncommercial or fair use of a domain name. Respondent has advertised the Domain Names for sale on (at least) two websites, which are “www.bazaar.ae” and “www.uaeinsider.com”. In each instance, Respondent's advertisements offer the Domain Names, as well as dozens of other domain names, which include many .ae domain names that correspond to trademarked names, including those of other well-known U.S. and U.K. trademark holders such as <gillette.ae>, <costacoffee.ae>, <chilis.ae>, <dominos.ae>, <claires.ae>, <mothercare.ae>, <jennycraig.ae>, <krispykreme.ae>, and <heinz.ae>.
Upon information and belief, Respondent has never used the Domain Names, but rather holds them simply for the purpose of selling them for profit, based on upon the goodwill associated with Complainant's mark. Respondent's unauthorized attempts to trade upon the goodwill and reputation of Complaint's marks are not bona fide uses under paragraph 6(c)(i) or in good faith under paragraph 6(c)(iii)), and instead was in bad faith.
Each Domain Name was registered and is being used in bad faith
(Policy, paragraphs 6(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Complainant asserts that Respondent's registration of the Domain Names was in violation of the Policy and in bad faith.
Respondent has thus not used the Domain Names for legitimate personal or business purposes. Instead, Respondent offered to sell the Domain Names, indicating that Respondent intentionally registered the Domain Names only for the purpose of selling the Domain Names at a profit. This bad faith intent is further confirmed by both Respondent's attempts to sell the Domain Names to Complainant for a profit and Respondent's subsequent refusal to transfer to the Domains to Complainant in exchange for payment of Respondent's costs in registering the Domain Names (as described in paragraph 39 above). This is the type of conduct that panels have found to be classic examples of cybersquatting and evidence of bad faith.
Further support and evidence that Respondent's actions were taken in bad faith is that the fact that Respondent offered to sell the Domain Names, along with the large number of trademarked names that Respondent registered in the .ae ccTLD, apparently for the purpose of trying to sell those domain names as well.
Respondent did not specify on in his advertisements the price for the Domain Names. However, it is evident from Respondent's advertisements that Respondent is engaging in a business for which the purpose is to sell domain names for a profit. This bad faith effort to profit from the goodwill in Complainant's trademarks is underscored by both the large number of domains that Respondent is advertising for sale, and that many of these consist of registered trademarks of third parties, including numerous famous trademarks. Respondent did not respond to Complainant's multiple efforts to enforce its trademark rights and requests that Respondent voluntarily transfer the Domain Names to Complainant.
Pursuant to paragraph 6(b)(i) of the Policy, Respondent's acts constitute bad faith in that Respondent has “registered or … acquired the Domain Name[s] primarily for the purpose of selling [them]” to the complainant or to a competitor”. The precedent includes WIPO panel decisions regarding .ae cc TLDs.
Further, under paragraph 4(b) of the Policy, Respondent was required to represent and warrant to the Registry that “to your knowledge, the Registration or the use, direct or indirect, of the Domain Name by you does not and will not infringe upon or violate the legal rights of any third party”. Considering the fame of Complainant's trademarks, it is not conceivable that Respondent registered the Domain Names in compliance with the representations and warranties to the Registry.
This violation of the Policy is further indication of Respondent's bad faith in registering the Domain Names.
In addition to the direct evidence of bad faith in Respondent's contacting Complainant to solicit to Complainant to buy the Domain Names, Complainant submits that additional evidence of Respondent's “bad faith” is present under the standard set forth in paragraph 6(b)(ii) of the Policy, because Respondent “Registered the Domain Name[s] in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name[s] … [and that Respondent has] engaged in a pattern of such conduct.”
Further Respondent failed to acknowledge or respond to Complainant's email requesting the transfer of the Domain Names and offer to pay Respondent for Respondent's costs in registering the Domain Names as well as the subsequent cease and desist” letters to Respondent. Despite Complainant's communications to Respondent regarding Respondent's infringement of Complainant's marks, Respondent still persists in its unauthorized registration and use of the Domain Names and has, therefore, refused to voluntarily relinquish ownership of the Domain Names, continuing its efforts to profit from the fruits of Complainant's labors. Previous panels have found that failure to respondent to a complainant's inquiries support the inference that a domain was registered in bad faith.
Respondent did not reply to Complainant's contentions.
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 6(a) of the Policy directs that Complainant must prove each of the following:
(1) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respects of the Domain Name; and
(3) the Domain Name have been registered or are being used in bad faith.
Paragraph 6(a) of the Policy states that the burden of proving that all these elements are present lies with Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Domain Names contain Complainant's distinctive trademark DUNKIN DONUTS in its entirety with the addition of the “.ae” designation. For the purpose of these proceedings the Domain Names are found to be identical to the Complainant's trademark.
The Panel finds that the conditions in paragraph 6(a)(i) of the Policy are therefore fulfilled.
According to the Complaint, Complainant has not licensed or otherwise permitted Respondent to use its trademark.
Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. Respondent has not rebutted this and the way Respondent has been using – or rather not using – (see below) does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 6(a)(ii), cf. 6(c) of the Policy are also fulfilled.
Paragraph 6(a)(iii) of the Policy requires Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 6(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration or use 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 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 Complainant to succeed, the Panel must be satisfied that the Domain Names have been registered or are being used in bad faith.
Given the extent of use of Complainant's trademark including in the country of residence of Respondent and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that Respondent registered the Domain Names without prior knowledge of Complainant and Complainant's mark. In view of the Panel, this is underlined by Respondent's offer to sell the Domain Names to Complainant (see below).
The Panel therefore finds that the Domain Names were registered in bad faith.
Respondent has apparently not been using the Domain Names. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP, which is in this regard is similar to the aeDRP:
“the concept of a domain name ‘being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
In the circumstances of this case, its seems evident that Respondent has registered the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant, for a sum that considerably exceeds Respondent's out-of-pocket costs directly related to the domain names. Respondent himself thus contacted Complainant and offered to sell the Domain Names at a price of USD 15.000. This offer was turned down by Complainant who instead offered to reimburse Respondent's out-of pocket-costs. This offer was not accepted by Respondent, who later put the domain names for sale to the general public through a website dedicated for this type of activities, albeit at no specific price.
Further, the Panel finds that Respondent's lack of real and effective use of the domain name is likely to disrupt the business of Complainant since it could in this Panel's view give those Internet users that will look for information on Complainant under the “.ae” ccTLD the impression that Complainant is not present on the Internet in the United Arab Emirates. By registering the Domain Names Respondent further prevents Complainant from being present under the “.ae” ccTLD under a domain name that reflects Complainant's trademark, and the Panel finds that Complainant has demonstrated that Respondent is indeed engaged in a pattern of such conduct. The Panel also notes that the domain name incorporates a widely known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by Respondent of the Domain Names.
This is indeed a classic “cybersquatting” case and consequently the Panel does not find it necessary to address and decide on the additional arguments put forward by the Complaint in support of finding bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 6(a)(iii) of the Policy are also fulfilled in this case.
For all the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <dunkindonuts.ae> and <dunkin-donuts.ae>, be transferred to Complainant
Dated: September 28, 2009