WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Krispy Kreme Doughnuts, Inc. and HDN Development Corporation v. Walter Norton
Case No. D2012-0353
1. The Parties
The Complainants are Krispy Kreme Doughnuts, Inc. of Winston-Salem, North Carolina, United States of America and HDN Development Corporation of Winston-Salem, North Carolina, United States of America, represented by Dreitler True LLC, United States of America.
The Respondent is Walter Norton of Stanfield, North Carolina, United States of America.
2. The Domain Names and Registrar
The disputed domain names <krispykremeracing.com> and <krispykremeracing.net> (the “Domain Names”) are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2012. On February 22, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Names. On February 22, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 24, 2012.
The Center verified that the Complaint together with the amendment to 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 February 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2012.
The Center appointed Michelle Brownlee as the sole panelist in this matter on March 23, 2012. 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
The Complainants own United States Trademark Registration Number 539,165, issued on March 13, 1951, for the mark KRISPY KREME for doughnuts, Registration Number 938,245, issued on July 18, 1972, for KRISPY KREME for restaurant services, Registration Number 3,254,684, issued June 26, 2007, for KRISPY KREME for toy vehicles and toy banks and Registration Number 1,683,112, issued April 14, 1992, for KRISPY KREME DOUGHNUTS and design (see below) for doughnuts and doughnut holes and retail doughnut shop services.
The Domain Name <krispykremeracing.com> was registered on September 14, 2010, and the Domain Name <krispykremeracing.net> was registered on January 6, 2012.
5. Parties’ Contentions
Krispy Kreme Doughnuts, Inc. (“Krispy Kreme”) is an international retailer of premium-quality doughnuts, including its signature hot Original Glazed® doughnut. HDN Development Corporation (“HDN”) is a wholly-owned subsidiary of HD Capital Corporation which is a wholly-owned subsidiary of Krispy Kreme and is the owner of the Krispy Kreme trademarks. Krispy Kreme is an international brand with stores in approximately 600 locations around the world. Currently, Krispy Kreme stores can be found in 21 countries, including the United States, Australia, Bahrain, Canada, China, Dominican Republic, Indonesia, Japan, Kuwait, Lebanon, Malaysia, Mexico, Philippines, Puerto Rico, the Republic of Korea, Qatar, Saudi Arabia, Thailand, Turkey, the United Arab Emirates, and the United Kingdom of Great Britain and Northern Ireland.
Krispy Kreme produces approximately 7.5 million donuts every day. Krispy Kreme products and retail stores have received significant promotion, media spending and press attention in the United States for the past 20 years. In the past 5 years, Krispy Kreme has spent in excess of USD 35 million on advertising, marketing and promoting its Krispy Kreme products and retail stores.
Krispy Kreme has operated a web site at “www.kripsykreme.com” since 1998. Customers going to
“www.krispykreme.com” web site can get information on the company’s history and products, purchase branded merchandise, gift cards and coffee and get coupons and other information on Krispy Kreme promotional activities. One of the latest additions to the “www.krispykreme.com” webpage is a page which provides information on one of Krispy Kreme’s newest and most original sponsorships – Krispy Kreme Racing. In early 2012, Krispy Kreme announced that it had become the Primary Sponsor of the NASCAR Pro All Star Series (PASS) # 2 car driven by the 2011 PASS Rookie of the Year, Gray Gaulding. Gray will debut the Krispy Kreme #2 car at the Dillon Motor Speedway, South Carolina Clash on March 10, 2012.
In January of 2012, and in conjunction with its Krispy Kreme Racing program, Krispy Kreme sought to register the Domain Names, but learned that they had previously been registered by the Respondent. When Krispy Kreme approached the Respondent to offer to purchase the Domain Names, the Respondent refused to sell them for less than USD 3,000.
The Respondent is using the Domain Names in connection with web sites that display links that generate click-through revenue for the Respondent. Some of the links on these sites offer coupons for Krispy Kreme products which are not legitimate or recognized by all Krispy Kreme retailers, which results in consumer ill-will toward Krispy Kreme.
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s KRISPY KREME trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered and is using the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the KRISPY KREME trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> et al. confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> et al. confusingly similar to LEXUS).
Accordingly, the Panel finds that the Domain Names, which pair the distinctive KRISPY KREME trademark with the generic term “racing,” are confusingly similar to the Complainant’s KRISPY KREME trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Names or that the Respondent is making a legitimate noncommercial or fair use of the Domain Names, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence, which was not refuted by the Respondent, that the Respondent is using the Domain Names in connection with web sites that provide links to other sites in order to collect click-through referral fees. This activity cannot under the circumstances be considered a bona fide offering of goods or services. See, e.g., PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s use of
the Domain Names to earn referral fees by linking to other web sites attracts Internet users to the Respondent’s web sites by creating confusion as to source and results in commercial gain to the Respondent. The fact that the Complainant recently became a sponsor of NASCAR and is promoting “Krispy Kreme Racing” on its “www.krispykreme.com” web site tends to further exacerbate such confusion.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <krispykremeracing.com> and <krispykremeracing.net> be transferred to the Complainant.
Dated: April 3, 2012