About Intellectual Property IP Training IP Outreach IP for… IP and... IP in... Patent & Technology Information Trademark Information Industrial Design Information Geographical Indication Information Plant Variety Information (UPOV) IP Laws, Treaties & Judgements IP Resources IP Reports Patent Protection Trademark Protection Industrial Design Protection Geographical Indication Protection Plant Variety Protection (UPOV) IP Dispute Resolution IP Office Business Solutions Paying for IP Services Negotiation & Decision-Making Development Cooperation Innovation Support Public-Private Partnerships The Organization Working with WIPO Accountability Patents Trademarks Industrial Designs Geographical Indications Copyright Trade Secrets WIPO Academy Workshops & Seminars World IP Day WIPO Magazine Raising Awareness Case Studies & Success Stories IP News WIPO Awards Business Universities Indigenous Peoples Judiciaries Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions Economics Gender Equality Global Health Climate Change Competition Policy Sustainable Development Goals Enforcement Frontier Technologies Mobile Applications Sports Tourism PATENTSCOPE Patent Analytics International Patent Classification ARDI – Research for Innovation ASPI – Specialized Patent Information Global Brand Database Madrid Monitor Article 6ter Express Database Nice Classification Vienna Classification Global Design Database International Designs Bulletin Hague Express Database Locarno Classification Lisbon Express Database Global Brand Database for GIs PLUTO Plant Variety Database GENIE Database WIPO-Administered Treaties WIPO Lex - IP Laws, Treaties & Judgments WIPO Standards IP Statistics WIPO Pearl (Terminology) WIPO Publications Country IP Profiles WIPO Knowledge Center WIPO Technology Trends Global Innovation Index World Intellectual Property Report PCT – The International Patent System ePCT Budapest – The International Microorganism Deposit System Madrid – The International Trademark System eMadrid Article 6ter (armorial bearings, flags, state emblems) Hague – The International Design System eHague Lisbon – The International System of Appellations of Origin and Geographical Indications eLisbon UPOV PRISMA Mediation Arbitration Expert Determination Domain Name Disputes Centralized Access to Search and Examination (CASE) Digital Access Service (DAS) WIPO Pay Current Account at WIPO WIPO Assemblies Standing Committees Calendar of Meetings WIPO Official Documents Development Agenda Technical Assistance IP Training Institutions COVID-19 Support National IP Strategies Policy & Legislative Advice Cooperation Hub Technology and Innovation Support Centers (TISC) Technology Transfer Inventor Assistance Program WIPO GREEN WIPO's Pat-INFORMED Accessible Books Consortium WIPO for Creators WIPO ALERT Member States Observers Director General Activities by Unit External Offices Job Vacancies Procurement Results & Budget Financial Reporting Oversight

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DD IP Holder LLC v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2020-1372

1. The Parties

The Complainant is DD IP Holder LLC, United States of America, represented by FairWinds Partners, LLC, United States of America (the “United States”).

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Names and Registrar

The disputed domain names <dunkindinuts.com>, <dunkindonats.com>, <dunkindonutes.com> and <dunkindonutsjobs.com> are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2020. On June 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 2, 2020, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2020.

The Center appointed Charles Gielen as the sole panelist in this matter on July 17, 2020. 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.

The Complainant submits that, since the four disputed domain names are held at the same Registrar, use the same privacy service and resolve in part to a website with the same content, it should be assumed that these disputed domain names are owned by the same person who is seeking to mask its true identity. The Respondent did not come up with any argument against this assumption. The Panel therefore agrees with the Complainant that the disputes concerning the disputed domain names should be consolidated.

4. Factual Background

The Complainant owns a number of trademark registrations, such as:

- in the United States for the word mark DUNKIN’ DONUT registered under number 748,901 on April 30, 1963 for restaurant services and for the device mark DUNKIN’ DONUT registered under number 1,159,354 on June 30, 1981 for plain, glazed, coated and filled fried cakes, muffins and coffee for consumption on or off the premises;

- in the European Union for the device mark DUNKIN’ registered under number 000095380 on January 20, 1999 for meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats, fruit filling for doughnuts, cookies, cakes and pies; vegetable oil; shortening (class 29) and doughnuts and bakery products, coffee, tea and cocoa (class 30) and restaurant and take-away services (class 42);

- in China for the word mark DUNKIN’ DONUT registered under number 749853 on June 7, 1995 for restaurant services and carry-out food services (class 42), and;

- in Japan for the device mark DUNKIN’ DONUT registered under number the 3325312 on June 20, 1997 for providing foods and drinks, mainly donuts (class 42).

The disputed domain names <dunkindonats.com>, <dunkindonutes.com>, <dunkindinuts.com> and <dunkindonutsjobs.com> were created on November 6, 2013, February 17, 2006, October 5, 2006 and April 23, 2007 respectively.

The disputed domain names <dunkindonats.com>, <dunkindonutes.com> and <dunkindinuts.com> do not resolve to any website and the disputed domain name <dunkindonutsjobs.com> resolves to a pay-per-click page with links to third party websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends it is one of the world’s largest franchised chains of coffee and baked goods shops operating nearly 11,000 restaurants in 33 countries. The Complainant’s shops serve hot and iced coffee, donuts, muffins, and sandwiches to hundreds of millions of customers each year. According to the Complainant, it has repeatedly been ranked as either number 1 or number 2 in the donut, muffin, and coffee retail categories. The Complainant extensively promotes its DUNKIN’ DONUTS trademarks through print, web, television, and trade show advertising. The Complainant has also been the subject of extensive media coverage including stories in Forbes Magazine, The Economic Times, MarketWatch.com, and many other outlets. The Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its various websites including “www.dunkindonuts.com”. The Complainant argues that as a result of its long usage and promotion of its DUNKIN’ DONUTS trademarks, they have become overwhelmingly famous and widely recognized around the world.

The Complainant argues that the disputed domain names <dunkindonats.com>, <dunkindonutes.com> and <dunkindinuts.com> contain misspellings of its trademark DUNKIN’ DONUTS and for this reason, they are confusingly similar to that trademark. The same is true for the disputed domain name <dunkindonutsjobs.com> that contains the entire trademark of the Complainant. The addition of the generic term “jobs” does not alter the conclusion that the disputed domain name is confusingly similar to the trademark DUNKIN’ DONUTS.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names, which were registered long after the Complainant established substantial rights in its trademarks. The Respondent’s actions are not a bona fide offering of goods or services and the Respondent is not affiliated with, nor authorized by the Complainant to use the trademarks DUNKIN’ or DUNKIN’ DONUTS. The use of the disputed domain names gives the false impression that the Respondent is affiliated with the Complainant and authorized to use its trademarks. The mere fact that three of the disputed domain names only result in a parking page or to no website at all, does not create any rights or legitimate interests. With respect to the disputed domain name <dunkindonutsjobs.com>, the Complainant argues that since this result in a pay-per-click webpage with links to third parties who are not affiliated to the Complainant, this does not give any rights or legitimate interests. Such use capitalizes on the reputation of the trademarks of the Complainant.

Finally, the Complainant argues that the Respondent registered and uses the disputed domain names in bad faith. Regarding the registration, the Complainant contends that the mere passive holding of disputed domain names containing reputed trademarks such as those of the Complainant forms a presumption of bad faith at the time of registration. According to the Complainant, given the Respondent’s targeting of the trademarks DUNKIN’ and DUNKIN’ DONUTS and the use of typo-squatted variations thereof, it is more than reasonable to conclude that the circumstances of this case support a finding of bad faith through passive holding. Regarding the use of the disputed domain names, the Complainant argues that the Respondent is creating initial interest confusion as to affiliation with the Complainant. The use by the Respondent of the disputed domain name <dunkindonutsjobs.com> resulting in a pay-per-click website results in a commercial gain for itself and the various website owners who are forwarded from the links at this website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain names should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademarks DUNKIN’ and DUNKIN’ DONUTS based on several trademark registrations and intensive use that resulted in these trademarks to be well known in a number of countries in the world. The Panel finds that the disputed domain names <dunkindonats.com>, <dunkindonutes.com> and <dunkindinuts.com> contain misspellings of the trademark DUNKIN’ DONUTS, leaving this trademark clearly recognizable in the disputed domain names. From a phonetical point of view these disputed domain names are even identical to this trademark. The Panel also finds that the disputed domain name <dunkindonutsjobs.com> contains the trademark DUNKIN’ DONUTS. The mere addition of the generic term “jobs” does not alter the conclusion that this disputed domain name is confusingly similar to the trademark DUNKIN’ DONUTS.

The Panel is of the opinion that for these reasons the disputed domain names are confusingly similar to the trademark DUNKIN’ DONUTS of the Complainant. The added suffix “.com” does not change the finding that the disputed domain names are confusingly similar with this trademark, since the suffix “.com” is generally understood to be a technical requirement. In making the comparison between the trademark and the disputed domain names the generic Top-Level Domain “.com” is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain names are confusingly similar to the trademark DUNKIN’ DONUTS.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. First of all, the Respondent has not come forward claiming any rights or legitimate interests in the disputed domain names and the Panel does not find so in the present record. Secondly, the disputed domain names were registered long after the Complainant started to use the trademark DUNKIN’ DONUTS. Thirdly, the Respondent’s actions are not a bona fide offering of goods or services and, fourthly, the Respondent is not affiliated with, nor authorized by the Complainant to use the trademarks DUNKIN’ or DUNKIN’ DONUTS. The Panel is convinced that the mere aim of the Respondent was to capitalize on the extensive reputation of the trademarks of the Complainant.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain names were registered and are being used in bad faith.

The main reasons for this conclusion are as follows. First, there can be no doubt that with respect to the disputed domain names<dunkindonats.com>, <dunkindonutes.com> and <dunkindinuts.com> it was the intention of the Respondent to choose domain names that contain intentional misspellings of the trademark DUNKIN’ DONUTS. The registration of these disputed domain names was made with only one intention, namely to capitalize of the repute of this trademark. Therefore, such registration is done in bad faith. Notwithstanding that these disputed domain names are passively held, this passive holding does not prevent a finding of bad faith. They should be considered to be registered and used in bad faith, noting the composition of the disputed domain names (being misspellings of the trademark) the Panel considers likely that the Respondent is seeking to create confusion through the composition of the disputed domain names as to affiliation with the Complainant.

The Panel finds that the registration of the disputed domain name <dunkindonutsjobs.com> is made in bad faith, because this domain name that contains the trademark DUNKIN’ DONUTS of the Complainant clearly capitalizes on the repute of this trademark. The use by the Respondent of this domain name that directs to a pay-per-click website results in a (probable) commercial gain (or some type of benefit) for the Respondent and the various website owners who are forwarded from the links at this website, causing such use to be made in bad faith as well.

The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <dunkindonats.com>, <dunkindonutes.com>, <dunkindinuts.com> and <dunkindonutsjobs.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: July 26, 2020

https://www3.wipo.int/contact/en/area.jsp?area=arbitration https://www.wipo.int/pressroom/en/ https://www.wipo.int/tools/en/disclaim.html https://www.wipo.int/en/web/privacy-policy/ https://www.wipo.int/en/web/accessibility/ https://www.wipo.int/tools/en/sitemap.html https://www3.wipo.int/newsletters/en/ https://www.wipo.int/podcasts/en/ https://www.wipo.int/news/en/