WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DD IP Holder LLC v. Hochan Liu / Kathleen Kim / Melissa McJunkin
Case No. D2017-1716
1. The Parties
The Complainant is DD IP Holder LLC of Canton, Massachusetts, United States of America (“USA”), represented by Steven M. Levy, USA.
The Respondent is Hochan Liu of Beijing, China / Kathleen Kim of Jincheng, China / Melissa McJnkin of Shaoxing, China.
2. The Domain Names and Registrar
The disputed domain names <dunkiindonuts.com>, <dunkindonutts.com>, <dunkindonuuts.com>, <dunkinndonuts.com>, <dunkkindonuts.com>, <dunnkindonuts.com> and <duunkindonuts.com> (the “Disputed Domain Names”) are registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 11, 2017, 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. On September 12, 2017, the Center, the Center sent an email to the Parties in English and Japanese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date. On September 12, 2017, the Complainant submitted an amended Complaint to correct an administrative formality.
The Center verified that the Complaint together with the amended 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 in English and Japanese of the Complaint, and the proceedings commenced on September 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2017.
The Center appointed Teruo Kato as the sole panelist in this matter on October 17, 2017. 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 Complainant states that “Complainant DD IP Holder LLC is the owner of the distinctive and famous DUNKIN’ and DUNKIN’ DONUTS trademarks and their corresponding logos (the ‘DUNKIN’ DONUTS Marks’). In 1954, and long prior to the creation of the disputed domain, Complainant commenced use of the DUNKIN DONUTS Marks in connection with the operation of coffee shops and the sale of coffee beans, ground coffee, and related products in the United States. The company then spread to many other nations and regions including Europe, China, and Japan. Since the inception of the DUNKIN DONUTS Marks, Complainant has continually used such Marks in international commerce.” (The “DUNKIN’ DONUTS Marks” is referred to as the “Complainant’s Marks” hereinafter.)
The Complainant also states, and provides evidence to support, that it is the owner of a number of trademark registrations for the Complainant’s Marks, including DUNKIN’ DONUTS (Registration No. 748901 (USA) with the Registration Date April 30, 1963), DUNKIN’ DONUTS (Registration No. 1159354 (USA) with the Registration Date June 30, 1981), DUNKIN’ (Registration No. 000095380 (European Union) with the Registration Date January 20, 1999), DUNKIN’ DONUTS (Registration No. 749853 (China) with the Registration Date June 7, 1995), and DUNKIN’ DONUTS (Registration No. 3325312 (Japan) with the Registration Date June 20, 1997).
The Disputed Domain Names were created on December 12, 2016, and resolve to websites with adult related content.
According to copies of email communications between the Parties included in the Complaint, the Complainant contacted the Respondent about the Disputed Domain Names on August 22, 2017, August 28, 2017 and August 29, 2017, and the Respondent responded on August 28, 2017 and August 29, 2017.
Among other things, the Respondent wrote: “We can transfer all the domains to you with a transfer fee of $3000”, “$2300 all domains + transfer agreement”, “There’re 7 domains. And I must sign the agreement. So $1500 at least, and we can via escrow.com. You pay the fee”, and “1 domain $100 and the agreement $300. In total $1000 at least. Or you go to court.”
5. Parties’ Contentions
The Complainant contends that the Disputed Domain Names are all examples of typosquatting domain names of the Complainant’s Marks, and are therefore identical or confusingly similar to its trademarks. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, and the Disputed Domain Names have been registered and are being used in bad faith.
The Complainant requests for the transfer of the Disputed Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issues
A. Consolidation of Multiple Respondents
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion, and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder.
In this respect the Panel takes a note of the general principle extracted by the panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 that “the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.”
The Panel also takes a note of section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states that “The WIPO Center may accept, on a preliminary basis, a consolidated complaint where the criteria described below are prima facie met. Any final determination on consolidation would be made by the appointed panel, which may apply its discretion in certain circumstances to order the separation of a filed complaint. In all cases, the burden falls to the party seeking consolidation to provide evidence in support of its request.”
Prior to the appointment of the Panel, the Center sent an email to the Complainant and the Respondent, advising that the Center would proceed to commencement and formal Complaint notification on that basis.
In the Complaint the Complainant sought consolidation and contended, among others, that, whilst there are certain differences in the WhoIs information among the Disputed Domain Names, all of the Disputed Domain Names list the identical email address, that all of the Disputed Domain Names were created on the exact same date, using the exact same Registrar, and resolve to websites displaying the exact same content, that all of the Disputed Domain Dames use a very similar naming pattern involving typographical variations of the Complainant’s marks, and that in its correspondence with the Complainant’s representative, the Respondent offered to sell all seven of the Disputed Domain Names.
The Respondent had the opportunity but did not respond to the Complaint.
Accordingly, applying the above principle to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Disputed Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Disputed Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all Parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. In light of the above, the Respondents may be referred to collectively as the Respondent hereafter.
B. Language of the Proceeding
Section 4.5.1 of the WIPO Overview 3.0 states “Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise.” and “[n]oting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.”
Further, section 4.5.2 (WIPO Center practice) of the same states, among others, “[i]n the interest of fairness and to preserve continuity in the case, prior to panel appointment and determination of the language of the proceedings, where possible, the WIPO Center seeks to send ‘dual language’ case-related communications to the parties (i.e., in both the language of the registration agreement, and the language of the complaint). On panel appointment, both parties’ arguments are provided to the panel for its determination as to the language of proceeding. This may include accepting the complaint as filed, and a response in the language of the registration agreement, thereby seeking to give both parties a fair opportunity to present their case. In certain cases however, owing to due process concerns, a panel may order that the complaint be translated into the language of the registration agreement.”
In the present case, the Complaint was submitted in English and, according to the information received from the Registrar, the language of the registration agreement for the Disputed Domain Names is Japanese.
Prior to the appointment of the Panel, the Center sent email to the Complainant and the Respondent in Japanese and English language and, if the Respondent would object to English, it was invited to indicate that objection and submit any arguments/supporting materials as to why the proceedings should not be conducted in English.
The Complainant made a number of submission in favour of English, including that the Respondent has had significant correspondence with the Complainant’s representative in the English language, that the Complainant’s Marks consist of an English idiomatic expression combined with an English generic term, that these words are used only in the English language, and that the Complainant and its affiliates operate their internationally-diverse offices in the English language. The Respondent did not reply.
The Panel accepts the Complainant’s submissions. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Japanese and English, and that the Respondent previously engaged in correspondence with the Complainant in English. There is therefore no question of the Respondent not being able to understand the nature of the proceedings. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
7. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the Complainant’s Marks through extensive use and registration that predates the Disputed Domain Names.
As to whether the Disputed Domain Names are identical or confusingly similar to the Complainant’s Marks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only, as it is well established that the generic Top-Level Domain (“gTLD”) (i.e. “.com”) may generally be disregarded for this purpose (section 1.11 of the WIPO Overview 3.0).
The Complainant contends that “[e]ach of the Disputed Domains is confusingly similar, on its face, to” the Complainant’s Marks, and “Trademark registrations for the Marks were obtained, and the Marks became well-known long prior to the respective creation dates of the Disputed Domains” and that “It has been held, in decisions too numerous to mention that a minor misspelling of a complainant’s trademark creates a confusingly similar domain name” and cites section 1.9 of the WIPO Overview 3.0.
The Panel takes a note of section 1.9 of the WIPO Overview 3.0 and accepts the Complainant’s contention as above, noting that each of the Disputed Domain Names consists of the Complainant’s marks with a minor typographical variation of duplication of one letter in each Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview 3.0 states “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Paragraph 4(c) of the Policy refers to three non-exclusive cases which, if proven, shall demonstrate such rights or legitimate interests, i.e., “(i) before any notice to you of the dispute, your use of, or demonstrable 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; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 or service mark at issue.”
The Complainant asserts that, as regards paragraph 4(c)(i) of the Policy, the “Respondent’s actions are not a bona fide offering of goods or services under Policy 4(c)(i). Respondent’s websites under the Disputed Domains are all an identical site displaying links which divert visitors …. to view or purchase pornographic and other adult related content” and cites, among others, AARP v. Anthony Lauberth, WIPO Case No. D2017-0155 to support its assertion.
As regards paragraph 4(c)(ii) of the Policy, the Complainant asserts that “the Whois records for the Disputed Domains variously list Respondents as ‘hochan li’, ‘Kathleen Kim’, or ‘Melissa McJunkin’. Upon information and belief, Respondent is not commonly known by the Disputed Domains or the name ‘DunkinDonuts’ nor does Respondent operate a legitimate business or other organization under the DUNKIN’ DONUTS Marks or this domain name and does not own any trademark or service mark rights in the ‘Dunkin’ Donuts’ name”, and refers to section 2.3 of the WIPO Overview 3.0.
As regards paragraph 4(c)(iii) of the Policy, the Complainant assets that the “Respondent is not making a legitimate noncommercial or fair use of the Disputed Domains without intent for commercial gain, and so its actions do not fall within Policy 4(c)(iii). The Disputed Domains are not being used for any generic or descriptive meaning as demonstrated by the pornographic and commercial content offered on Respondent’s websites. Thus, Respondent uses the domains to confuse and misleadingly divert consumers, or to tarnish the world famous DUNKIN’ DONUTS Marks”, and refers to section 2.5 of the WIPO Overview 3.0.
Having regard to the evidence and submissions above, the Panel finds that the Complainant has made out a prima facie case.
Accordingly, without any relevant or credible evidence from the Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four non-exclusive scenarios, any of which, if proved by the complainant, constitutes evidence of a respondent’s bad faith.
However, section 3.1 of the WIPO Overview 3.0 states that “[g]iven that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden.”
Section 3.1.4 of the WIPO Overview 3.0 states “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
The same section of the WIPO Overview 3.0 further states “[p]anels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”
Section 1.8 of the WIPO Overview 3.0, which refers to “typosquatting”, states “[u]nder the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.”
The Complainant asserts, among others, that “Respondent intentionally registered and now uses the Disputed Domains without consent from Complainant, to confuse and mislead visitors to its websites. Respondent was put on actual notice of Complainant’s rights in its globally famous Marks through Complainant’s extensive prior use of such Marks which long predates the creation of the Disputed Domains by Respondent.”
The Complainant also submitted, among others, documents entitled “domain status and redirections” and “reverse redirection information” relating to the Disputed Domain Names. The Complainant further submitted screen shots of such redirected sites.
The Complainant asserts, among others, that “[u]pon information and belief, the site also generates commercial gain by earning click-through revenue for sending visitors to other websites. Since the DUNKIN’ DONUTS Marks don’t relate to adult-themed content, there is no other rational explanation for Respondent having registered and maintained the Disputed Domains and resolve them to such a site”, and cites WordPress Foundation v. Cezary Brzezinski, WIPO Case No. D2013-2171.
The Complainant further submitted a reverse WhoIs report relating to one of the email addresses of the Respondent. This document states “[t]here were 12,226 domains associated with the email field within Whoisology’s June 2017 archive.”
The Complainant also submitted documentation to show ten other trademark holders, in addition to the Complainant, whose trade marks or names are the subject of the similar scheme associated with the Respondent’s email address, i.e., “typo-squatting”, combined with re-diverting to certain pornographic sites, which bear resemblance to those sites redirected from the Disputed Domain Names.
Having examined the evidence submitted by the Complainant, the Panel is of a view that the present case corresponds to a scenario envisaged under section 3.1.1 of the WIPO Overview 3.0, which is quoted below (where relevant).
“If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. While panel assessment remains fact-specific, generally speaking such circumstances, alone or together, include: (i) the respondent’s likely knowledge of the complainant’s rights, (ii) the distinctiveness of the complainant’s mark, (iii) a pattern of abusive registrations by the respondent, ….. (vii) failure of a respondent to present a credible evidence-backed rationale for registering the domain name, …”
In light of the above, the Panel accepts the contentions submitted by the Complainant as referred to above. Notably, the evidence on record indicates that the Respondent registered the Disputed Domain Names with the Complainant’s Marks in mind, and attempted to solicit the sale of the Disputed Domain Names to the Complainant for an amount in excess of its out-of-pocket costs of registration. Furthermore, the Respondent appears to be engaged in a pattern of bad faith registration in that it has registered several domain names targeting the Complainant. The redirection of Internet users to a website displaying pornographic content is also disruptive of the Complainant’s business activities online.
Accordingly, the Panel finds that the Complainant has proven the third element of the Policy.
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, <dunkiindonuts.com>, <dunkindonutts.com>, <dunkindonuuts.com>, <dunkinndonuts.com>, <dunkkindonuts.com>, <dunnkindonuts.com> and <duunkindonuts.com> be transferred to the Complainant.
Date: October 27, 2017