WIPO Arbitration and Mediation Center


DD IP Holder LLC v. Shaye Rosenberg, S&R Toners

Case No. DCO2018-0032

1. The Parties

Complainant is DD IP Holder LLC of Canton, Massachusetts, United States of America (“United States”), represented by Steven M. Levy, Esq., United States.

Respondent is Shaye Rosenberg, S&R Toners of Brooklyn, New York, United States self‑represented.

2. The Domain Name and Registrar

The disputed domain name <dunkin.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2018. On October 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaints on October 4 and 11, 2018.

The Center verified that the Complaint together with the amended Complaints 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 Respondent of the Complaint, and the proceedings commenced on October 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2018. Upon request of Respondent, the due date for Response was extended to November 4, 2018, in accordance with the Rules, paragraph 5(b). The due date for Response was further extended to November 6, 2018, in accordance with the Rules, paragraph 5(e). The Respondent submitted numerous email communications in the month of October. The Response was filed with the Center November 1, 2018. On November 6, 2018, the Complainant submitted additional arguments rebutting the Respondent’s Response. The Respondent provided further comments regarding the Complainant’s submission on the same day.

The Center appointed Lawrence K. Nodine, Paul M. DeCicco, and Robert A. Badgley as panelists in this matter on December 3, 2018. The Panel finds that it was properly constituted. Each member of 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

Founded in 1950 in the United States, Complainant is one of the world’s largest franchised chains of coffee and baked goods shops. Not only are Complainant’s DUNKIN DONUTS coffee shops found in numerous countries around the world, Complainant’s coffee and related products are also sold in many countries, including the United States. For many years, Complainant operated under the business name “Dunkin’ Donuts”. Starting in 2019, Complainant intends to drop “Donuts” and simply use the business name “Dunkin’”. Complainant owns numerous trademark registrations for DUNKIN’ and DUNKIN’ DONUTS (collectively, “Marks”) around the world. For example, Complainant registered DUNKIN’ DONUTS in the United States (Registration No. 748901) on April 30, 1963, and registered DUNKIN’ in the European Union on January 20, 1999 (Registration No. 095380) and in the United States (Registration No. 4290078) on February 12, 2013. Complainant has extensively promoted its marks through print, web, television, and trade show advertising for many years. Currently, Complainant’s franchise includes nearly 11,000 restaurants operating in 33 countries, with sales amounting to over USD 10 billion in fiscal year 2015 alone. Hundreds of millions of customers are served at Complainant’s franchises every year.

Respondent is a New York resident and the owner of the disputed domain name <dunkin.co>. Respondent registered the disputed domain name on July 29, 2010. As of the filing of the Complaint, the disputed domain name redirected traffic to “www.srtoners.com”, where Respondent purchases toner and ink cartridges from individuals under the business name “S & R Toners”. The home page contains the statement “Domain Names for Sale”. In addition to <dunkin.co>, Respondent has registered domain names such as <canontoner.co>, <hpstore.co>, <michaeljackson.co>, <katemoss.co>, <yahoophone.us>, <iphonesland.com> and <obama.co>.

5. Parties’ Contentions

A. Complainant

Complainant argues that the disputed domain name is confusingly similar to its Marks. Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, is not commonly known as “Dunkin”, does not own any trademark or service mark rights in the “Dunkin” name, and is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. According to Complainant, Respondent’s use of the disputed domain name to host a website for toner products has tarnished and diluted Complainant’s Marks.

As to bad faith registration, Complainant asserts that Respondent had actual notice of Complainant’s rights to its globally famous Marks and intentionally targeted the DUNKIN’ mark by registering <dunkin.co>. According to Complainant, Respondent also uses the disputed domain name in bad faith because the domain automatically redirects to “www.srtoners.com”, a website offering to purchase surplus toner and ink cartridges, which contains an offer to sell Respondent’s domain names. Additionally, Complainant alleges that Respondent has engaged in a pattern of bad faith registration of domain names that are confusingly similar to well-known trademarks in which Respondent has no rights.

B. Respondent

Respondent maintains that he registered the disputed domain name eight years ago because he considered it unique. According to Respondent, “dunk in” is a basketball reference and not a term Respondent associates with Complainant’s DUNKIN’ DONUTS business. Further, Respondent argues, “Dunkin” is the surname of thousands of individuals in the United States, which shows that Complainant did not create the name “Dunkin”. Respondent maintains that he redirected the disputed domain name to “www.strtoners.com” so that he could be easily contacted by prospective domain name purchases. Finally, Respondent argues that he is not using the disputed domain name in bad faith because his toner and copy supplies business does not compete with Complainant’s business.

6. Discussion and Findings

A. Preliminary Issues

Complainant and Respondent have submitted unsolicited additional materials in this proceeding. Unsolicited supplemental filings by either party are admissible at the Panels discretion. WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”), section 4.6. While the filing of unsolicited material is generally discouraged, the Panel has considered the supplemental arguments in its decision below.

B. Identical or Confusingly Similar

Complainant has rights in DUNKIN’ and DUNKIN’ DONUTS by virtue of, for example, its European trademark registration for DUNKIN’ and its United States trademark registration for DUNKIN’ DONUTS. The disputed domain name is confusingly similar to Complainant’s Marks as it incorporates the DUNKIN’ mark and the dominant portion of the DUNKIN’ DONUTS mark.

The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use its Marks. While Respondent argues that “Dunkin” is a surname, it is not Respondent’s surname and Respondent makes no showing that he was known by that name. Even if Respondent’s surname was “Dunkin”, Respondent fails to explain how that would allow him to use Complaint’s Marks in the manner he does.

Respondent’s claim that he registered the disputed domain name for its generic value as a term of art in basketball appears disingenuous. It is more credible that had Respondent been seeking to reference the basketball shot, he would have simply registered “dunk,” a well-known basketball reference, rather than “dunk in.” Additionally, nothing on Respondent’s website suggests any connection to basketball.

In sum, Complainant has made out a prima facie case for Respondent’s lack of rights or legitimate interests, which Respondent has failed to credibly rebut.

Accordingly, Complainant has satisfied paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The record supports a plausible inference of bad faith registration. First, Complainant’s Marks are famous, and it is highly unlikely that Respondent was unaware of Complainant’s rights in the Marks at the time he registered the disputed domain name. Moreover, the “Domain Names for Sale” solicitation on Respondent’s “www.srtoners.com” website indicates that Respondent acquired the disputed domain name for the purpose of selling it to Complainant or its competitor. Indeed, Respondent admits to purposefully redirecting the disputed domain name to “www.strtoners.com” so that potential purchasers could easily contact Respondent. Respondent’s pattern of cybersquatting further suggests bad faith registration under paragraph 4(b)(ii) of the Policy.

The Panel also finds that Respondent used the disputed domain name in bad faith. Respondent trades off on Complainant’s famous Marks in redirecting traffic to his website. Although Respondent posits that this redirection is legitimate because the services on Respondent’s website do not compete with Complainant’s goods and services, it is sufficient under paragraph 4(b)(iv) of the Policy that Respondent intentionally uses the disputed domain name to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s Marks.

The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

E. Laches

The Panel notes that Respondent hints that Complainant’s claim is barred by the equitable doctrine of laches. Respondent argues that Complainant has not contacted Respondent regarding the disputed domain name in the eight years that Respondent has owned the disputed domain name. UDRP panels have generally declined to apply laches to domain name disputes. See, e.g., Program Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy.”); see also section 4.10 of WIPO Jurisprudential Overview 3.0. Further, laches requires a showing of prejudice caused by the delay, and Respondent has not even attempted to show that he was prejudiced by any delay in bringing this proceeding. Accordingly, the Panel declines to find that Respondent has a defense on the ground of laches.

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 name <dunkin.co> be transferred to Complainant.

Lawrence K. Nodine
Presiding Panelist

Paul M. DeCicco

Robert A. Badgley
Date: December 17, 2018