The Complainant is DD IP Holder LLC of Massachusetts, United States of America (“United States”), represented by Steven M. Levy, Esq., United States.
The Respondents are LiJin Dong, Li Jin Dong and Jin Dong Li, Li Jin Dong of China (hereinafter the “Respondent”).
The disputed domain names <dnkindonuts.com>, <dunkindobuts.com>, <sunkindonuts.com>, and <unkindonuts.com> are registered with Xin Net Technology Corp.
The disputed domain name <dunkindonuys.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (collectively the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that for the disputed domain name <dunkindonuys.com> the Respondent is listed as the registrant and providing the contact details, and disclosing registrant and contact information for the disputed domain names <dnkindonuts.com>, <dunkindobuts.com>, <sunkindonuts.com>, and <unkindonuts.com>. The Center sent an email communication to the Complainant on January 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 29, 2019.
On January 25, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On January 29, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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, in English and Chinese, the Respondent of the Complaint, and the proceedings commenced on February 6, 2019. On the same day, the Center also sent an email communication to the Parties regarding the consolidation of multiple respondents. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2019.
The Center appointed Sok Ling MOI as the sole panelist in this matter on March 12, 2019. 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.
Founded in Quincy, Massachusetts in 1950, the Complainant is one of the world’s largest franchised chains of coffee and baked goods shops with over 11,000 restaurants in 36 countries. The Complainant’s shops serve hot and iced coffee, donuts, muffins, and sandwiches to hundreds of millions of customers each year.
The Complainant is the proprietor of numerous trade mark registrations worldwide for DUNKIN and DUNKIN DONUTS, including the following:
|
Jurisdiction |
Mark |
International Class |
Registration No. |
Registration Date |
|
United States |
DUNKIN’ DONUTS |
42 |
0748901 |
April 30, 1963 |
|
United States |
DUNKIN’ DONUTS |
30 |
1159354 |
June 30, 1981 |
|
United States |
DUNKIN’ |
43 |
4290078 |
February 12, 2013 |
|
European Union Trade Mark |
DUNKIN’ |
29, 30, 42 |
000095380 |
January 20, 1999 |
|
China |
DUNKIN’ DONUTS |
42 |
749853 |
June 7, 1995 |
|
Japan |
DUNKIN’ DONUTS |
42 |
0003325312 |
June 20, 1997 |
The Complainant also owns the domain name <dunkindonuts.com> which it uses to link to its official website.
The disputed domain names were all registered on January 7, 2018. The disputed domain name <dunkindonuys.com> resolves to a parking page with click-through links which redirects to websites with commercial/sponsored links. The other disputed domain names <dnkindonuts.com>, <dunkindobuts.com>, <sunkindonuts.com>, and <unkindonuts.com> do not resolve to any active pages.
The Complainant contends that the disputed domain names are all examples of typo-squatting domain names confusingly similar to its well-known DUNKIN and DUNKIN DONUTS trade marks. 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.
For ease of reference in considering the possible consolidation question, the panel has numbered the disputed domain names as follows:
1. <dnkindonuts.com>
2. <dunkindobuts.com>
3. <sunkindonuts.com>
4. <unkindonuts.com>
5. <dunkindonuys.com>
In terms of identical features, the panel notes that all five of the disputed domain names:
- are registered in the organization name of “Li Jin Dong” (though the registrant names are slightly different, being “LiJin Dong” and “Jin Dong Li”, respectively);
- list the same registrant email address;
- were registered on the same date;
- contain the words “dunkin donuts” with typographical misspellings; and
- resolve to pages either with click-through links which redirects to websites with commercial/sponsored links or inactive.
The Panel notes that the disputed domain names 1, 2, 3, and 4 are registered with the same China-based registrar, Xin Net Technology Corp. while the disputed domain name 5 is registered with another China-based registrar, Alibaba Cloud Computing (Beijing) Co., Ltd. The Panel additionally notes that the disputed domain name 5 lists a physical address different from that of the disputed domain names 1, 2, 3 and 4.
Notwithstanding some of the minor differences listed above, the Panel is prepared to infer that there is one single respondent based on the common identity of contact name and email address as well as other indicia listed above. The Panel finds that consolidation is fair and equitable to both Parties, as the Respondents have been given an opportunity to object to consolidation (if indeed there is more than one respondent) but have chosen not to respond. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Paragraphs 10(b) and (c) of the Rules require the panel to ensure that the proceeding takes place with due expedition and that the parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for all five disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Respondent is presumably a Chinese individual residing in China. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are all registered in Latin characters, rather than Chinese script;
(b) according to the evidence submitted by the Complainant, the disputed domain names either resolve to websites with content and commercial links in English or are inactive;
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese; and
(c) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has failed to do so.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in DUNKIN and DUNKIN DONUTS by virtue of its use and registration of the same as trade marks.
Each of the disputed domain names effectively incorporate the Complainant’s trade marks DUNKIN and DUNKIN DONUTS, albeit with misspellings. All five of the disputed domain names are foreseeable typographical variants of the Complainant’s trade marks DUNKIN and DUNKIN DONUTS and the Complainant’s domain name registration <dunkindonuts.com>.
The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name. The slight typographical errors, namely the addition or omission of a single letter, do not avoid a finding of confusing similarity between the disputed domain names and the Complainant’s trade marks DUNKIN and DUNKIN DONUTS.
Consequently, the Panel finds that all five of the disputed domain names are confusingly similar to the Complainant’s trade marks DUNKIN and DUNKIN DONUTS.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the DUNKIN and DUNKIN DONUTS trade marks or to seek registration of any domain name incorporating the Complainant’s trade marks. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “dunkin donuts”.
According to the evidence submitted by the Complainant (Annex F to the Complaint), the disputed domain names either resolve to a parking page with click-through links which redirects to a rotating series of websites with commercial/sponsored links or sites which attempts to install malware on a user’s computer, or are inactive. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. This is especially so where such links result in a connection to goods or services competitive with those of the Complainant – and all the more so if leading to a site which attempts to install malware. Such use of the disputed domain name is neither legitimate nor fair. As discussed below, the Respondent is deemed responsible for the content that appears at the disputed domain names.
The Panel is therefore satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 respondent’s website or location or of a product or service on the respondent’s website or location.
By virtue of its extensive use and advertising since the 1950s, the Complainant and its DUNKIN and DUNKIN DONUTS trade marks enjoy a significant reputation worldwide and a strong online presence. There is no doubt that that the Respondent was aware of the Complainant’s trade marks when it registered the disputed domain names. In any case, a presumption can be made that the Respondent was aware of the Complainant’s trade marks and related domain names when it registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the DUNKIN and DUNKIN DONUTS trade marks and their extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
According to the evidence submitted by the Complainant (Annex F to the Complaint), the disputed domain names either resolve to a parking page with click-through links which redirects to a rotating series of websites with commercial/sponsored links or sites which attempts to install malware on a user’s computer, or are inactive. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis. Previous UDRP panels have also found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding (WIPO Overview 3.0, section 3.3).
The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such links clearly seek to capitalize on the trade mark value of the Complainant’s DUNKIN and DUNKIN DONUTS trade marks resulting in misleading diversion.
In registering disputed domain names that are typographical variants of the Complainant’s trade marks and domain names, and using them to offer sponsored links or redirect Internet users to websites offering competitive goods and services, the Respondent deprives the Complainants of the opportunity to sell their goods and services to prospective clients who are clearly looking for the Complainants and, at the same time, promotes goods and services offered by competitors. The Respondent is clearly engaging in
typo-squatting.
The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel finds that the circumstances referred to in paragraphs 4(b)(ii) and 4(b)(iv) of the Policy are applicable to the present case.
Furthermore, efforts to send the Written Notice to the Respondent’s WhoIs-listed physical addresses and fax numbers failed which suggests that the Respondent had provided inaccurate contact details.
The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 <dnkindonuts.com>, <dunkindobuts.com>, <dunkindonuys.com>, <sunkindonuts.com>, and <unkindonuts.com> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: April 2, 2019