WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc. v.
RandomThinkers and Patrick Huba
Case No. D2001-0104
1. The Parties
The Complainant is Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc.
with place of business in Randolph, Massachusetts, United States of America
(USA).
The Respondent is RandomThinkers and Patrick Huba, with address in Schenectady,
New York, USA.
2. The Domain Name and Registrar
The disputed domain name is "dunkindoughnuts.com".
The registrar of the disputed domain names is Register.com, with business address
in New York, New York, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail
received by the WIPO Arbitration and Mediation Center ("the Center")
on January 18, 2001, and by courier mail received by the Center on February 6, 2001.
Complainant paid the requisite filing fees. On January 24, 2001, WIPO
transmitted a Request for Registrar Verification to the registrar, Register.com
(with the Registrar’s Response received by WIPO on February 1, 2001).
(c) On February 6, 2001, the Center transmitted notification of the complaint
and commencement of the proceeding to Respondent via e-mail and courier mail.
(d) On February 24, 2001, Respondent transmitted an e-mail message to WIPO stating
its position regarding the subject dispute. On February 26, 2001,
the Center advised Respondent that it would consider the aforesaid e-mail to
constitute a response for purposes of this proceeding, and that WIPO would proceed
with the appointment of a panel in this matter.
(e) On March 1, 2001, the Center invited the undersigned to serve as panelist
in this administrative proceeding, subject to receipt of an executed Statement
of Acceptance and Declaration of Impartiality and Independence ("Statement
and Declaration"). On March 4, 2001, the undersigned transmitted by
fax the executed Statement and Declaration to the Center.
(f) On March 7, 2001, Complainant and Respondent were notified by the Center
of the appointment of the undersigned sole panelist as the Administrative Panel
(the "Panel") in this matter. The Center notified the Panel that,
absent exceptional circumstances, it would be required to forward its decision
to the Center by March 21, 2001. On March 7, 2001, the Panel received an
electronic file in this matter by e-mail from the Center. The Panel subsequently
received a hard copy of the file in this matter by courier mail from the Center.
The Panel has not received any requests from Complainant or Respondent regarding
further submissions, waivers or extensions of deadlines, and the Panel has not
found it necessary to request any further information from the parties. The
proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of a trademark registration for the word and design
mark "DUNKIN’ DONUTS" on the Principal Register at the U.S. Patent
and Trademark Office (USPTO), Reg. No. 1,159, 354, dated June 30, 1981, in International
Class 30, covering "plain, glazed, coated and filled fried cakes, muffins
and coffee for consumption on or off the premises", and is the holder of
a service mark registration for the words "DUNKIN’ DONUTS" on the
Principal Register at the USPTO, Reg. No. 748,901, dated April 30, 1963, in
U.S. Class 100, covering "restaurant services". (Complaint, paragraph
11 and Annexes C & D). These registrations are valid and subsisting.
Complainant has used the "DUNKIN’ DONUTS" mark in commerce since
at least 1963, based on the earliest of the dates of registration of that
mark, and without prejudice to whether Complainant may hold earlier-arising
rights in the mark.
According to the registrar’s verification response to the Center, received
on February 1, 2001, "RandomThinkers" and "Patrick
Huba" are the listed registrant of the domain name "dunkindoughnuts.com".
According to the WHOIS database record furnished by the registrar, the record
for the disputed domain name was created on January 6, 2000, and was last updated
on December 21, 2000.
Respondent has used the disputed domain name in connection with the posting
of a Register.com standard form notification of registration. Complaint, paragraph
8, and Panel visit of March 21, 2001.
Respondent has offered the disputed domain name for sale at its "RandomThinkers.com"
website. According to the website information, interested persons are requested
to "make offer" for the disputed domain name by e-mail to "[email protected]".
Complaint, paragraph 14 and Annex E.
On or about July 27, 2000, Complainant received an e-mail from Mr. Samuel Feuer,
acting as chief executive officer of "Teque.com", stating:
"Do you have an interest in buying the domain name www.dunkindoughnuts.com?
let [sic] us know as we arent [sic] asking much."
"Teque.com" appears as part of Respondent’s "RandomThinkers.com"
home page, and absent any suggestion to the contrary from Respondent in its
response, the Panel considers "Teque.com" to have acted on behalf
of Respondent in respect of the disputed domain name.
On August 4, 2000, and September 5, 2000, (and by copy of October 3, 2000)
Complainant (through its counsel) sent Respondent cease and desist and transfer
demands with respect to the disputed domain name (Complaint, Annexes F-H). A
further e-mail follow-up was sent by Complainant’s counsel to Respondent on
December 4, 2000. Respondent’s only response to such demands was an e-mail regarding
an asserted change of address. Complaint, paragraph 17.
The Service Agreement in effect between Respondent and Register.com subjects
Respondent to Register.com’s dispute settlement policy, the Uniform Domain Name
Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with
implementing documents approved by ICANN on October 24, 1999. The Uniform Domain
Name Dispute Resolution Policy (the "Policy") requires that domain
name registrants submit to a mandatory administrative proceeding conducted by
an approved dispute resolution service provider, of which WIPO is one, regarding
allegations of abusive domain name registration (Policy, paragraph 4(a)).
5. Parties’ Contentions
A. Complainant
Complainant asserts that it has rights in the trademark and service mark "DUNKIN’
DONUTS" based on its long use of such mark in commerce and as evidenced
by registration at the USPTO (see Factual Background supra).
Complainant alleges that the disputed domain name is confusingly similar to
its mark since the disputed domain name differs from its mark principally by
use of the term "doughnuts" in place of the phonetically equivalent
term "donuts". Complainant alleges that Internet users who are familiar
with its mark, but may not be familiar with the precise spelling of the mark,
would be likely to use the disputed domain name to locate its website on the
Internet.
Complainant states that Respondent has no rights or legitimate interests in
the disputed domain name.
Complainant asserts that Respondent registered and used the disputed domain
name in bad faith, in particular by offering the name for sale directly to Complainant,
and by posting the disputed domain name for sale on its publicly accessible
website.
Complainant requests that the Panel direct the registrar to transfer the disputed
domain name to it.
B. Respondent
Respondent denies that it registered the disputed domain name with the intention
of selling it for a profit. Respondent asserts that it has plans for a website
involving an individual dribbling a jelly doughnut around a home page and then
"slamming it into a basketball hoop." The resulting jelly droppings
would become navigation buttons for the website. The home page would be animated
"to give it that high tech look and feel".
Respondent queries why Complainant has not "registered the other popular
domain name extensions to DunkinDoughNuts."
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy")
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, (with implementing documents approved on October 24, 1999),
is addressed to resolving disputes concerning allegations of abusive domain
name registration. This sole panelist has in an earlier decision discussed the
background of the administrative panel procedure, and the legal characteristics
of domain names, and refers to this earlier decision for such discussion. (Footnote
1) The Panel will confine itself to making determinations necessary to resolve
this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process
requirements be met. Such requirements include that a respondent have notice
of proceedings that may substantially affect its rights. The Policy, and the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),
establish procedures intended to assure that respondents are given adequate
notice of proceedings commenced against them, and a reasonable opportunity to
respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably
necessary to notify the Respondent of the filing of the complaint and initiation
of these proceedings. Respondent’s response indicates that it did receive adequate
notice.
Paragraph 4(a) of the Policy sets forth three elements that must be established
by a Complainant to merit a finding that a Respondent has engaged in abusive
domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain
name; and
(iii) Respondent’s domain name has been registered and is being used in bad
faith.
Each of the aforesaid three elements must be proved by a complainant to warrant
relief.
Complainant is the holder of trademark and service mark registrations for the
term "DUNKIN’ DONUTS" in the United States and is using that mark
in commerce (see Factual Background, supra). Complainant’s registration
of the "DUNKIN’ DONUTS" mark on the Principal Register at the USPTO
establishes a presumption of its validity in U.S. law. (Footnote
2) The Panel determines that Complainant has rights in the trademark and
service mark "DUNKIN’ DONUTS". Based on the April 30, 1963, date of
the earliest registration submitted in this proceeding, and without prejudice
to whether Complainant may hold earlier-arising rights in the mark, the Panel
determines that Complainant’s rights in the "DUNKIN’ DONUTS" mark
arose prior to Respondent’s registration, on January 6, 2000, of the disputed
domain name.
Respondent has registered the domain name "dunkindoughnuts.com".
The disputed domain name (1) incorporates Complainant’s mark with a spelling
variation of the "donuts" portion of Complainant’s mark, (2) eliminates
the space between terms and the apostrophe following "DUNKIN" and
(3) adds the generic top-level domain (gTLD) ".com".
The addition of the generic top-level domain (gTLD) ".com" is without
legal significance from the standpoint of comparing the disputed domain name
to "DUNKIN’ DONUTS" since use of a gTLD is required of domain name
registrants, ".com" is one of only several such gTLDs, and ".com"
does not serve to identify a specific enterprise as a source of goods or services.
(Footnote 3) Similarly, the elimination of
the space between terms and elimination of the apostrophe following "DUNKIN"
are without legal significance since those changes are dictated by technological
factors and common practice among domain name registrants and users.
The term "doughnut" is the common spelling of Complainant’s more
colloquially spelled "DONUTS". (Footnote
4) The terms "doughnut" and "donut" are phonetically
equivalent. An Internet user seeking Complainant’s website, but unfamiliar with
the precise spelling of Complainant’s mark, is likely to use the common spelling
variant "doughnuts" in entering an Internet address intended to locate
Complainant’s website. The Panel determines that the disputed domain name "dunkindoughnuts.com"
is confusingly similar to "DUNKIN’ DONUTS" in the sense of paragraph
4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant
of a domain name that is identical or confusingly similar to a trademark and
service mark in which the Complainant has rights, and it has thus established
the first of the three elements necessary to a finding that Respondent has engaged
in abusive domain name registration.
Respondent’s only demonstrated use of the disputed domain name has been in
connection with posting Register.com’s standard form notice of registration
home page, and offering the domain name for sale to Complainant and the public.
Such use of the disputed domain name does not establish rights or legitimate
interests in the name in the sense of paragraph 4(a)(ii) of the Policy. Respondent’s
mere assertion regarding its intended use of the name does not constitute demonstrable
preparations for its use in connection with a bona fide offering of goods or
services in the sense of paragraph 4(c)(i) of the Policy.
Respondent has failed to establish rights or legitimate interests in the disputed
domain name. Thus, Complainant has established the second element necessary
to prevail on its claim that Respondent has engaged in abusive domain name registration.
The Policy indicates that certain circumstances may, "in particular but
without limitation," be evidence of bad faith (Policy, paragraph 4(b)).
Among these circumstances are that the domain name has been registered or acquired
by a respondent "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 [respondent’s] documented out-of-pocket
costs directly related to the domain name" (id., paragraph 4(b)(i)).
Respondent offered to sell the disputed domain name to Complainant for valuable
consideration in excess of its out-of-pocket expenses directly related to the
name. Respondent also offered to sell the disputed domain name on its publicly
accessible website. The Panel finds that Respondent registered and used the
disputed domain name in bad faith as evidenced by its offer to sell it to Complainant
for a price in excess of its out-of pocket expenses in connection with the name,
as well as by its offer for sale to the public.
Complainant has established the third and final element necessary for a finding
that the Respondent has engaged in abusive domain name registration.
The Panel will therefore request the registrar to transfer the domain name
"dunkindoughnuts.com" to the Complainant.
7. Decision
Based on its finding that the Respondent, RandomThinkers and Patrick Huba,
has engaged in abusive registration and use of the domain name "dunkindoughnuts.com"
within the meaning of paragraph 4(a) of the Policy, the Panel orders that
the domain name "dunkindoughnuts.com" be transferred to the Complainant,
Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc.
Frederick M. Abbott
Sole Panelist
