Complainant is Krispy Kreme Doughnuts, Inc. of Winston-Salem, North Carolina, United States of America and HDN Development Corporation of Wilmington, Delaware, United States of America, represented by Dreitler True LLC, United States of America.
Respondent is Melvin Silvers Jr of Chunchula, Alabama, United States of America / Oneandone Private Registration of Chesterbrook, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2013. On May 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 23, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 28, 2013.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 19, 2013.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on June 25, 2013. 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
Complainant is an international retailer of donuts and related products, in 600 locations in 21 countries. The first KRISPY KREME donut shop opened in 1937. Its subsidiary, HD Capital Corporation, is the owner of the KRISPY KREME trademarks and service marks. The first United States of America (“US”) trademark registration was issued in March 1951, over 60 years ago. Most of its registrations are incontestable under 15 USC §1072.
Complainant produces approximately 7.5 million donuts every day. Complainant has spent over USD 36 million in advertising, marketing and promoting its KRISPY KREME products and services.
Complainant has owned the domain name since 1998, which is an important marketing tool. Customers can get information, purchase products, and get coupons on the website. The site contains a section on charitable fundraising programs. Its charitable fundraising programs are a significant source of revenue. In 2011, Complainant’s revenues were USD 32 million; in 2012 it was USD 35 million.
The disputed domain name was registered on July 14, 2009. The website at the disputed domain name offers fundraising programs that are identical to, and competitive with, those offered by Complainant. The website references Krispy Kreme fundraising and even states that “Krispy Kreme puts the FUN in FUNDRAISING”, which is a quote from Complainant’s site. It also mentions that Krispy Kreme has been fundraising since 1937, which is when Complainant opened its first store. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has rights in the KRISPY KREME trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s KRISPY KREME mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the descriptive word “coupon”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to Complainant’s KRISPY KREME mark. It contains Complainant’s KRISPY KREME mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the common word “coupon”. Numerous previous UDRP decisions have held that the addition of a common word does not distinguish a disputed domain name from a complainant’s mark or preclude a finding of confusing similarity. See, e.g,, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Accordingly, the Panel finds that Complainant has rights in the KRISPY KREME mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in its KRISPY KREME mark and has not authorized Respondent or anyone else to register and use the disputed domain name . Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the KRISPY KREME mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. The first retail store selling KRISPY KREME donuts opened 76 years ago. The KRISPY KREME donuts and products are protected by various US trademark registrations. The KRISPY KREME donuts and products have been widely marketed and even garnered recognition by the Smithsonian Institution’s Museum of American History in 1997. All of this occurred before Respondent registered in 2009. In the last two years, the sales of KRISPY KREME donuts and products totaled approximately USD 67 million. Further, the disputed domain name reverts to web pages showing products and services identical to Complainant’s products, and are sold under Complainant’s KRISPY KREME mark, which reinforces the inference that Respondent was aware of Complainant’s mark. Furthermore, under 15 USC §1072, registration of the mark KRISPY KREME constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
It is clear that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website or of a product or service on Respondent’s website, thus using Complainant’s marks in bad faith. The disputed domain name reverts to web pages showing products and services identical to Complainant’s products, and which are sold under Complainant’s KRISPY KREME mark. Their content appears designed to reinforce the Internet user’s impressions that the disputed domain name belongs to Complainant. The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642. 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 be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: July 9, 2013
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