The Complainant are Dunkin’ Brands Group, Inc. (“Dunkin’ Brands”), DD IP Holder LLC (“DD”), and BR IP Holder LLC (“BR”), United States of America (“United States”), represented by FairWinds Partners, LLC, United States.
The Respondent is Li Jiang, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2019. On October 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on November 13, 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 in English on November 14, 2019. On November 13, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On November 14, 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 the Respondent, in English and Chinese of the Complaint, and the proceedings commenced on November 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2019. The Center appointed Karen Fong as the sole panelist in this matter on January 10, 2020. 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 DD, a subsidiary of Dunkin’ Brands is the owner of the trade marks DUNKIN’ and DUNKIN’ DONUTS. The Complainant commenced use of the DUNKIN’ DONUTS trade mark in the United States in 1954 in connection with the operation of coffee shops and the sale of coffee beans, ground coffee and related products. It is one of the world’s largest franchised chains of coffee and baked goods shops with nearly 11,000 restaurants in 33 countries. It has global franchisee-reported sales of approximately USD 10.1 billion in 2015 and has repeatedly ranked as either number one or two in the donut, muffin and coffee retails categories. The Complainant BR, also a subsidiary of Dunkin’ Brands is owner of the trade marks BASKIN-ROBBINS. The Complainant commenced use of the BASKIN-ROBBINS trade mark in the United States in 1945. It is now one of the largest chain of ice cream specialty shops serving ice cream, frozen deserts and beverages to more than 300 million customers each year. The Complainant has more than 7,000 store locations in over 50 countries. The DUNKIN’ DONUTS and BASKIN-ROBBINS marks are extensively promoted through print, web, television, and trade show advertising. The Complainants DD and BR are the owners of numerous domain names consisting of the terms “dukin’”, “dukin’ donuts” and “baskin-robbins”, including, The marks DUNKIN’ and DUNKIN’ DONUTS and BASKIN-ROBBINS are registered as trade marks in many jurisdictions throughout the world. The following are some of the registrations submitted in evidence: - United States Trade Mark No. 0748901, DUNKIN’ DONUTS, registered on April 30, 1963; - European Union Trade Mark No. 000095380, DUNKIN’, registered on January 20, 1999; - Chinese Trade Mark No. 749853, DUNKIN’ DONUTS, registered on June 7, 1995; - United States Trade Mark No. 1185045, BASKIN-ROBBINS, registered on January 5, 1982. (together, the “Trade Marks”). The Domain Name was registered by the Respondent, an individual based in China on August 11, 2019. The Domain Name is pointed to a pay-per-click website with click through links under headings including: “Guest Satisfaction Survey”, “Customer Satisfation Survey” and “Customer Engagement Survey” (the “Website”). The Respondent has had adverse findings against him/her in a number of UDRP cases including the following: Amscot Corporation v. Li Jiang, WIPO Case No. DCO2018-0001. 5. Parties’ Contentions A. Complainants The Complainants contend that the Domain Name is confusingly similar to the Trade Marks, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainants request transfer of the Domain Name to the Complainants. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Preliminary Procedural Issues 6.1 Consolidation of Complainants The case before the Panel involves two individual brand owners and their parent company wishing to bring a single consolidated complaint in relation to a single domain name comprising the trade marks of both brand owners in combination against a single registrant. The preliminary issue to be determined is whether the Complainants are entitled to bring a consolidated complaint against the Respondent. Paragraph 5(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. Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants in a single complaint in a single administrative proceeding. 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. While both the Policy and Rules use the term “complainant” throughout, the Policy and Rules do not expressly preclude multiple legal persons from falling within the term “complainant”. Section 4.11.1 of WIPO Overview of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. With regard to the first limb of the test, the Complainants are related to each other as DD and BR are both subsidiaries of Dunkin’ Brands. Two of the Complainants each individually own the two separate Trade Marks and the corporate relationship between them through the third Complainant means that they have a common legal interest and therefore a common grievance against the Respondent who they allege has registered and used the Domain Name in bad faith. Further, the Respondent has also engaged in common conduct that has affected the Complainants in a similar fashion. Common conduct has been found to exist in the following cases: (i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or (ii) where there is a clear pattern of registration and use of all the disputed domain names. In this case, the indications of the Respondent engaging in common conduct which has affected the Complainants’ legal rights in a similar fashion are as follows: (i) the Complainants are related companies with two of them being subsidiaries of the third; (ii) the Complainants own and use a domain name which comprises a combination of elements of both the DUNKIN’ and BASKIN-ROBBINS trade marks for use for guest satisfaction surveys - (iii) the Domain Name is identical to the above domain name except that it is a “.co” rather than a “.com” domain name, just one letter missing when compared with the Complainants’ domain name; (iv) In view of the above, such use affects their respective rights and interests in a similar fashion. The Panel is satisfied from the above that common conduct is found to exist. The Panel now turns to the second limb of the test as to whether it would be equitable and procedurally efficient to permit the consolidation. In considering this, the Panel also is satisfied that this is the case for the following reasons: (i) the Complainants’ substantive arguments made under each of the three elements of the Policy are common to the Domain Name; (ii) All the Complainants are represented by a single authorized representative for the purpose of the proceedings. Accordingly, the Panel determines that this Complaint consisting of multiple Complainants should, for the reasons discussed above, be permitted to have their complaints consolidated into a single Complaint for the purpose of the present proceedings under the Policy. The Respondent has not chosen to file a Response and consequently there are no submissions to be taken into account on the procedural issues. In light of the above, the Complainants may be referred to collectively as the “Complainant” hereafter. 6.2 Language of the Proceeding The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. The Complainant submits that the language of the proceeding should be English for the following reasons: - The Domain Name consists of words derived from the English language; - The Website’s content is entirely in the English language; - The Respondent has copied the Complainant’s own website at “www.telldunkinbaskin.com” and is therefore a cybersquatter. It would be disproportionate to require the Complainant to submit the Complaint in Chinese as this would result in additional expense and unnecessary delay for the Complainant for the translation; - The Complainant operates their global business in English. In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs. The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding. 7. Discussion and Findings 7.1 General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and is being used in bad faith. 7.2 Substantive Analysis A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Marks. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Domain Name contains the Complainant’s distinctive DUNKIN’ mark in its entirety plus the first element of the mark BASKIN-ROBBINS together with the descriptive word “tell” as the prefix. The addition of this term does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Marks in the Domain Name. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org,WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie wu/Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic,WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) or country code Top-Level Domain (“ccTLD”) which in this case is “.co”, the country code assigned to Columbia. It is viewed as a standard registration requirement. The Panel finds that the Domain Name is identical or confusingly similar to the Trade Marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the UDRP panels weigh all the evidence, with the burden of proof always remaining on the complainant. The Complainant submits that the Respondent is not commonly known by the Domain Name nor is there any evidence that he/she owns any trade mark rights to the names comprising the Domain Name. The Respondent cannot assert that he/she was using or had made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Domain Name resolves to the Website, a pay-per-click website, which diverts visitors likely to be the Complainant’s customers and potential customers to other websites which are not associated with the Complainant. Such use is not bona fide use as it is clearly a case where a respondent is seeking to unduly profit from the complainant’s goodwill and reputation. As the Website being a pay-per-click website is a commercial website clearly being used for commercial gain, it does not amount to bona fide offering of goods or services or legitimate noncommercial fair use under the Policy. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he/she chose to register a well known trade mark which he/she has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. The Panel is satisfied that the Respondent must have been aware of the Trade Marks when he/she registered the Domain Name. It is implausible that he/she was unaware of the Complainant when he/she registered the Domain Name. The Trade Marks are well known and the fact that the Domain Name mirrors the Complainant’s customer survey website which is a combination of two Trade Marks belonging to separate but related owners make it clear that the Respondent had knowledge of the Trade Marks when he/she registered them. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that registration was in bad faith. The Domain Name is also used in bad faith. The Website is a pay-per-click site which has been set up to the commercial benefit to the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Name is likely to confuse Internet users trying to find the Complainant’s official customer survey website. Such confusion will inevitably result due to the incorporation of the Trade Marks as the most prominent element of the Domain Name. The Respondent employs the fame of the Trade Marks to mislead Internet users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, Internet users to his/her Website, by creating a likelihood of confusion with the Complainant’s Trade Marks. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. In addition, the adverse findings against the Respondent for registration of Domain Name comprising Trade Marks belonging to third parties amounts to a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name, demonstrating registration and use in bad faith. Accordingly, the Complaint has satisfied the third element of the UDRP. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Karen Fong
Sole Panelist
Date: January 28, 2020
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