If You Can’t Make It, Fake It

Steve Levy ⬥ 21 July

I rarely comment on FairWinds’ own cases, but this one, filed with the National Arbitration Forum (NAF) on behalf of DD IP Holder LLC (Dunkin’ Donuts) over dunkin.menu – is worth special mention due to the truly inventive but deceitful way in which the respondent defended his registration and use of the disputed domain name.

The respondent makes the rather creative claim that he teaches a series of basketball clinics in New Delhi offering a “menu” of different dunking (“dunkin”) techniques. He submitted digital mock-ups of posters, which he claims promoted his efforts at local schools (see example). 

Since something smelled fishy about these posters and the idea of using the word “menu” in this way, I called these schools. They said they had never heard of the respondent or his classes.  In his Additional Statement, the respondent explained that many of the schools refused to display his posters or host his program due to discrimination against poor children in India.

I had also submitted a reverse whois report showing that the respondent owns over 360 domains, many of which infringe on various well-known global and local  brands.  I asked whether the respondent would submit additional evidence that he teaches a “menu” of techniques in music under his hardrock.menu domain, in cooking using leancuisine.menu; in the history of old western films with RoyRogers.menu; and in the astronomy of celebrity residences at PlanetHollywood.menu.  Would he also rationalize his registration of domains that have no such convenient meanings such as Marriott.menu, Quorn.recipes, and Sbarro.menu? The respondent claimed that he’s holding these domains for possible future ventures such as franchises.  All of this additional cybersquatting further calls into question the validity of respondent’s claims and evidence.

In its decision, the panelist addressed the question of whether respondent has any rights or legitimate interests in the Dunkin.menu domain, saying  “Respondent relies on his right to use a descriptive word ‘dunkin’ as a domain name to promote his basketball courses. However Respondent has not furnished any evidence that he has ever held such courses… When challenged that such documents [the posters] were fabricated for the purpose of this Complaint, Respondent then asserted that while he had used the posters and flyers for promotional literature, he had failed to organize the events due to impediments put in his way by the management of the schools.”

Next, on the topic of bad faith, the decision states: “This Panel finds that on the balance of probabilities Respondent chose and has used the disputed domain name because of its confusing similarity to Complainant’s trademark and service marks and not for the reasons that he has put forward. His explanations are ingenious but improbable and unsupported by any evidence.”

Critical to this case is the fact that UDRP panelists are bound to consider only the evidence before them, since there’s no discovery or cross-examination in these proceedings. This panelist could have accepted the respondent’s manufactured evidence, saying, in effect, that “my hands are tied by the UDRP process”.

However, due to his experience in these matters, he saw through the ruse and acknowledged our counter-evidence and the fact that the respondent, himself, back-pedaled when he admitted some of the schools didn’t display his posters. In the end, the panelist decided to weigh the evidence rather than simply accept the respondent’s claims and posters at face value, thus arriving at the right conclusion that respondent is a cybersquatter trying very hard to game the UDRP system.

While the respondent does have the option to appeal, past experience suggests that doing so will only be a waste of his money and time since brand owners aggressively defend such ransom cases. Of course, the respondent does own several other infringing domains (noted above and listed in the decision). We’ll just have to wait and see if Lean Cuisine, Marriott, Campbell’s Soup, etc. start offering the respondent franchise opportunities at some point in the future.

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