WIPO Arbitration and Mediation Center

4.A.2 The Complainant is the proprietor of the following registered trademarks as the successor-in-interest to the original registrant, Baskin-Robbins International Company.

Country	Reg. No.	Mark	Classes	Dates of Application and Registration
United States of America	712,570	BASKIN-ROBBINS 31 ICE CREAM	46	Filed January 26, 1959 Registered March 14, 1961
United States of America	1,185,045	BASKIN-ROBBINS	46	Filed October 27, 1980 Registered January 5, 1982
United Arab Emirates	40791	BASKIN 31 ROBBINS	29	Filed October 7, 2002 Registered June 1, 2003
United Arab Emirates	40809	BASKIN 31 ROBBINS	43	Filed October 7, 2002 Registered June 1, 2003

4.A.3 The Complainant says that it has obtained registrations for its BASKIN ROBBINS trademarks in more than 35 countries around the world.

The BASKIN ROBBINS Business

4.A.4 The Complainant is the world's largest hard serve ice cream franchise, with more than 6,000 outlets in 35 countries, serving 3.7 million people each week. There are currently 108 BASKIN ROBBINS shops in the Respondent's country, the United Arab Emirates ("UAE"), which are operated by a licensee of the Complainant. The first BASKIN ROBBINS shops in the UAE opened in 1978. There are a total of 450 BASKIN ROBBINS shops in the Gulf region, of which the UAE forms a part, within a further 50 such shops planned to be opened during the next twelve months.

Advertisement and Promotion of BASKIN ROBBINS

4.A.5 Between September 2000 and December 2007, the Complainant, its predecessors and "Baskin Robbins" franchisees spent approximately USD140 million on advertising and promoting the BASKIN ROBBINS name, and in 2007 alone spent over USD 22 million on advertising and promotion.

The BASKIN-ROBBINS Website

4.A.6 The Complainant exhibits material from its website at the domain name <baskinrobbins.com>.

Complainant's Correspondence with the Respondent Preceding the Filing of this Complaint

4.A.7 The Complainant says that its first knowledge of the disputed domain name was when one of its franchisees received an unsolicited email from the Respondent on November 15, 2008. The Respondent offered to sell two domain names, <baskinrobbins.ae> and <dunkindonuts.ae> for $15,000.00, failing which it would be auctioned off to the highest buyer. On December 17, 2008 the Complainant counter offered to pay AED 150.00 per domain name by way of reimbursement for the registration fees for those two domain names and a further two domain names registered by the Respondent, including <baskin-robbins.ae>. The Complainant also advised the Respondent that it owned registered trademarks in the UAE for BASKIN-ROBBINS.

4.A.8 The Respondent did not reply to that counteroffer and, after seeing online advertisements by the Respondent to sell, inter alia, the disputed domain names, on April 23, 2009 the Complainant's counsel sent the Respondent a "cease and desist" letter. A follow-up email was sent by them to the Respondent on April 29, 2009 requesting the Respondent to take the actions needed to transfer those domain names to the Complainant. The correspondence after notification of this Complaint on July 14, 2009 is summarized in paragraph 3 above.

4.B The Respondent

In the absence of a Response, all that is known of the Respondent is set out in the Complaint and in the party and party email correspondence summarized in paragraphs 3 and 4.A.7 and 8 above,. The disputed domain names were registered by the Respondent on August 14, 2008 and by his own admission never used to link to an active website: see, paragraph 3 above, Respondent's email of July 15, 2009.

5. Parties' Contentions

5.A Complainant

Identical or Confusingly Similar

5.A.1 The Complainant is the proprietor of, inter alia, the BASKIN-ROBBINS registered trademarks in the United States of America ("US") and in the UAE set out in paragraph 4.A.2 above.

5.A.2 The <baskin-robbins.ae> domain name is identical to the Complainant's US trademark registration number 1,185,045 filed in 1980 and issued in 1982.

5.A.3 The <baskinrobbins.ae> domain name is also identical to that registered trademark but for omission of the hyphen.

5.A.4 The Complainant also relies upon its registration of the BASKIN ROBBINS marks in 35 countries worldwide and to the BASKIN ROBBINS name and mark being distinctive and well-known, both internationally and in the UAE.

Rights or Legitimate Interests

5.A.5 The Complainant says that the Respondent is neither licensed nor otherwise authorised to use the BASKIN ROBBINS marks,. Only the franchisees and licensees of the Complainant's affiliates are authorised to use the BASKIN ROBBINS name and mark. The Respondent is neither a franchisee nor a licensee.

5.A.6 The Complainant says that when the Respondent registered the disputed domain names in August 2008 he was on constructive notice of its BASKIN ROBBINS trademarks registered in both the United States of America since 1961 and in the UAE since 2003. The Complainant says that the Respondent would also have been on notice of the BASKIN ROBBINS name and mark by virtue of both the international fame of that mark and also the fact that it has been used in the UAE since 1978.

5.A.7 Consequently, the Complainant says that the Respondent cannot assert bona fide or fair use of either of the disputed domain names, nor can he demonstrate that either he as an individual or as a business has ever been commonly known by either domain name. In short, the Respondent cannot demonstrate that he can bring himself within any of the circumstances set out in paragraph 6(c) of the Policy. Indeed, the Complainant says, the Respondent's offers to sell the disputed domain names to the highest buyer is indicative of lack of bona fide rights to or legitimate interests in those names: see, paragraph 3 and 4.A.7 to 8 above.

5.A.8 As further evidence of the Respondent's lack of bona fides the Complainant exhibits the Respondent's advertisements to sell the disputed domain names through two websites, "www.bazaar.ae and www.uaeinsider.com", together with domain names incorporating the well-known trademarks of third parties, including <gillette.ae>; <costacoffee.ae>; <dominos.ae>; <mothercare.ae> and <heinz.ae>

Registered and Used in Bad Faith

5.A.9 Here, the Complainant refers to the Respondent's offer to sell at auction both the disputed domain names and other domain names incorporating well-known third party trademarks, which the Complainant says evidence circumstances set out in paragraph 6(b)(i) of the Policy. The Complaint cites a number of decisions under the Policy where such activity has been found to constitute bad faith registration and use. Those decisions include Yahoo! Inc v. Fady Alassahd a/k/a Fady Al Assaad, WIPO Case No. DAE2008-0001; Yahoo! Inc v. Pham, NAF Claim No. FA109699; eBay, Inc v. Akram Mehmood, WIPO Case No. DAE2007-0001 and Sony Ericsson Mobile Communications International AB and Others v. Mohamed Ali Aal Ali, WIPO Case No. DAE2006-0002.

5.A.10 As to registration in bad faith, in addition to the well-known status of the BASKIN ROBBINS trademarks and the registered trademarks set out in paragraph 4.A.2 above, the Complainant points to the Respondent's false representation and warranty in Clause 4.3 of the Registration Agreement whereunder he warranted that neither of the disputed domain names would infringe the rights of any third party. See, also in that respect paragraph 4 of the Policy.

5.A.11 The Complainant also asserts that the above summarized activities by the Respondent fall within paragraph 6(b)(ii) of the Policy, again citing decisions under the Policy where similar facts were found to constitute bad faith registration and use. As to "pattern of conduct", the Complainant refers to the other domain names registered by the Respondent which incorporate well-known third party trademarks: see, paragraph 5.A.8 above.

5.A.12 The Complainant also relies on paragraph 6(b)(iv) of the Policy citing the Respondent's passive holding of the disputed domain names in the context of the Complainant's rights in the world famous BASKIN ROBBINS trademarks.

5.A.13 Also, the Respondent's failure to transfer the disputed domain names and his continued offer of those names for sale even after receipt of the April 23, 2009 "cease and desist" letter is, the Complainant says, additional evidence of bad faith use. Again, the Complainant cites a number of decisions under the Policy that have found a Respondent's failure to respond positively to a "cease and desist" letter invites an inference of bad faith.

5.B Respondent

As noted, no Response has been filed.

6. Discussion and Findings

6.1 Policy paragraph 6(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding

(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered or is being used in bad faith.

6.2 The Policy paragraph 6(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 6(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration or use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 6(b) and 6(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 6(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant has demonstrated that it has rights in the BASKIN ROBBINS trademarks, which are registered internationally (including in the United States of America since 1961 and in the UAE since 2003) and are well-known in relation to its ice cream products.

6.6. The disputed domain name <baskin-robbins.ae> is identical to the Complainant's US registered trademark number 1,185,045 (registered in 1982).

6.7 The absence of a hyphen in the disputed domain name <baskinrobbins.ae> can be ignored for the purposes of the Policy and, accordingly, is also identical to the said US trademark registration.

6.8 In the circumstances, the Complaint satisfies the requirements of paragraph 6(a)(i) of the Policy.

Rights or Legitimate Interests

6.9 It is plain from the circumstances set out in paragraphs 4 and 5 above that the Respondent cannot demonstrate any of the circumstances of paragraph 6(c) of the Policy. Nor, in the absence of a Response, is there any indication that the Respondent could show rights or legitimate interests in either of the disputed domain names on any other basis.

Registered or Used in Bad Faith

6.10 Again, the facts and matters set out in the preceding paragraphs – which do not require repetition here – plainly establish that both of the disputed domain names were registered and are being used in bad faith. In the inter partes email correspondence the Respondent has made no effort to dispute the Complainant's rights to the BASKIN ROBBINS trademarks, nor to the Complainant's entitlement to the transfer of the disputed domain names. Furthermore, his counteroffer to sell those domain names to the Complainant – Respondent's emails of November 15, 2008 and August 19, 2009 – coupled with his offer to sell them on the "www.bazaar.ae" and "www.uaeinsider.com" websites is further evidence of bad faith.

6.11 Consequently, the Complaint meets the requirements of paragraph 6(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <baskin-robbins.ae> and <baskinrobbins.ae> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: September 25, 2009