Crumbl IP, LLC v Aarnav Paul, AP InfoTech

WIPO Case No. D2024-4720

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Crumbl IP, LLC v. Aarnav Paul, AP InfoTech

Case No. D2024-4720

1. The Parties

The Complainant is Crumbl IP, LLC, United States of America (“United States” or “US”), represented by

Dorsey & Whitney LLP, United States.

The Respondent is Aarnav Paul, AP InfoTech, India.

2. The Domain Name and Registrar

The disputed domain name <crumblmerch.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2024. On November 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2024, 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 (REDACTED FOR PRIVACY, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 18, 2024, 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 on November 21, 2024.

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 of the Complaint, and the proceedings commenced on November 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2024.

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The Center appointed Tobias Zuberbühler as the sole panelist in this matter on December 17, 2024. 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.

On December 18, 2024, the Respondent sent the following message to the Center: “The domain will [be] deactivated after 12 days and I will never renew this domain. Thanks”.

4. Factual Background

The Complainant operates a franchise chain of bakeries with over 1,000 retail locations worldwide.

The Complainant owns the US trademark registration No. 5910669 for CRUMBL (registered on November
12, 2019), together with other US registrations and a large portfolio of CRUMBL marks around the world.
The Complainant has been using its CRUMBL marks since 2017.

The disputed domain name was registered on December 29, 2022. As of October 2, 2024, the website associated with the disputed domain name has been purportedly selling the Complainant’s “CRUMBL merchandise” through what was presented as an “official” Crumbl store.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

The Respondent has not submitted any substantive reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The mark CRUMBL is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here “merch”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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The Panel finds that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds that the composition of the disputed domain name incorporating the Complainant’s trademark coupled with the use of the disputed domain name to resolve to a website in which the Respondent attempts to pass itself off as the Complainant, stating in particular that it is the “official” store for the Complainant’s merchandise, does not amount to a bona fide offering of goods or services.

The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Under the circumstances of this case, including the composition and use of the disputed domain name incorporating the Complainant’s mark together with the term “merch”, it can be inferred that the Respondent was aware of the Complainant’s mark when registering the disputed domain name.

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Having reviewed the available record, and noting the composition of the disputed domain name, under the circumstances of this case, the Panel finds that the use of the disputed domain name to purportedly sell the Complainant’s CRUMBL merchandise through a web store displaying the Complainant’s trademark and logo and branded as “official” supports a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <crumblmerch.com> be transferred to the Complainant.

/Tobias Zuberbühler/
Tobias Zuberbühler
Sole Panelist
Date: December 31, 2024