WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Coffee Bean Direct Corporation v. Claude Pope Case No. D2010-0162 1. The Parties
Complainant is Coffee Bean Direct Corporation of New Jersey, United States of America, represented by Michaelson & Associates, United States of America.
Respondent is Claude Pope of North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2010. On February 5, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the Domain Name. On February 9, 2010, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 February 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 3, 2010.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 16, 2010. 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, Coffee Been Direct Corporation, is a coffee-roasting company that roasts, packs and ships all of its own products and has been operating since 2004.
Complainant is the owner of the trademark, COFFEE DIRECT (United States Reg. No. 3,617,387), registered on May 5, 2009. Complainant has applied for two additional marks:
- United States Appln. No. 77/709,637 for the mark COFFEEDIRECT and Design (stylized and color), for coffee and tea.
- United States Appln. No. 77/709,652 for the mark COFFEE DIRECT EST.2004 and design (stylized and color), for coffee and tea.
Respondent initially registered the Domain Name in 1999 and re-registered it on June 4, 2008. 5. Parties' Contentions A. Complainant
Complainant has submitted a well-presented and well-supported Complaint, and the Panel thanks Complainant for its diligence in this regard.
Complainant explains that in 2008, it implemented plans to adopt and use the trademark COFFEE DIRECT, in addition to its existing trademark COFFEE BEAN DIRECT. It commenced actual use of the COFFEE DIRECT mark in February 2009. As noted above, Complainant is the owner of the COFFEE DIRECT mark and has two additional applications pending.
Complainant states that Respondent was an online coffee seller from approximately 1999 until it went out of business in January 2006. At least as early as January 14, 2010, the Domain Name did not resolve to an active website. Complainant submits evidence to show that Respondent is currently soliciting offers directly on the Network Solutions website from others who seek to purchase the Domain Name. According to Complainant, attempts by Respondent to sell the Domain Name date back to January 2008. According to records found on the Wayback Machine Internet archive, Respondent's latest web page of record is dated June 23, 2008, and is identical to the one dated January 23, 2008, wherein it is stated:
Thank you for visiting CoffeeD.
We appreciate your business during these past 8 years. We have
ceased our operations effective January 2006.
This domain is currently for sale. Please email
[…]@.
Thanks.
Complainant states it was aware of Respondent's cessation of business and abandonment of the Domain Name since 2006. In April 2007, the President of Complainant had a telephone conversation with Respondent to inquire about Respondent transferring the Domain Name to Complainant. According to Complainant, Respondent indicated that he was no longer in the coffee business and did not intend to return to the business. Respondent stated that he wanted USD200,000 to transfer the Domain Name to Complainant. Complainant refused this offer and counter offered a few thousand dollars, which was not accepted. More recently, on December 13, 2007, a Vice President of Complainant sent a follow up email to Respondent about purchase of the Domain Name, to which Respondent answered, “I'm owner of the coffeeed domain name. Please feel free to make an offer.”
Thereafter, on May 1, 2008, Respondent took the affirmative step to update his registration data, presumably to renew his registration of the Domain Name for an additional five-year period expiring June 3, 2013.
Based on this background, Complainant asserts that each of the three elements of the UDRP has been met. First, Respondent's Domain Name is identical to Complainant's registered COFFEE DIRECT mark, other than an insignificant space between the words in the mark not present in the Domain Name. Second, Respondent has not established rights or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. The record is incontestable that Respondent ceased and abandoned use of the Domain Name, by its own admission in a prior web page, since 2006. That abandonment continues to this day. Moreover, in view of Complainant's subsequent adoption and registration of the COFFEE DIRECT mark, Respondent cannot re-adopt and use the same mark in a new coffee business venture, nor has it given any indication that it intends to do so. Given its abandonment since 2006, Respondent is not even in a position to assert that it is commonly known by the COFFEE DIRECT mark, nor can it acquire such a recognition given Complainant's exclusive rights in that mark. Respondent is not a licensee or other permitted user of Complainant's COFFEE DIRECT mark. Respondent is not using the Domain Name as a vehicle for noncommercial or otherwise potentially legitimate, good faith communication. In fact Respondent is not using the Domain Name at all. Thus, Respondent has no legitimate interest in maintaining the Domain Name registration.
Last, Complainant contends that the Domain Name was registered and is being used in bad faith. Respondent's unwillingness to transfer the Domain Name, coupled with the offer to sell it for a sum substantially in excess of the cost of registration, constitutes bad faith under the Policy, paragraph 4(b). Respondent's continued passive holding of the Domain Name constitutes evidence of bad faith. In addition, Respondent solicited offers from others to purchase the Domain Name. The fact that Respondent responded to Complainant's inquiry rather than taking the initiative itself does not negate Respondent's bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These are that:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(3) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has trademark rights in the mark COFFEE DIRECT, and that the Domain Name is identical or confusingly similar to Complainant's mark. The Domain Name consists of exactly the same sequence of letters and, except for the elimination of the space between words and the “.com” generic top-level domain, is identical to Complainant's trademark. Since the Domain Name is identical or confusingly similar to the trademark of Complainant, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that it has never licensed its COFFEE DIRECT trademark to Respondent or otherwise authorized Respondent to use the mark in the Domain Name. The record shows that Respondent ceased active use of the Domain Name in connection with its former coffee business, which at one time would have supported Respondent's rights or legitimate interests in regards to the Domain Name. Given this shift, the Panel agrees with Complainant that Respondent is no longer in a position to assert that it is commonly known by the “coffee direct” name. In addition, Respondent is not using the Domain Name as a vehicle for any noncommercial purpose or communication. The only recent use of the Domain Name by Respondent appears to be in connection with efforts to sell it. Whether Respondent's efforts to sell the Domain Name may be considered to give rise to any rights or legitimate interests is itself a question not so easily answered in this case, particularly in view of Respondent's former legitimate use of the Domain Name and the fact that Respondent's efforts to sell the Domain Name pre-date Complainant's recent acquisition of trademark rights in May 2009. Rather than conclusively decide this element, however, the Panel instead turns to consider whether the Domain Name was registered and is being used in bad faith. C. Registered and Used in Bad Faith
The real issue in the present case is to determine whether Complainant has proven bad faith or not. The Panel finds that Complainant has not satisfied its burden of proving this factor. Respondent registered the Domain Name well before Complainant had acquired its trademark rights, and even before Complainant had indicated any intention to change its brand name to COFFEE DIRECT. There is no evidence, nor has Complainant offered any, to show that Respondent has ever targeted Complainant or its mark, whether at the time of registration or thereafter. Instead, Complainant's evidence suggests that Respondent initially registered the Domain Name and used it in connection with a bona fide coffee business.
More recently, Respondent has apparently not used the Domain Name other than in connection with seemingly limited attempts to sell it. While inaction may under certain circumstances be considered as evidence of bad faith, those circumstances have usually involved respondents who attempted to conceal their identity or use false contact details, or who otherwise registered the disputed domain name after the trademark owner's mark was well-known, such that improper targeting of the mark could be inferred. See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; CBS Broadcasting Inc. v. Edward Enterprises,WIPO Case No. D2000-0242 and all the decisions quoted in that decision. As expressed in the Telstra case, it can be seen that the requirement in paragraph 4(a)(iii) that the domain name “has been registered and is being used in bad faith” will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith.” Here, the Panel sees no evidence of record that even at the time of renewal of the Domain Name in June 2008, Complainant had acquired any trademark rights of which Respondent might have been aware. Thus, the Panel cannot find that Respondent had actual or constructive notice of Complainant's incipient plans to obtain trademark rights for the COFFEE DIRECT mark. Moreover, having legitimately obtained registration of the Domain Name and used it for a period in connection with its business, Respondent's attempts later to sell it do not in this Panel's assessment conclusively establish bad faith, particularly in light of the only recently established trademark rights of Complainant. Efforts to sell domain names corresponding to generic or non-trademarked terms, even for prices in excess of out-of-pocket costs, do not of themselves establish bad faith. Should Respondent use the Domain Name in connection with an offering of coffee-related goods or services, Complainant may well have grounds to bring a claim for trademark infringement in the courts. However, the UDRP requires a showing a registration and use in bad faith, which the Panel finds has not been shown in this case. 7. Decision
For all the foregoing reasons, the Complaint is denied. Although the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights, the Panel finds that Complainant has failed to demonstrate that Respondent registered and is using the Domain Name in bad faith. Accordingly, the Panel concludes that the Domain Name should not be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Dated: April 5, 2010
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