WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION San Giorgio Coffee, Inc. v. Marc DeCaria Case No. D2010-0567 1. The Parties
The Complainant is San Giorgio Coffee, Inc. of Florida, United States of America, represented by Robert M. Schwartz, P. A., United States of America.
The Respondent is Marc DeCaria of Charlotte, North Carolina, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name, , is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on April 14, 2010. On April 15, 2010, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the domain name. On April 17, 2010, GoDaddy transmitted by email to the Center its verification response, disclosing registrant and contact information that differed from that in the Complaint and providing other details of the registration. In an email communication on April 21, 2010, the Center provided Complainant with the newly-disclosed registrant as well as contact information and invited Complainant to submit an amendment to the Complaint, if it wished to do so. On April 26, 2010, Complainant submitted an amended Complaint. The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 April 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2010. The Response was submitted on May 15, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on May 28, 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 owns a United States federal trademark registration for the mark SAN GIORGIO ESPRESSO COFFEE and design for coffee, which was registered in 1995.
Respondent is a former employee of Complainant.
The domain name was initially registered on September 11, 1996. At about the time Respondent left Complainant's employ, the domain name registration was transferred to Respondent, who has used it as the website for his “San Marco Coffee Company,” then to redirect visitors to the San Marco Coffee Company website at . More recently, the domain name resolved to a parking page hosted by GoDaddy, which includes links to third party websites, including some that sell coffee. 5. Parties' Contentions A. Complainant (1) The domain name is identical or confusingly similar to Complainant's marks.
Complainant has been doing business in Florida under the name San Giorgio Coffee, Inc. since December 1990. It sells coffee products under the marks SAN GIORGIO COFFEE and SAN GIORGIO ESPRESSO COFFEE. It owns a United States federal trademark registration for the mark SAN GIORGIO ESPRESSO COFFEE for coffee, which issued in 1995.
Complainant has common law rights in the mark SAN GIORGIO COFFEE, which it has used since 1990.
The domain name is identical to Complainant's SAN GIORGIO COFFEE mark and confusingly similar to Complainant's SAN GIORGIO ESPRESSO COFFEE mark. (2) Respondent has no rights to or legitimate interests in respect of the domain name.
Prior to 2004, Respondent was a part-time employee of Complainant. At Complainant's direction, he was instructed to register the domain name. From 2004 to 2007, Respondent was a full-time employee of Complainant; his responsibilities included designing and programming Complainant's website and overseeing Internet sales via the web site.
Sometime between May 2006 and February 2007, the domain name registration was transferred to Respondent where it remained until March 2010, when it was registered under a privacy shield (which was lifted after the Complaint was filed) for the benefit of Respondent.
Complainant was not aware of the details of the domain name registration until recently. Complainant has learned that after he left Complainant's employ and until recently, Respondent was using the domain name to direct visitors to Respondent's website at .” Neither Respondent nor the website is associated with Complainant. Subsequently, the “” website was used as a parking page that included links to third party websites that sold coffee products and services unrelated to those offered by Complainant.
On March 3, 2010, Complainant sent Respondent a cease and desist letter demanding that he cease using the domain name. Respondent has also registered two other domain names related to Complainant's marks, and .
Respondent had no rights or legitimate interests, either as a current employee at the time the domain name was registered or thereafter, in the domain name. Even if Complainant knew of Respondent's actions at the time he was an employee and did not forbid them, Respondent no longer had the right to use the domain name after his employment ended and Complainant requested that he discontinue use.
Respondent has not been authorized to use the SAN GIORGIO COFFEE trademark and the domain name is not Respondent's name, nor is it his business or trade name. Respondent is not using the domain name in connection with any bona fide offering of goods and services, but is instead using it illegitimately as a parking page that links to Complainant's competitors. (3) Respondent has registered and is using the domain name in bad faith.
Respondent registered the domain name to prevent Complainant from reflecting its mark in a domain name. Respondent has engaged in a pattern of this conduct by having registered the and domain names.
Respondent has registered and is using the domain name to disrupt Complainant's business.
Respondent has used the domain name to attract visitors to the website, for commercial gain, by creating a likelihood of confusion with Complainant's marks. B. Respondent
The domain name has always been the sole property of Respondent, who used it in conjunction with, but as a separate business from, Complainant. Around December 2006, Respondent and Complainant agreed to separate their respective businesses. Complainant was to keep all Florida local restaurant business and forgo establishing any “e-commerce” website.
Respondent was to separate the Internet business and receive severance payments. As part of that arrangement, the domain name registration was transferred to Respondent and it was agreed that Complainant would have a website showing a “basic catalog of products,” would not make sales via the website.
Pursuant to that arrangement, Complainant registered the domain name in August 2007. That site has been “under construction” since April 2010 and currently redirects visitors to a “San Giorgio Coffee” website at , which offers Complainant's coffee products for sale.
Respondent's coffee company, San Marco Coffee, Inc., contracted with Complainant to process coffee products for Respondent's company while its facility in North Carolina was being constructed. This shows Complainant's “knowledge and acceptance” of Respondent's business.
In October 2007, Complainant stopped making severance payments due to Respondent. Because Complainant agreed that it would make the payments “in the near future,” Respondent refrained from taking legal action.
Respondent states Complainant's President, J. DeCaria does business without putting anything in writing in order to control the other parties and asserts that Complainant is trying to compete with Respondent by obtaining and using the domain name without having to make the remaining severance payments to Respondent.
Complainant's failure to make the severance payments, establishing its own e-commerce website, and bringing this UDRP Complaint constitute breaches of the parties' severance agreement. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b). A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its marks. Complainant has established rights in the mark SAN GIORGIO ESPRESSO COFFEE by virtue of its United States federal trademark registration.1
The disputed domain name is not identical to Complainant's mark; therefore Complainant must establish that it is confusingly similar to the Complainant's mark, determined with reference to the degree of resemblance between the domain name and mark at issue as to appearance, sound, and meaning. As a general matter, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark.
The Panel finds that the domain name is confusingly similar to the SAN GIORGIO ESPRESSO COFFEE mark. The disputed domain name consists of the first and last portions of the mark, which appear to be the dominant portions of the mark.2
The Panel concludes that Complainant has established that the disputed domain name is identical or confusingly similar to Complainant's SAN GIORGIO ESPRESSO COFFEE mark. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Both Respondent and Complainant agree that, while Respondent was employed by Complainant, he was responsible for registering the domain name and operating the web site associated with the domain name.
Complainant asserts that Respondent left its employ “sometime in 2007” and that:
Complainant has learned that after leaving Complainant's employ and until recently, Respondent was using the website to direct Internet users to a website that Respondent operates at “www..”
In contrast, Respondent asserts that he had been operating the company website as a separate business from Complainant's company and that in December 2006, he and Complainant decided to separate the two businesses, with Respondent retaining the e-commerce website and receiving severance payments and Complainant retaining the local business within the state of Florida.
Neither party has provided much in the way of documentary evidence to supports its version of events. Most notably, Complainant does not provide any details regarding when it learned that the domain name was no longer being used for its own website. Further, Respondent's submission included two letters that he received from Complainant – in August 2007 and October 2007 – each of which refer to money owed Respondent – neither of which raise any issue concerning the website.
Indeed, the record does not reflect any objection by Complainant to Respondent's use of the domain name until March 2010. The statement of Complainant's president that Complainant never authorized or acquiesced to Respondent's use of the domain name for his own benefit is, in the absence of other details or supporting evidence, unconvincing.
Consistent with the consensus view, the Panel undertook limited factual research to determine whether there was any other publicly-available information regarding the website and disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 4.5 (Panel may visit site linked to disputed domain name and may undertake limited factual research into the public record). Specifically, the Panel reviewed archived pages from the “www.” website that are available through the Internet Archive's “Wayback Machine.”
Those pages show the following:
Through mid-December 2006, the domain name was used for a “San Giorgio Coffee” website that offered Complainant's products.
In mid-December 2006 – about the time that Respondent contends that he and Complainant were formally separating the two businesses – the website was changed. An animated graphic on the home page changes the “San Giorgio Coffee Company” name and logo to a new name and logo – that of the “San Marco Coffee Company.” Elsewhere, an animated oval graphic displays the messages “new name”, “new look”, “same owner”, and “same great taste” in rotation.
In October 2007, the domain name redirected visitors to the “San Marco Coffee Company” website, at the domain name.
Based on the foregoing, it appears that the domain name was no longer used for Complainant's website as early as December 2006, yet Complainant never objected until more than three years later. The Panel finds it implausible that Complainant was unaware that the domain name was no longer being used for its own website during this extensive period of time.
On this rather unusual set of facts, the Panel concludes that, regardless of whether Complainant has made a prima facie showing on this element, Respondent has on balance established rights and legitimate interests in the domain name within the meaning of Paragraph 4(c)(i). C. Registered and Used in Bad Faith
In light of the conclusion that Complainant has not established the second element, it is not necessary to address the issue of bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek
Sole Panelist
Dated: June 10, 2010
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