The Complainant is Keurig Green Mountain, Inc., of Waterbury, Vermont, United States of America (“U.S.”), represented by Fredrikson & Byron, U.S.
The Respondent is ForSaleOn GoDaddyAuction/Tropic Management of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland and Domains By Proxy, LLC of Scottsdale, Arizona, U.S. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2015. On March 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 13, 2015, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the Domain Name, which differed from the initially named Respondent (i.e., Domains by Proxy LLC) set forth in the Complaint. The Center sent an email communication to the Complainant on March 17, 2015 indicating ForSaleOn GoDaddyAuction/Tropic Management as the Domain Name registrant and providing further contact information disclosed by the Registrar. The Center also invited the Complainant to submit an amendment to the Complaint with respect to the naming of the Respondent. The Complainant filed an amended Complaint on March 23, 2015 citing Domains by Proxy LLC and ForSaleOn GoDaddyAuction/Tropic Management as the Respondent (hereinafter individually and collectively referred to as the “Respondent”).
The Center verified that the Complaint together with the amended Complaint (individually and collectively “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(a) and 4(a), the Center formally notified the Respondent of the amended Complaint and the proceedings commenced on March 25, 2015. In accordance with the Rules, paragraph 5(a), the due date for filing a Response with the Center was April 14, 2015. The Respondent did not submit a response. The Center notified the parties of the Respondent’s default on April 15, 2015.
The Center appointed Marylee Jenkins as the sole panelist in this matter. 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.
During the review of the Complainant’s amended Complaint along with its exhibits, the Panel noted inconsistencies in the identity of the Complainant in the amended Complaint as well as with regard to the ownership of the trademark registrations cited in the amended Complaint. On May 28, 2015, the Panel requested and the Center issued an Administrative Panel Procedural Order No. 1 pursuant to paragraph 12 of the Rules requesting the Complainant to submit a further statement confirming the correct identity of the Complainant and the relevant supporting materials in relation to the trademark registrations cited in the amended Complaint. On June 2, 2015, the Complainant’s representative filed a further amended Complaint citing “Keurig Green Mountain, Inc.” as the Complainant in this proceeding. No comments were received from the Respondent. The Panel finds the submission proper and in compliance with the Rules. 4. Factual Background
Based on the review of the uncontested evidence submitted with the further amended Complaint along with searches of the assignment database of the U.S. Patent and Trademark Office, the Panel determines that the Complainant is the owner of U.S. Trademark Registration No. 3,208,915 for MY K-CUP registered on February 13, 2007 and covering goods in international class 11; U.S. Trademark Registration No. 4,471,381 for K-CUP registered on January 21, 2014 and covering goods in international class 21; U.S. Trademark Registration No. 4,250,238 for K-CUP registered on November 27, 2012 and covering goods in international classes 29, 30 and 32; U.S. Trademark Registration No. 4,192,017 for K-CUP registered on August 14, 2012 and covering goods in international class 11; U.S. Trademark Registration No. 3,291,667 for K-CUP registered on September 11, 2007 and covering goods in international class 30; and U.S. Trademark Registration No. 2,431,816 for K-CUP registered on February 27, 2001 and covering goods in international class 30 (individually and collectively the “Complainant’s Marks”).
The Domain Name was created on May 13, 2011 and the registration of the Domain Name is set to expire on May 13, 2016. The Panel notes that there is currently no accessible website at the Domain Name. Previously, the Domain Name resolved to a website hosting sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant states that it is a leader in specialty coffee and innovative brewing technology. Specifically, it is the manufacturer of KEURIG coffee makers and K-CUP portion pack single-serve beverage cartridges for use in KEURIG devices. The Complainant states that its brewing system was introduced in 1998 and has sold over 45 million coffee brewers and over 30 billion portion packs to date with net sales of USD 4.7 billion in 2014. The Complainant alleges that it has carried on substantial advertising of its products throughout North America via television advertising and substantial web and social media advertising, expending a total of USD 137.2 million, USD 193.2 million, and USD 147.7 million for fiscal years 2014, 2013, and 2012, respectively. The Complainant further states that it is the owner of all rights in and to the Complainant’s Marks.
The Complainant alleges that the Respondent registered the Domain Name on or about May 13, 2011, which was well after the Complainant’s first use of the Complainant’s Marks in January of 1998. The Complainant further alleges that the Domain Name wholly incorporates the Complainant’s Marks and that the Respondent cannot defend against a finding of confusing similarity merely by adding generic terms to the Domain Name, such as “buy” and “cheap.” The Complainant therefore alleges that the Respondent’s Domain Name is confusingly similar to the Complainant’s Marks in which the Complainant has rights.
The Complainant further alleges that the Respondent should be considered as having no rights or legitimate interests in respect of the Domain Name based on the Respondent: (i) having no trademark applications or registrations for the mark KCUP or having KCUPS in its name; (ii) not being commonly known by KCUP or KCUPS; (iii) having not done business under these names; or (iv) having not acquired any trademark or service mark rights therein. Additionally, the Complainant has never authorized the Respondent to register or use the Domain Name or to manufacture or distribute K-CUP packs for the Complainant. Thus, the Complainant alleges that there is no bona fide use of the Domain Name by the Respondent.
Additionally, the Complainant alleges that given the Complainant’s Marks have been registered and have been in use for over sixteen years, given the strength of the K-CUP brand, and given the content of the website to which the Domain Name is directed specifically referencing the Complainant and the Complainant’s Marks, there is no doubt that the Respondent had full knowledge of the Complainant’s rights in and to the Complainant’s Marks. Further, the Complainant alleges that the Respondent is not making a legitimate, noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s Marks. Nor does the Respondent have any authority or license to manufacture, distribute or sell K-CUP branded single-serve beverage packs. Moreover, the Complainant alleges that the Respondent’s improper use of the Complainant’s Marks repeatedly on the website at the Domain Name poses a real and serious risk of weakening the Complainant’s Marks and diminishing the inherent distinctive nature thereof, all to the detriment of the Complainant. In addition, the Complainant alleges that the Respondent’s site is not only directed to the Complainant’s products but also directs users to products of its competitors.
The Complainant alleges that the Respondent has registered and is using the Domain Name in an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s Marks as to source, sponsorship, affiliation, or endorsement. Particularly, the Complainant alleges that given the strong reputation and brand awareness of the Complainant’s Marks, both in the U.S. and globally, and the frequency of references to the Complainant’s Marks on the Respondent’s website, it is inconceivable that the Respondent chose the Domain Name without being consciously aware of the connection it would make with the Complainant’s business. Specifically, the Complainant alleges that the Respondent is trading on consumers’ interest in the Complainant and the Complainant’s K-CUP products in order to generate traffic to its site and to commercially benefit therefrom.
The Complainant alleges that the Respondent’s activities are also prima facie evidence of conduct falling squarely within paragraph 4(b)(iii) of the Policy (i.e., disrupting the business of the Complainant) and that the Respondent is clearly competing with the Complainant for the attention of Internet users, which it hopes to divert to its site. The Complainant additionally alleges that the statement at the bottom of the Respondent’s web site at the Domain Name (i.e., “[t]he Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintains any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois)”) cannot by itself cure bad faith when the bad faith has been established by other factors. The Complainant further alleges that the Respondent makes this statement knowing full well that it registered the Domain Name with a privacy service, such that users could never contact the Domain Name owner directly, making the effectiveness of this disclaimer questionable at best. The Complainant therefore submits that the Domain Name was registered and used in bad faith. B. Respondent
No response was received from the Respondent with respect to this proceeding. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (the complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel can rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant’s Marks.
A review of the second-level domain “buykcupscheap” of the Domain Name shows that it comprises the Complainant’s Marks (i.e., the federally registered mark K-CUP), without a hyphen and with an additional letter “s”, along with the descriptive words “buy” and “cheap.” The omission of the hyphen and the addition of the letter “s” and the descriptive words “buy” and “cheap” do not prevent the Domain Name from being considered confusingly similar to the Complainant’s Marks. The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s Marks and that paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Name. The uncontested evidence shows that the Complainant had well established rights to the Complainant’s Marks at the time of the Respondent’s registration of the Domain Name and that the Respondent nevertheless registered and has been using the Domain Name for several years. The fact that the Domain Name resolved to a web page with sponsored links and that there is now no web site accessible at the Domain Name does not support a finding that the Respondent was making a legitimate noncommercial or fair use of the Domain Name. Rather based on the submitted evidence, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
Based upon the uncontested evidence submitted by the Complainant, the Panel finds that the Respondent clearly had knowledge of the Complainant’s Marks when registering the Domain Name. This finding is supported by the evidence showing that the Domain Name was registered well after the Complainant began its use of the Complainant’s Marks. Further, the evidence shows that the Respondent was using sponsored links to draw users to its site for commercial gain. This evidence establishes that the Respondent was well aware of the Complainant’s business, its products, and the Complainant’s Marks. Based on this cumulative evidence, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation or endorsement thereof. The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Date: June 10, 2015
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