The Complainant is Keurig Green Mountain, Inc. of Waterbury, Vermont, United States of America (“US”), represented by Fredrikson & Byron, P.A., US.
The Respondent is Fulai Chen of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed 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 November 4, 2016. On November 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2016.
The Center appointed John Swinson as the sole panelist in this matter on December 7, 2016. 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
The Complainant is Keurig Green Mountain, a company based in the US which provides specialty coffee and coffee brewers. The Complainant manufactures KEURIG coffee makers and K-Cup cartridges for use in KEURIG devices. Keurig has been the coffee maker “Brand of the Year” for five consecutive years since 2012. The Complainant has sold 60.3 million KEURIG coffee brewers and in 2015 had net sales of USD 4.5 billion.
The Complainant owns a number of US, European and International trade mark registrations for KEURIG, the earliest of which was filed in the US on May 29, 1996 and registered on April 29, 1997 with registration number no. 2,057,361 (the “Trade Mark”). The Panel has verified the Complainant’s rights in the Trade Mark. The Complainant also owns a number of further US, European and International trade mark registrations and applications which incorporate the Trade Mark, such as KEURIG BREWED and KEURIG PREMIUM COFFEE SYSTEMS.
The Respondent is Fulai Chen, an individual of China. The Respondent did not file a response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on August 30, 2016. The website at the Disputed Domain Name is currently a parking page which contains the message “website coming soon”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name consists of the Trade Mark combined with the generic Top-Level Domain (“gTLD”) “.store”. This is a descriptive gTLD which can be ignored for the purpose of testing confusing similarity.
The Disputed Domain Name is confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent has no trade mark applications or registrations relating to the Disputed Domain Name of which the Complainant is aware, and there is nothing to suggest that the Respondent is otherwise commonly known as the Disputed Domain Name. The Complainant has not authorized the Respondent to register or use the Disputed Domain Name, or to manufacture or distribute products under the Trade Mark. As such, there can be no bona fide use of the Disputed Domain Name under the Policy.
The Respondent was aware of the Trade Mark before he registered the Disputed Domain Name, as the Trade Mark is registered with the Trademark Clearinghouse (“TMCH”). The Respondent would likewise have received a warning notice before proceeding with the registration.
The Respondent is not making a noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name suggests that it would direct Internet users to an official website operated by the Complainant where they can buy the Complainant’s products.
Registered or Used in Bad Faith
The Disputed Domain Name was registered and is being used in bad faith.
The Respondent has registered the Disputed Domain Name for the purpose of selling it to the Complainant. In response to a cease and desist letter, the Respondent stated that “Everyone has the right to register a domain name”, and that he had received offers to purchase the Disputed Domain Name. The Respondent included a screen shot of an advertisement offering to sell the Disputed Domain Name to the highest bidder, with a starting bid of USD 5,000.
The Respondent has also registered the Disputed Domain Name in order to prevent the Complainant from reflecting the Trade Mark in a corresponding domain name, and has engaged in a pattern of such conduct. The Respondent has registered at least one other domain name which incorporates a well-known trade mark. A reverse WhoIs search on the email address associated with the Disputed Domain Name shows 621 further domain names relating to that email address. The Complainant has not purchased a report containing full details of these domain names, but the Complainant suspects that the Respondent owns further domain names which reflect well-known trademarks or business names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a response. A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark.
As submitted by the Complainant, the Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with the new gTLD “.store”. The gTLD suffix is typically disregarded under the confusingly similarity test except in some circumstances where the applicable top-level suffix itself form a part of the trade mark. In this case, given the usual, dictionary meaning of the word “store”, the use of this gTLD does not avoid confusing similarity, as it gives the impression that the website at the Disputed Domain Name is an online store at which the Complainant’s products are available for purchase (see, e.g. Telstra Corporation Limited v. Zhen Yang,WIPO Case No. D2016-1680).
The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case for the following reasons:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name is a generic parking page which gives no indication of any intended use.
- The Complainant has not authorised or licensed the Respondent to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. Again, there is no active website associated with the Disputed Domain Name, and the Complainant has provided evidence that the Respondent is offering the Disputed Domain Name for sale.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainants has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has been operating for over 20 years, and has had registered trade mark rights for almost as long. It is a well-known, respected and established brand in the Complainant’s industry. The Disputed Domain Name was registered on August 30, 2016. Previous panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see ,e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein). Given that the Trade Mark is a fanciful term created by the Complainant, and the Complainant’s longstanding use of and reputation in the Trade Mark, the Panel finds it inconceivable that the Respondent was not aware of the Trade Mark at the time he registered the Disputed Domain Name.
The Respondent’s knowledge of the Trade Mark is further evidenced by the fact that the Complainant registered the Trade Mark with the TMCH. The TMCH is a repository of verified trade mark information. If a party attempts to register a domain name in a new gTLD which exactly matches a trade mark registered in the TMCH, that party is alerted to the relevant trade mark rights and must acknowledge those rights before continuing with the registration. If the registration proceeds, the trade mark owner is alerted.
Here, the second-level domain in the Disputed Domain Name is identical to the Trade Mark. It is highly likely that the Respondent would have been advised of the Complainant’s rights in the Trade Mark prior to registering the Disputed Domain Name. The Respondent would have been required to acknowledge those rights to proceed with the registration. It appears that the Respondent has registered the Disputed Domain Name despite being specifically made aware of the Trade Mark at the time of registration. The Panel considers that this is a clear indicator of bad faith registration.
Since its registration, the Disputed Domain Name has resolved to a generic parking page which states that a website is coming soon. The Panel finds such use akin to passive holding under the circumstances. While passive holding of a domain name does not always result in a finding of bad faith use, the Panel considers that in the circumstances, such a finding is appropriate for the following reasons:
- It is almost certain that the Respondent was aware of the Complainant at the time he registered the Disputed Domain Name. The Panel has found that the Disputed Domain Name was registered in bad faith.
- The Respondent is offering the Disputed Domain Name for sale.
- Any attempt to actively use the Disputed Domain Name would likely lead to confusion as to the source, sponsorship, affiliation or endorsement of the relevant website, which is evidence of bad faith under paragraph 4(b)(iv) of the Policy.
- The Respondent has failed to file a response or provide evidence of any actual or contemplated good faith use of the Disputed Domain Name.
- There are over 600 domain names associated with the Respondent’s email address. The Complainant has identified one further domain name registered to the Respondent which combines a well-known trade mark with the gTLD “.store”. The Panel is also aware of one previous UDRP decision in which an adverse finding has been made against the Respondent in the same circumstances. In these circumstances, the Panel considers that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent trade mark owners from reflecting their marks in corresponding domain names, which is further evidence of bad faith under paragraph 4(b)(ii) of the Policy.
See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, supra; and Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131.
Based on the information before the Panel, the Panel concludes that the Respondent registered and is using the Disputed Domain Name bad faith in accordance with the Policy.
The Complainant succeeds on the third element of the Policy. 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, , be transferred to the Complainant.
John Swinson
Sole Panelist
Date: December 16, 2016
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