Complainant is Starbucks Corporation, United States of America (“United States”), represented by Focal PLLC, United States of America.
Respondent is Registration Private, Domains by Proxy, LLC, United States/ Nicholas Hafftervonheide, Fresh Pressed Coffee Company. United States 2. The Domain Name(s) and Registrar(s)
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 July 17, 2019. On July 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 18, 2019, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on July 19, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 23, 2019.
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 Respondent of the Complaint, and the proceedings commenced on July 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 16, 2019.
The Center appointed Richard W. Page as the sole panelist in this matter on August 22, 2019. 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 is an American coffee company. Complainant has used its STARUCKS COFFEE Mark since the opening of its first store in 1971. As it approaches its 50th year of existence, STARBUCKS COFFEE Mark has developed into a brand that is known worldwide and used in connection with a wide variety of good and services. Currently, Complainant has nearly 30,200 stores in 78 markets around the world.
Complainant owns numerous trademark and service mark registrations for STARBUCKS COFFEE Mark in the United States and around the world, including without limitation: US. Registration No. 2,039,849 dated February 25, 1997; U.S. Registration No.2,024,105 dated December 17, 1996; and U.S. Registration No. 2,047,491 dated March 25, 1997.
In addition, Complainant owns trademark registrations for its STARBUCKS COFFEE Mark in numerous other countries, including without limitation, Australia, Canada, the European Union, Israel, Malaysia, New Zealand and Singapore. Currently, Complainant owns nearly 1,950 trademark applications or registrations of various STARBUCKS marks, including the STARBUCKS COFFEE Mark, in 184 countries. The Disputed Domain Name was registered on February 16, 2019. The Disputed Domain Name does not resolve to an active website.
The Disputed Domain Name was registered on February 16, 2019. The Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
Complainant asserts that it indisputably owns the rights to the STARBUCKS COFFEE, including the U.S. Trademark Registrations identified above. Complainant’s use of the STARBUCKS COFFEE Mark dates back decades.
Complainant further asserts that the Disputed Domain Name is confusingly similar to Complainant’s STARBUCKS COFFEE Mark because it incorporates the entirety of the STARBUCKS COFFEE Mark. Complainant further asserts that use of the generic Top Level Domain (“gTLD”) “.company” is without legal significance, since use of a gTLD is technically required to operate any domain name and does not serve to identify the source of the goods or services provided by the registrant of a domain name.
Complainant asserts that as a result, the Disputed Domain Name is confusingly similar to Complainant’s famous STARBUCKS COFFEE Mark and Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
Complainant alleges that Respondent was undoubtedly aware of the STARBUCKS COFFEE Mark when it registered the Disputed Domain Name. According to the Registrar’s WhoIs database, the Disputed Domain Name was registered on February 16, 2019. Complainant further alleges that it has consistently used the STARBUCKS COFFEE Mark since it opened its first store in 1971 and now has thousands of stores worldwide. Complainant further alleges that given the long usage and the resulting fame of the STARBUCKS COFFEE Mark, there can be no dispute that Respondent was well aware of Complainant’s rights when it registered the Disputed Domain Name.
Complainant contends that there is no evidence to support the argument that Respondent is commonly known by the Disputed Domain Name. Complainant contends that Complainant has never licensed or otherwise authorized Respondent’s use of the STARBUCKS COFFEE Mark in any domain name, much less the confusingly similar Disputed Domain Name here. Complainant further contends that there is no evidence that Respondent has made any use of the website to which the Disputed Domain Name resolves. Currently, the Disputed Domain Name does not resolve to an active website. Rather as of June 21, 2019, the website at the Disputed Doman Name returns an error message.
Complainant avers that Respondent registered and used the Disputed Domain Name in bad faith. Complainant further avers that Respondent had actual knowledge of Complainant’s rights in the STARBUCKS COFFEE Mark before registering the Disputed Domain Name. Complainant further avers that failure to use the Disputed Domain Name in connection with an active website is further evidence of bad faith. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent is not obliged to participate in this proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.)
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the STARBUCKS COFFEE Mark which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the STARBUCKS COFFEE Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the STARBUCKS COFFEE Mark, for purposes of standing to file a UDRP case. Respondent has not contested Complainant’s rights in the STARBUCKS COFFEE Mark. Therefore, the Panel finds that for purposes of this proceeding, Complainant has enforceable rights in the STARBUCKS COFFEE Mark.
Complainant further contends that the Disputed Domain Name is identical with or confusingly similar to the STARBUCKS COFFEE Mark pursuant to paragraph 4(a)(i) of the Policy.
Complainant asserts that the Disputed Domain Name is confusingly similar to Complainant’s STARBUCKS COFFEE Mark because it incorporates the entirety of the STARBUCKS COFFEE Mark. Complainant further asserts that use of the gTLD “.company” is without legal significance, since use of a gTLD is technically required to operate any domain name and does not serve to identify the source of the goods or services provided by the registrant of a domain name.
Section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as (“company”) may be disregarded for purposes of assessing confusing similarity.
Based on the facts of this case, the Panel finds that the Disputed Domain Name is confusingly similar to the STARBUCKS COFFEE Mark, pursuant to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [STARBUCKS COFFEE] Mark.
Complainant contends that there is no evidence to support the argument that Respondent is commonly known by the Disputed Domain Name. Complainant further contends that Complainant has never licensed or otherwise authorized Respondent’s use of the STARBUCKS COFFEE Mark in any domain name, much less the confusingly similar Disputed Domain Name here. Complainant further contends that there is no evidence that Respondent has made any use of the website to which the Disputed Domain Name resolves. Currently, the Disputed Domain Name does not resolve to an active website. Rather as of June 21, 2019, the website at the Disputed Doman Name returns an error message.
These contentions are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has not contested Complainant’s contentions.
Therefore, the Panel finds that Complainant has established the required elements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the [STARBUCKS COFFEE] Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the STRARBUCKS COFFEE Mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the [STARBUCKS COFFEE] Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. See, Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. One such factor is failure to use the Disputed Domain Name and the inability of the Panel to perceive any conceivable legitimate purpose for registration and use of the Disputed Domain Name. See section 3.3 of the WIPO Overview 3.0.
Complainant avers that Respondent registered and used the Disputed Domain Name in bad faith. Complainant further avers that Respondent had actual knowledge of Complainant’s rights in the STARBUCKS COFFEE Mark before registering the Disputed Domain Name. Complainant further avers that failure to use the Disputed Domain Name in connection with an active website is further evidence of bad faith
The Panel finds that Complainant has shown Respondent’s actual knowledge of the STARBUCKS COFFEE Mark prior to registration of the Disputed Domain Name and that Respondent has made no use of the Disputed Domain Name in an active website.
In addition, the Panel cannot see any legitimate purpose for registration and use of the Disputed Domain Name.
Therefore, the Panel finds that Complainant has established the required elements of paragraph 4(a)(iii) 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 Complainant.
Richard W. Page
Sole Panelist
Date: September 5, 2019
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