The Complainant is Starbucks Corporation, United States of America (“United States”), represented by S.S. Rana & Co., Advocates, India.
The Respondent is Prashanth Rajkumar, India. 2. The Domain Name and Registrar
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 30, 2019. On July 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 1, 2019, 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. On August 12, 2019, the Center sent an email communication regarding the Rules in effect as of 2015.
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 August 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 2019.
The Center appointed Cherise Valles as the sole panelist in this matter on September 13, 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
The Complainant is a multinational chain of coffee shops and a leading retailer, roaster and brand of specialty coffee with corporate headquarters in Seattle, Washington, United States. The Complainant has been active since 1971. It has more than 30,184 retail locations in 80 countries and territories around the world, with over 510,000 employees, serving millions of customers worldwide each week.
The Complainant opened its first store in India in 2012 and now has over 145 outlets in India. The opening of such outlets in India was widely reported in the local and international media.
The Teavana Corporation (“Teavana”) was founded in 1997 and acquired by the Complainant in 2012. The Complainant sells Teavana products in its STARBUCKS retail stores in India (as well as thousands of other STARBUCKS stores globally), e-commerce portals, and grocery stores.
The Complainant owns a number of trademarks in over 158 jurisdictions around the world for the term “teavana”, including the following:
- Indian trademark no. 1845317 for TEAVANA, registered on July 29, 2009, in class 35;
- Australian trademark no. 1041961 for TEAVANA, registered on November 8, 2004, in class 35;
- Indian trademark no. 2524136 for the TEAVANA logo, registered on May 2, 2013, in class 30;
- Indian trademark no. 2524138 for the TEAVANA logo, registered on May 2, 2013, in class 43;
- Indian trademark no. 3725754 for TEAVANA, registered on July 8, 2018, in class 11;
- Indian trademark no. 3735586 for TEAVANA, registered on July 15, 2018, in class 30; and
- Indian trademark no. 3735587 for TEAVANA, registered on July 15, 2018, in class 32.
The Complainant also owns and operates the domain name , registered on November 8, 2000, which is viewed by thousands of consumers every day around the world, including those in India. The Complainant also owns the following domain names: , and .
The Complainant estimates that its worldwide sales figures in respect of various products sold and services provided bearing the TEAVANA marks set out above exceeded USD 1.5 billion in the fiscal year concluding September 30, 2017. The Complainant also spends a substantial amount on advertisement and sales promotion of its products and services bearing the TEAVANA marks.
The Complainant maintains separate social media accounts for its TEAVANA brand. Its Facebook account currently has more than 492,700 followers, its Instagram account has more than 132,000 followers and its Twitter account has more than 71,500 followers.
In 2018 the Complainant successfully opposed an application (made by either the Respondent or a party affiliated with the Respondent) for the trademark TEAAVA in class 30 on the basis that the proposed mark TEAAVA was phonetically, visually, conceptually, deceptively and confusingly similar to the Complainant’s well-known TEAVANA marks.
According to the Complainant, the disputed domain name resolved to a webpage advertising tea products prior to the filing of the Complaint. Currently the disputed domain name resolves to a parking web page.
The disputed domain name was registered on June 13, 2017. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered trademark, TEAVANA, in light of the fact that it is virtually identical to the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to reply to the Complainant’s contentions. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant and from the absence of a response as it considers appropriate. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of multiple registrations worldwide for the mark TEAVANA and the TEAVANA logo, as indicated in Section 4 above. The disputed domain name is confusingly similar to the Complainant’s trademark, differing only in the rearranging of one letter and a subtraction of another letter. Previous UDRP panels have made findings of confusing similarity regarding domain names where the letters comprising a complainant’s mark were rearranged, added to and/or subtracted from in order to form a disputed domain name. See, e.g., Philip Morris USA Inc. v. Domain Administrator, See P / Mario Lawrence, Diggsites,WIPO Case No. D2016-2078.
Previous UDRP panels have held that the Top-Level Domain “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The Respondent did not reply to the Complainant’s contentions or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has established a prima facie case and the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. In the absence of a reply to the Complainant’s contentions or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists.
The Complainant has not authorized, licensed or otherwise allowed the Respondent to make any use of its TEAVANA marks or the phonetically, visually, conceptually, deceptively and confusingly similar mark TEAAVA and the Respondent does not have any affiliation or connection with the Complainant nor to the Complainant’s TEAVANA-branded goods and services. To the best of the Complainant’s knowledge, the Respondent is not commonly-known as “teaava” nor was it known as such prior to the date of registration of the disputed domain name. It appears that the Respondent has deliberately chosen the disputed domain name which is phonetically, visually, conceptually, deceptively and confusingly similar to the Complainant’s TEAVANA marks, so as to suggest a direct connection or affiliation with the Complainant’s marks and to create a direct affiliation with the Complainant and its business.
The Respondent must have been aware of the Complainant’s rights in the TEAVANA marks, since the Complainant’s registration of the trademarks and domain names mentioned in Section 4 above preceded the registration of the disputed domain name by a number of years (by 17 years in the case of the Complainant’s registration of ).
The disputed domain name resolves to a parking web page. There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. There is also no evidence of a noncommercial or fair use of the disputed domain name.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(i) the respondent 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 respondent has engaged in a pattern of such conduct;
(ii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel finds that the Respondent had constructive notice that the Complainant’s TEAVANA marks were registered in India and in many other jurisdictions worldwide, given the Complainant’s worldwide reputation, including in India where the Complainant’s TEAVANA products are sold, and the ubiquitous presence of the TEAVANA marks on the Internet. Previous UDRP panels have held that knowledge of a corresponding mark at the time of the registration of a disputed domain name suggests bad faith. See Compagnie Générale des Etablissements Michelin v. Cameron Jackson,WIPO Case No. D2016-2392.
The fact that the disputed domain name previously resolved to a web page advertising tea products suggests that the Respondent was attempting to capitalize on the goodwill of the Complainant’s TEAVANA brand among Internet users and to attract such users to the Respondent’s website by misleading, confusing and deceiving users as to the source, sponsorship, affiliation or endorsement of the Respondent’s web page.
The deceptive similarity between the Complainant’s TEAVANA marks and the disputed domain name is exacerbated by the fact that the Respondent was previously using the web page to which the disputed domain name resolves to advertise tea products, which are the primary products for which the Complainant uses its TEAVANA marks. The evident phonetic, visual and conceptual similarity between the disputed domain name and the Complainant’s TEAVANA marks is likely to mislead, confuse and deceive Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s web page.
The fact that the disputed domain name is currently being passively held by the Respondent cannot constitute bona fide use, nor can it confer any rights or legitimate interests in this domain name. It has been established by previous UDRP panels that passive holding does not, as such, prevent a finding of bad faith.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Previous UDRP panels have held that where a respondent has not used, or made demonstrable preparations to use, a disputed domain name in connection with a bona fide offering of goods or services, and that a respondent’s use of a disputed domain with respect to an online store offering for sale products which are similar to (and likely compete with) those offered by a complainant, does not constitute bona fide use. See Mothercare UK Limited v. R. F. Showghi,WIPO Case No. D2018-1230.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 the Complainant.
Cherise Valles
Sole Panelist
Date: September 26, 2019
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