The Complainant is Costa Limited, United Kingdom, represented by Bird & Bird LLP, United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2020. On January 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name not identified in the Complaint. 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 January 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2020. The Center appointed Francine Tan as the sole panelist in this matter on February 14, 2020. 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 was founded in 1971. It operates a large coffee house chain in the United Kingdom (“the UK”) under the trade mark COSTA. In the UK, the Complainant has over 2,200 coffee shops. Coffee products bearing the COSTA trade mark are also offered by the Complainant through 150 partners at over 3,500 locations in the UK. Additionally, the Complainant provides its products via its machines bearing the trade mark COSTA. Approximately 8,000 machines are installed throughout the UK. The Complainant’s business under the COSTA trade mark extends to over 32 countries including China, Poland and the Middle East, with around 1,400 coffee stores. The Complainant’s revenue in 2018 was approximately 1.29 billion GBP. The Complainant operates a range of websites including “www.costa.co.uk”, “www.costacoffee.com” and “www.costacoffee.pl”. These websites provide store information and online sales of its products. The Complainant’s COSTA coffee has been voted the UK’s favourite coffee for 9 consecutive years, from 2010 to 2019. The Complainant has also won international awards. The Complainant’s COSTA trade mark has been registered in many countries. Its trade mark registrations for COSTA and COSTA COFFEE (in word, stylised or in figurative format) (collectively, “the COSTA COFEE trade marks”) include UK trade mark registration Nos. 2476467 registered on June 13, 2008, 3381310 registered on May 24, 2019, 2473792 registered on June 6, 2008 and 2476468 registered on June 13, 2008, and European Union trade mark registration Nos. 005183355 registered on July 31, 2010 and 005257977 registered on April 20, 2010. The disputed domain name was registered on December 7, 2019. The Complainant sent a cease and desist letter on December 10, 2019 to the Respondent at its published email address. 5. Parties’ Contentions A. Complainant The disputed domain name comprises the term “costacoffee” and “-supply”. The disputed domain name is therefore identical or confusingly similar to the Complainant’s COSTA COFFEE trade marks. The word “supply” refers to acts that the Complainant engages in every day, i.e. the supply of coffee. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name resolves to a website which incorporates this statement: “It’s our anniversary, answer a few questions to get costa coffee supply for a year”. The use of the personal pronoun “our” is highly suggestive that the website is owned or operated by the Complainant. The Respondent’s website also reproduces prominently one of the Complainant’s trade mark. The disputed domain name was registered and is being used in bad faith. The Respondent’s website has been designed to mislead visitors into believing that it is owned or operated by the Complainant. The Complainant believes that the questions are designed to derive the personal data of website visitors. In any event, the disputed domain name can only have been chosen to intentionally attract, for commercial gain, users to the Respondent’s website by creating a likelihood of confusion with the Complainant and its trade marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the COSTA COFFEE trade mark in which the Complainant has shown to have rights. The only differences between the disputed domain name and the Complainant’s COSTA COFFEE trade mark lie in: (i) the feature of the Top-Level Domain “.com”, which is a technical requirement of domain names and has no relevance to the issue of identity or confusing similarity; (ii) the addition of the term and hyphen “-supply” which is a dictionary term and corresponds to one of the Complainant’s activities, namely the supply of coffee and coffee products; and (iii) the absence of a space between the words “costa” and “coffee” in the disputed domain name. The Panel is of the view that these differences do not prevent the finding of confusing similarity between the disputed domain name and the Complainant’s COSTA COFEE trade mark. The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied. B. Rights or Legitimate Interests The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not authorize the Respondent to use the COSTA COFFEE trade marks or to register the disputed domain name incorporating the COSTA COFFEE trade mark. It is evident from the evidence submitted of the Respondent’s webpage that the Respondent is well-acquainted with the Complainant’s COSTA COFFEE trade marks and its products when it registered the disputed domain name. For reasons best known to the Respondent, it targeted the Complainant’s COSTA COFFEE trade mark for purposes which could include the eliciting of personal data or information of the Complainant’s existing and/or prospective customers or prospective customers who might be looking for the Complainant’s products on the Respondent’s website. The disputed domain name not only incorporated the Complainant’s COSTA COFFEE trade mark but is also used in way which serves to give the false impression that the Respondent is an authorized distributor of the Complainant’s COSTA COFFEE-branded coffee or coffee products and/or that the Respondent’s website is endorsed by the Complainant. Such use of the disputed domain name does not constitute a bona fide offering of goods or services. The Respondent failed to respond to the Complainant’s allegations and to refute the Complainant’s prima facie case, which is, in the circumstances of this case, indicative of the Respondent’s lack of rights or legitimate interests in the disputed domain name. The Panel therefore concludes that the Respondent lacks rights or legitimate interests in the disputed domain name. The second element of paragraph 4(a) of the Policy has been satisfied. C. Registered and Used in Bad Faith For the reasons mentioned in the preceding section, the Panel is persuaded that the disputed domain name was registered and is being used in bad faith. The disputed domain name did not simply comprise the word “Costa” but it was registered in combination with the word “coffee”, which is what the Complainant supplies and is known for. Further, the website prominently displays the Complainant’s distinctive figurative COSTA COFFEE trade mark. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent. One of these circumstances (paragraph 4(b)(iv)) reads as follows: “by using the domain name, you 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 Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Respondent has failed to provide any reason why the Panel should make a finding other than that the third element of paragraph 4(a) of the Policy has been satisfied. 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 Francine Tan
Sole Panelist
Date: February 21, 2020
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