ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Starbucks Corporation v. Name Redacted Case No. D2022-3284 1. The Parties Complainant is Starbucks Corporation, United States of America ("United States"), represented by Focal PLLC, United States. Respondent is Name Redacted.1 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 2, 2022. On September 5, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 5, 2022, 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 September 6, 2022, 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 September 9, 2022. 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"). 1 Respondent appears to have used the name and contact details of Complainant when registering the disputed domain names. In light of the apparent identity theft, the Panel has redacted Respondent's name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain names which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788. page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2022. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2022. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent's default on October 6, 2022. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on October 20, 2022. 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 operates a global chain of coffee shops. It is the proprietor of numerous registrations for its STARBUCKS mark, including the following: - United States Trademark No. 1372630 for STARBUCKS (word mark), registered on November 26, 1985 for goods in class 21, claiming a date of first use of November 1, 1983; - United States Trademark No. 1452359 for STARBUCKS (word mark), registered on August 11, 1987 for goods in class 39, claiming a date of first use of March 29, 1971. The disputed domain name was registered on July 28, 2022. At the time of this Decision, it did not resolve to an active website. The record reflects that it previously resolved to a website displaying the text "Starbucks License. Starbucks Coffee Since 1971" above a photograph of a Starbucks coffee shop. Beneath the photograph, the following text was visible: "Website is under Construction! Our new upcoming website is for improvement and good communication system with our prospective partners, licensees and employees. We hope that our new website will give us new opportunities to explore our world better." 5. Parties' Contentions A. Complainant Complainant's contentions may be summarized as follows: Complainant states that it has used the STARBUCKS mark continuously since 1971. The STARBUCKS mark is known worldwide in connection with a wide variety of goods and services. There are over 34,000 stores worldwide operating under the STARBUCKS mark. Complainant states that Respondent appears to have used Complainant's name and business address to register the disputed domain name. Complainant asserts that it has no affiliation with Respondent and did not register, nor authorize the registration of, the disputed domain name. Under the first element, Complainant states that the disputed domain name is confusingly similar to Complainant's STARBUCKS mark because it incorporates the STARBUCKS mark in its entirety, with the addition of a generic term. Under the second element, Complainant states that, due to the fame of the STARBUCKS mark, Respondent indisputably knew about the mark at the time that the disputed domain name was registered. There is no evidence that Respondent is commonly known by the dispute domain name. Complainant has never licensed or otherwise authorized Respondent's use of its STARBUCKS mark. Respondent appears to be using or appears to have used the disputed domain name to impersonate Complainant in order to offer the sale of fraudulent Starbucks franchise licenses. page 3 Under the third element, Complainant states that its use and registration of the STARBUCKS mark long predated Respondent's registration of the disputed domain name. There can be no credible dispute that Respondent was aware of Complainant's mark at that time. Respondent appears to have used the website to which the disputed domain name resolves to perpetuate fraud by offering counterfeit Starbucks franchise licenses for sale and by impersonating Starbucks executives in furtherance of this activity. Respondent used a privacy service to shield its identity and engaged in opportunistic bad faith by taking advantage of Complainant's mark. Complainant requests transfer of the disputed domain name. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. Under paragraph 15(a) of the Rules, "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the STARBUCKS mark through registrations in the United States. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. In comparing Complainant's marks with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark. The disputed domain name reflects Complainant's STARBUCKS mark in its entirety, followed by the dictionary term "license." It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8. It is the well-established view of UDRP panels that the generic Top-Level Domain ("gTLD") ".com" is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. page 4 B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, respondent'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) respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) respondent 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. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name nor is using the STARBUCKS mark with the permission of Complainant. The nature of the disputed domain name, which reflects Complainant's mark in its entirety together with a descriptive term, cannot constitute fair use since it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See, for example, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No. D2016-0909; B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc. / Soro Wonna, WIPO Case No. D2020-2837. See also WIPO Overview 3.0, section 2.5.1. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant's contentions. The circumstances of the case prevent the inference of rights nor legitimate interests on the part of Respondent. The record reflects that the disputed domain name was used by Respondent to impersonate Complainant in an attempt to defraud third parties. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Complainant has demonstrated Respondent's bad faith registration and use of the disputed domain name. Complainant's rights in its STARBUCKS marks predate by decades the registration of the disputed domain name. The disputed domain name reflects Complainant's distinctive STARBUCKS mark in its entirety, together with the dictionary term "license"." UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4. In this case, the record shows that Respondent deliberately targeted Complainant and its STARBUCKS mark. The Panel finds the evidence in the record establishes that Respondent used the disputed domain name in an attempt to pass itself off as Complainant to perpetuate what appears to be a fraudulent scheme to sell franchise rights. Moreover, Respondent has appropriated Complainant's name when registering the page 5 disputed domain name. The Panel finds that Respondent thereby attempted to impersonate Complainant for commercial gain, indicating bad faith in registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.2.1. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name and the Panel does not find any such use plausible. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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. /Ingrīda Kariņa-Bērziņa/ Ingrīda Kariņa-Bērziņa Sole Panelist Date: November 7, 2022
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