ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Starbucks Corporation v. starbucks partnershours Case No. D2024-1362 1. The Parties The Complainant is Starbucks Corporation, United States of America (“United States”), represented by Focal PLLC, United States. The Respondent is starbucks partnershours, Pakistan. 2. The Domain Name and Registrar The disputed domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2024. On April 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2024, 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 (STARBUCKSPARTNERSHOURS.COM, c/o HOSTING CONCEPTS B.V. d/b/a REGISTRAR.EU) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 10, 2024. On April 7, 2024, the Respondent sent two email communications. Accordingly, the Center sent a possible settlement email on April 8, 2024. The Complainant sent email communications on April 8 and 9, 2024, disclosing it does not wish to suspend the proceedings. The Center verified that the Complaint together with 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 the Respondent of the Complaint, and the proceedings commenced on April 12, 2024. In accordance with the Rules, paragraph 5,
page 2 the due date for Response was May 2, 2024. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on May 6, 2024. The Center appointed Gareth Dickson as the sole panelist in this matter on May 14, 2024. 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’s business began in 1971. It is a global coffeehouse chain and coffee company and is now recognised worldwide as a roaster, marketer, and retailer of specialty coffee. As of the date of the Complaint, the Complainant operates almost 40,000 stores in 86 markets around the world and has expanded its offerings beyond coffee to include a variety of beverages, food items, and merchandise under its well-known STARBUCKS trade mark (the “Mark”). Its ubiquity, which is often the subject of attempts at humour and satire, is undeniable. The Complaint owns a number of trade mark registrations for the Mark around the world, including the following United States registrations: - Registration No. 1,372,630, dated November 26, 1985; - Registration No. 1,444,549, dated June 23, 1987; and - Registration No. 1,452,359, dated August 11, 1987. The disputed domain name was registered on June 20, 2023. As of March 7, 2024, it resolved to a website with large volumes of text relating to employment at the Complainant but also featuring sponsored links unrelated to the Complainant or its business with inane titles such as “Top 10 Most Beautiful Women In The World” and “He Buys Storage Unit Containing $7.5m, Officers Show Up Hours Later”. The website includes use of a version of the Complainant’s Siren logo, adopts the Complainant’s green-colour theme and contains several pages of information about the Complainant, with no apparent target audience or raison d'être. A disclaimer appears after several screens’ worth of scrolling, stating that the website is not affiliated or associated with “Starbucks partner”, and is an “unofficial website for educational purposes”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to the well-known Mark, which has been used in commerce for decades before the registration of the disputed domain name. It submits that the addition of the phrase “partnershours” to the Mark in the disputed domain name does not distinguish the disputed domain name from the Mark nor change its conclusion on similarity. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence to suggest that the Respondent is commonly known by the disputed domain name, nor has the Complainant licensed or authorised the Respondent to use the Mark. The Complainant also submits that the disputed domain name was registered and is being used in bad faith, stating that the Respondent was likely aware of the Mark at the time of registration, and the use of the disputed domain name is an attempt to attract Internet users for commercial gain by creating a likelihood of
page 3 confusion with the Mark. It says the Respondent’s actions are disrupting the business of the Complainant and misleading consumers, which constitutes bad faith under the UDRP. The Complainant also submits that, on the basis that the Respondent is not known as “starbucks partnershours”, the Respondent has provided false information when registering the disputed domain name in an attempt to pass itself off as the Complainant. B. Respondent The Respondent did not formally reply to the Complainant’s contentions but sent two emails to the Center following receipt of the Complaint. In these emails, the Respondent claims that they are not acting against the Policy and are not representing the Starbucks brand but instead are merely providing information to the audience about an app. The Respondent argues that their website clearly mentions that they are not linked to the official Starbucks site and that they are operating lawfully. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. See WIPO Overview 3.0, section 1.2.1. The entirety of the Mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the Mark for the purposes of the Policy. See WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “partnershours”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. See WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence
page 4 demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Even if the Panel considers the Respondent's informal submissions in these proceedings, the assertion that the Respondent’s use of the disputed domain name is for “educational” purposes is not convincing. No educational purpose is served by the content of the Respondent’s website, which displays prominently the Complainant’s logo along with information related to the Complainant’s business. Instead, it is clear that the real purpose of the Respondent’s website is to monetise visits by Internet users who have mistakenly believed, because of the disputed domain name, that the Respondent’s website is affiliated with or associated with the Complainant. The very wording of the Respondent’s disclaimer anticipates, unsurprisingly, the arrival of exactly such users - see WIPO Overview 3.0, section 3.7. The fact that the Respondent provided a name for the registration that matches the disputed domain name does not, in itself, give rise to rights or legitimate interests in the disputed domain name. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent is using the disputed domain name to resolve to a website that contains large amounts of text seemingly designed solely to increase the chances that the website, and its sponsored links, will show up in results for a popular Internet search term (i.e., the Mark), and which also features a version of the Complainant’s Siren logo and the Complainant’s green-colour theme. The comments in Section 6.B above about the Respondent’s pretence of pursuing “educational” purposes are repeated here, and the Panel finds the promotion of such a pretence to be supportive of a finding of bad faith. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established 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. /Gareth Dickson/ Gareth Dickson Sole Panelist Date: May 22, 2024
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