ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Starbucks Corporation v. Joshua Majoyegbe Case No. D2024-4980 1. The Parties The Complainant is Starbucks Corporation, United States of America (“United States”), represented by Focal PLLC, United States. The Respondent is Joshua Majoyegbe, Nigeria. 2. The Domain Name and Registrar The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2024. On December 3, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 2024, 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. 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 December 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2024. The Respondent sent an email communication to the Center containing an informal Response on December 14, 2024. On December 23, 2024, the Complainant submitted an unsolicited Supplemental Filing in reply to the Respondent’s email of December 14, 2024. On December 27, 2024, the Center sent the Parties an email notifying the commencement of panel appointment process. On December 29, 2024, the Respondent submitted a further informal email communication to the Center. On December 30, 2024, the Center sent the Parties an email requesting their reply regarding a possible suspension of the proceedings. On January 3, 2024, the Complainant requested that the Center proceed with the panel appointment.
page 2 The Center appointed Andrea Mondini as the sole panelist in this matter on January 15, 2025. 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, along with its predecessor in interest, has used its STARBUCKS mark since the opening of its first coffee shop in Seattle in 1971 and has today more than 40,000 STARBUCKS stores around the world. The Complainant owns approximately 1,950 trademark registrations in 182 jurisdictions, including: TRADEMARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE INTERNATIONAL CLASS STARBUCKS United States 1,372,630 November 26, 1985 21 STARBUCKS European Union 012098927 January 22, 2014 9, 35, 36, 38, and 42 The Complainant holds several domain names containing the term STARBUCKS, among them which hosts its main website. The Respondent stated that he provides franchise consulting services. The disputed domain name was registered on March 18, 2024. According to the evidence submitted with the Complaint, the disputed domain name resolves to a website prominently displaying the Complainant’s trademark, logo and images of the Complainant’s STARBUCKS stores and purporting to offer Internet users “Starbucks Franchise Information”, including an offer to participate in a paid subscription programme, and inviting the visitors to “Join the global community of Starbucks franchisees […]”. The evidence submitted also shows that the website contains links to the Complainant’s official social media accounts. 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 as follows: The disputed domain name is confusingly similar to the STARBUCKS trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the descriptive term “franchising” is not sufficient to prevent a finding of confusing similarity. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The trademark STARBUCKS has been extensively used to identify the Complainant and its products and services. The Respondent has not been authorized by the Complainant to use this trademark, is not commonly known by the disputed domain name, and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in connection with a legitimate noncommercial or fair use. To the contrary, the Respondent’s use of the disputed domain name for a website that
page 3 extensively uses Complainant’s intellectual property in the website content, and links to official Starbucks social media accounts deceptively suggests an endorsement by or affiliation with the Complainant that does not exist. The disputed domain name was registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its famous trademark STARBUCKS at the time it registered the disputed domain name. The Respondent is using the disputed domain name in bad faith because the disputed domain name is so obviously connected with the Complainant that its very use by a registrant with no connection to the Complainant suggests opportunistic bad faith and would divert Internet users to the Respondent’s website through confusion. B. Respondent The Respondent did not submit a formal response. On December 14, 2024, the Center received an email from the Respondent stating in essence that he had no intention to mislead the public, that his goal was to provide legitimate franchise consulting services and that the use of the STARBUCKS mark on his website was intended solely for informational purposes. The Respondent stated that he removed all STARBUCKS trademarks and all further references to the Complainant from the website posted under the disputed domain name. In reply to the Complainant’s Supplemental Filing of December 23, 2024, complaining that not all references to the Complainant had been removed, the Respondent sent a further email to the Center on December 29, 2024, repeating that it was never his intention to infringe the Complainant’s intellectual property and that he had taken additional steps to remove the STARBUCKS trademark from his website. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel notes that the Complainant’s Supplemental Filing is a rebuttal of the Respondent’s contentions made in his informal email communication of December 14, 2024. The Panel admits both Parties’ Supplemental Filings as these addressed the alleged change of use of the disputed domain name after the commencement of the proceedings. 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 trademark and the disputed domain name. 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 trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the mark is reproduced within the disputed domain name.
page 4 Although the addition of other terms such as here “franchising” may bear on assessment of the second and third elements, the Panel finds that in the present case the addition of this term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). WIPO Overview 3.0, section 1.11.1. 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 for a complainant to prove that 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. 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 stated that he had no intention to mislead the public, that his goal was to provide legitimate franchise consulting services and that the use of the STARBUCKS mark was intended solely for informational purposes. However, the website posted by the Respondent under the disputed domain name prominently uses the Complainant’s trademark, logo, images of the Complainant’s STARBUCKS stores, and links to the Complainant’s official social media accounts, and purports to offer “Starbucks Franchise Information” and thereby suggests an endorsement by or affiliation with the Complainant that does not exist. This does not constitute a bona fide use of the disputed domain name. Furthermore, the disputed domain name itself suggests a connection or affiliation between the Complainant and the Respondent where none exists. Based on the available record, 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. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the view of the Panel, noting that that the Complainant’s trademark predates the registration of the disputed domain name and considering that the Complainant’s trademark is famous, and that the Respondent’s website expressly refers to the Complainant’s business, it is inconceivable that the
page 5 Respondent could have registered the disputed domain name without knowledge of the Complainant’s famous trademark. In the circumstances of this case, this is evidence of registration in bad faith. The impression given by the website posted under the disputed domain name would cause Internet users to believe that the Respondent is somehow associated with the Complainant when, in fact, it is not. The Panel also notes that the website at the disputed domain name contains in its bottom the following disclaimer: “StarbucksFranchising.com is a website owned and operated by Star Brands Consulting Group. We are an independent consulting firm specializing in franchising services and are not affiliated with Starbucks Corporation. While we may provide information about Starbucks franchises and related topics, we do not represent Starbucks in any capacity […]”. In the Panel’s view, the disclaimer appears to be far from prominent and unlikely to be seen by most users of the site. The Panel finds the Respondent’s disclaimer to be ineffective in dispelling the confusion caused by the disputed domain name and website content, and notes that Internet users will in any event have been enticed to the Respondent’s website before seeing that disclaimer. In any case, the mere existence of a disclaimer cannot cure bad faith where, as here, the overall circumstances point to bad faith. Indeed, the Panel considers that the Respondent’s use of a disclaimer amounts to an admission that Internet users may be confused (corroborated by his acknowledgement that “…there was an oversight on our part in using the Starbucks marks and images on our website”). WIPO Overview 3.0, section 3.7. The Panel holds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website in the sense of Policy, paragraph 4(b)(iv). The fact that the Respondent offered to remove from his website the STARBUCKS trademark and other references to the Complainant does not alter the fact that the disputed domain name carries a risk of implied affiliation with the famous STARBUCKS trademark and thus an ongoing threat to the Complainant. Based on the available record, the Panel finds that the Complainant has established the third element of the Policy with regard to the disputed domain name. 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. /Andrea Mondini/ Andrea Mondini Sole Panelist Date: January 16, 2025
Full & Egal Universal Law Academy