Complainant is Starbucks Corporation, United States of America (“United States”), represented by Focal PLLC, United States.
Respondent is PERFECT PRIVACY, LLC, 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 July 14, 2020. On July 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint within five (5) calendar days, otherwise the Complaint may be deemed withdrawn. Complainant filed an amended Complaint on July 16, 2020. 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”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2020. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2020. The Center appointed Scott R. Austin as the sole panelist in this matter on August 28, 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 Complainant states in its Complaint and provides evidence in the respective Annexes sufficient to support that Complainant is a well-known American coffee company that has used its STARUCKS trademark (the “STARBUCKS Mark”) since the opening of its first store in 1971. After almost 50 years of use, the STARBUCKS Mark has developed into a brand that is known worldwide and used in connection with a wide variety of goods and services currently provided through nearly 32,000 stores in 82 markets around the world. Complainant owns numerous trademark and service mark registrations for its famous STARBUCKS Mark in the United States and around the world, including United States Trademark Registration No. 1,444,549, registered on June 23, 1987, for a range of services including coffee cafe services in International Class 43 and providing a first use in commerce date of March 29, 1971. The disputed domain name was registered on July 4, 2013, and resolves to an inactive website. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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 standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for the STARBUCKS Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Panel finds here that disputed domain name not only incorporates the STARBUCKS Mark in its entirety but is in fact comprised entirely of it. Use of the country code Top-Level Domain ( “ccTLD” ) “.la” is without legal significance since use of the ccTLD is technically required to operate the disputed domain name. See Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Oleg Filipov-Guevreyan,WIPO Case No. DLA2003-0002 (disregarding the “.la” suffix as irrelevant when determining confusing similarity). Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that it has not licensed, or otherwise authorized Respondent to use the STARBUCKS Mark in any manner, nor is Complainant in any way or manner associated with or related to Respondent. The Panel also finds that there is no evidence to support an argument that Respondent is commonly known by the disputed domain name. It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that a complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857. Most importantly, Complainant’s evidence shows the disputed domain name resolves to an inactive website, As of July 1, 2020, when Complainant accessed the website at the disputed domain name it resolved to an error message. Respondent, therefore, is not making a legitimate noncommercial or fair use of the disputed domain name nor using it in connection with a bona fide offering of goods or services because the disputed domain name is not being used at all. See, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246 These facts establish Complainant’s prima facie showing. Respondent has not provided any basis on which that showing may be overcome. In addition, the Panel notes that the composition of the disputed domain name being essentially identical to Complainant’s mark carries a high risk of implied affiliation with Complainant and therefore could not be considered a “fair” use. See, WIPO Overview 3.0, section 2.5.1. Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given the long usage and fame of the STARBUCKS Mark, there can be no doubt that Respondent was well aware of Complainant’s STARBUCKS mark when Respondent registered the disputed domain name, which prior panels have held supports a finding of bad faith. See, CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain,WIPO Case No. D2017-0144 (finding that domain names were registered and used in bad faith in part because respondent was likely aware of complainant’s mark when domain names were registered). Under these circumstances, the Panel finds that it is implausible to believe that Respondent was not aware of the STARBUCKS Mark when it registered its confusingly similar disputed domain name. Such registration of a domain name confusingly similar to Complainant’s widely-known trademark suggest opportunistic bad faith. See, Giorgio Armani S.p.A. Milan, Swiss Branch Mendrisio v. Min Zhi,WIPO Case No. D2013-0020; see also, Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh.,WIPO Case No. D2009-0671. Although the disputed domain name resolves to an inactive website, inaction or “passive holding” of a disputed domain name may fall within the concept of the domain name “being used in bad faith”. See, Telstra Corporative Limited v. Nuclear Marshmallows,WIPO Case No. 2000-0003. Here, the reputation of the STARBUCKS Mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, the Respondent’s use of a privacy service, and the implausibility of any good faith use to which the disputed domain name may be put, support a finding of bad faith in the circumstances of this case. Furthermore, prior UDRP panels have held that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412. Given the worldwide fame of Complainant’s STARBUCKS Mark and Respondent’s lack of any relationship to the mark, the Panel finds the disputed domain name has been registered and used in bad faith. For these reasons, the Panel finds that Complainant has met its burden 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 Scott R. Austin
Sole Panelist
Date: September 11, 2020
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