The Complainant is Starbucks Corporation, United States of America (“United States”), represented by Focal PLLC, United States.
The Respondent is Starbucks Coffee Company, United States.
The disputed domain name <starbucks.nyc> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2020. On September 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 18, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 21, 2020, 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 September 23, 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 September 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2020.
The Center appointed Lynda M. Braun as the sole panelist in this matter on October 19, 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.
The Complainant is the owner of the STARBUCKS trademark in connection with a wide variety of goods and services in the United States. For example, the Complainant owns the following registrations for STARBUCKS in numerous international classes, including, but not limited to, the following:
STARBUCKS, United States Trademark Registration No. 1,372,630, registered on November 26, 1985 in international class 21 for coffeepots, cups, mugs and canisters;
STARBUCKS, United States Trademark Registration No. 1,452,359, registered on August 11, 1987 in international class 30 for coffee, tea, herb tea, chocolate and cocoa;
STARBUCKS, United States Trademark Registration No. 1,444,549, registered on June 23, 1987 in international classes 35 and 43, for retail store services and distributorship services for coffee, tea, and for coffee cafe services, respectively.
In addition, the Complainant currently owns trademark registrations for its STARBUCKS trademark in numerous other countries worldwide. Specifically, the Complainant owns approximately 1,950 trademark applications and registrations for the STARBUCKS trademark in more than 180 countries globally (hereinafter collectively referred to as the “STARBUCKS Mark”). The Complainant also has more than 32,000 STARBUCKS stores in 82 markets around the world.
The Disputed Domain Name was registered on April 20, 2020. The Respondent appears to have used a version of the Complainant’s name, business address and telephone number to register the Disputed Domain Name. However, the Complainant has no affiliation with the Respondent and did not authorize the registration of the Disputed Domain Name. As of September 8, 2020, the Disputed Domain Name resolves to a website that purports to be “An online shop” that uses the STARBUCKS Mark and offers a variety of items as well as a listing of various online food categories such as Shake Shack, Freshly, and Subway, and various entertainment categories such as Hulu and HBO Max, among others.
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
- the Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a 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 was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the STARBUCKS Mark. It is uncontroverted that the Complainant has established rights in the STARBUCKS Mark based on its years of use as well as its registered trademarks for the STARBUCKS Mark in the United States and other jurisdictions worldwide. The general rule is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the STARBUCKS Mark.
The Disputed Domain Name consists of the entirety of the STARBUCKS Mark followed by the generic Top-Level Domain (“gTLD”) “.nyc”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy. When a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7)
Further, the addition of a gTLD such as “.nyc” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See, e.g., Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s STARBUCKS Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant.
Moreover, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its STARBUCKS Mark. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights.
Furthermore, the Respondent is using the Disputed Domain Name for the purpose of trading on the Complainant’s name and STARBUCKS Mark to deceive unwitting Internet users into thinking that they arrived at a site belonging to the Complainant. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0 , section 2.13.1 . Given the website the Respondent operates through the Disputed Domain Name’s resolving website, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather is using the Disputed Domain Name for commercial gain. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Based on the foregoing, the Complainant has made out a primafacie case and the Respondent has not demonstrated any rights or legitimate interests in respect of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
The Panel finds that based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the fact that the Respondent appears to have used a version of the Complainant’s name, business address and telephone number to register the Disputed Domain Name without authorization by the Complainant demonstrates fraudulent conduct and registration in bad faith.
Second, the Disputed Domain Name was registered long after the Complainant first began using the STARBUCKS Mark. The Panel finds it likely that the Respondent had the Complainant’s STARBUCKS Mark in mind when registering the Disputed Domain Name, demonstrating bad faith.
Third, the use of a domain name to intentionally attempt to attract Internet users to a respondent’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website for commercial gain demonstrates registration and use in bad faith. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Name in bad faith to target the Complainant’s STARBUCKS Mark and to drive Internet traffic seeking the Complainant’s goods and services to the website to which the Disputed Domain Name resolves for commercial gain. See paragraph 4(b)(iv) of the Policy. By reproducing the Complainant’s registered trademark in its entirety in the Disputed Domain Name, it suggests that the Complainant is the source of the website, which it is not.
Finally, the Respondent did not respond to the cease-and-desist letter sent by the Complainant. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <starbucks.nyc> be transferred to the Complainant.
Lynda M. Braun
Date: October 21, 2020
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