The Baltimore Coffee & Tea Company, Inc. v. Laksh Internet Solutions Private Limited
Claim Number: FA0806001198434
Complainant is The Baltimore Coffee & Tea Company, Inc. (“Complainant”), represented by Eric Menhart, of CyberLaw PC, Washington D.C., USA. Respondent is Laksh Internet Solutions Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <baltimorecoffee.com>, registered with Lead Networks Domains Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 2, 2008.
On June 11, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <baltimorecoffee.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <baltimorecoffee.com> domain name is confusingly similar to Complainant’s BALTIMORE COFFEE 1895 mark.
2. Respondent does not have any rights or legitimate interests in the <baltimorecoffee.com> domain name.
3. Respondent registered and used the <baltimorecoffee.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an importer, roaster and seller of fine beverages, including coffee and tea. It ships its products all across the world, chiefly through its <baltcoffee.com> domain name. Complainant operates under the BALTIMORE COFFEE 1985 mark, which it registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,052,288 issued January 31, 2006; filed May 11, 2004; first used June 10, 1992).
Respondent’s <baltimorecoffee.com> domain name was registered on March 12, 1998. It resolves to a commercial search engine and a variety of links to third-parties, many of whom offer coffee, tea or other similar products. Complainant received an e-mail from a “Tom Barba,” offering to sell the disputed domain name for a cost of US $2,500.00 accompanied with the threat that other proceedings could cost Complainant more. However, the Panel finds no evidence in the record to support that this e-mail actually came from Respondent or that “Tom Barba” is a pseudonym used by Respondent.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has received a trademark registration from the USPTO for its BALTIMORE COFFEE 1895 mark. This is sufficient to establish Complainant’s rights in the BALTIMORE COFFEE 1895 mark pursuant to Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption."); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)).
Although Complainant’s application for a trademark registration was filed May 11, 2004, and the disputed domain name was registered in 1998, it is not necessary for Complainant’s mark to predate the registration of the disputed domain name in order to establish enforceable rights pursuant to Policy ¶ 4(a)(i). See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP Policy does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)).
Respondent’s <baltimorecoffee.com> domain name contains Complainant’s BALTIMORE COFFEE 1895 mark omitting the “1895” portion. It is followed by the generic top-level domain (“gTLD”) “.com.” Typically, UDRP panels find the inclusion of a gTLD irrelevant. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Moreover, the omission of part of a mark does not distinguish a disputed domain name if the remainder of the mark still identifies Complainant or its products sold under that mark. See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the <downeastmagazine.com> domain name confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE). Since Complainant markets and sells most of its products from the <baltcoffee.com> domain name, an abbreviation on “BALTIMORE” (“balt”) and “COFFEE” (“coffee”), the Panel finds that Complainant has sufficiently established that consumers also identify it through the phrase “Baltimore Coffee.” Consequently, the Panel finds the omission of the gTLD “.com” and the omission the term “1895” to insufficiently distinguish the disputed domain name, and concludes that the <baltimorecoffee.com> domain name is confusingly similar to Complainant’s BALTIMORE COFFEE mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
As Complainant must satisfy all three elements of Paragraph 4(a) of the Policy to prevail in this proceeding but has failed to satisfy Paragraph 4(a)(iii), as set out below, the Panel need not examine whether Complainant would prevail as to the criteria in Paragraph 4(a)(ii). Therefore, the Panel chooses to forego analysis under this section of the Policy.
Complainant contends that “Tom Barba” offered to sell the disputed domain name to Complainant for US $2,500.00 and with the threat that other proceedings could cost more. The Panel recognizes that a general offer to sell a disputed domain name most often creates the presumption that a respondent registered and is using that domain name in bad faith. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Furthermore, such a presumption is reinforced when it is accompanied by a threat that legal proceedings could cost more than the money demanded. See Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900, specifically noting that it would cost the complainant more to enforce its rights legally than to succumb to the respondent's attempted extortion).
However, Complainant fails to provide evidence or even directly contend that the alleged demand and offer to sell actually came from Respondent. The e-mails cited are from a “Tom Barba” and do not seem to have any connection to the disputed domain name, other than the purported offer to sell the disputed domain name. Complainant provides no evidence or arguments other than that “Tom Barba” could be “a likely pseudonym.” Therefore, the Panel declines to find that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Lastly, Complainant contends that Respondent should have been reasonably aware of Complainant’s rights in the BALTIMORE COFFEE 1895 mark because Respondent could have performed “a simple web search or USPTO trademark search for ‘Baltimore Coffee,’ presumably before it registered the disputed domain name. Complainant believes that this leads to “a legal presumption of bad faith.” The Panel is not persuaded by this argument. Respondent’s <baltimorecoffee.com> domain name was registered on March 12, 1998. Complainant’s BALTIMORE COFFEE 1895 trademark registration was filed with the USPTO on May 11, 2004 and issued January 31, 2006. There is no legal presumption that Complainant had constructive notice in Complainant’s rights in the BALTIMORE COFFEE 1895 mark at the time it registered the disputed domain name because this occurred almost six years prior to Complainant’s filing date. Furthermore, there is no indication in the record that Complainant’s <baltcoffee.com> domain name had been registered or developed at any time before Respondent’s registration of the disputed domain name. Without any further evidence in the record, the Panel refuses to find that Respondent had actual or constructive notice in the BALTIMORE COFFEE 1895 mark at the time the disputed domain name was registered. See Sanitech Corp. v. Paton, FA 935273 (Nat. Arb. Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent could have initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant); see also Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith); see also U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”).
In conclusion, the Panel finds that Complainant has failed to meet its burden of proof as to bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith without credible evidence are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Complainant has failed to establish Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Sandra J. Franklin, Panelist
Dated: July 28, 2008
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