National Arbitration Forum

 

DECISION

 

Discount Coffee.com Inc c/o Kirby Newbury v. WCM Investments, Inc. c/o William McClure

Claim Number: FA0908001281715

 

PARTIES

Complainant is Discount Coffee.com Inc c/o Kirby Newbury (“Complainant”), represented by Cherri Huffman Newbury, Missouri, USA.  Respondent is WCM Investments, Inc. c/o William McClure (“Respondent”), represented by Gary Kibel, of Davis & Gilbert LLP, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2009.

 

On August 27, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 September 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2009 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 postmaster@discount-coffee.net, postmaster@discountcoffee.net, and postmaster@discountedcoffee.com by e-mail.

 

A timely Response was received and determined to be complete on September 23, 2009.

On October 5, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

Preliminary Issue: Non-UDRP Legal Arguments

 

Complainant argues various legal points pursuant to the Lanham Act and the Arkansas Deceptive Trade Practices Act as they may apply to Respondent’s alleged unfair competition and deceptive trade practices.  The instant dispute is governed by the UDRP and not the Lanham Act and the Arkansas Deceptive Trade Practices Act.  While Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements.  See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else). 

 

PARTIES’ CONTENTIONS

A. Complainant

Through the Complainant’s long and continuous use and promotion of its business and the Discount Coffee domain name, the DISCOUNT COFFEE trademark has become strongly associated in the minds of on-line consumers with the company and the products and services it offers.

 

The Respondent is using the domains names as landing pages to deceptively redirect consumers away from DiscountCoffee.com to its company web site, Coffee.org.

 

Respondent (as an individual, business, or other organization) is commonly known by the domain name(s) Coffee.org, MissElliesCoffee.com, WJM.net or ClickLeasing.com (domain holding companies); it is not known by Discount Coffee.

 

Since 1998, Discount Coffee has offered the highest quality coffee and related products and services to its clients across the USA and internationally via its website DiscountCoffee.com.  Discount Coffee has become the most recognized leader in the online coffee sales industry.  The Respondent was well aware of the long standing notoriety of Discount Coffee and of the mark when registering the domain names as evidenced by his previous work experience.

 

The Respondent’s use of these domain names with the “Discount Coffee” trade name has caused confusion among consumers.

 

B. Respondent

Respondent operates a legitimate business selling discount coffee online through various websites.  These sites include coffee.org and the domain names subject to this dispute.

 

Respondent employs 15 people in Fort Smith, Arkansas in connection with its business.  Respondent maintains a climate controlled 6,000 square foot warehouse in connection with its business of selling coffee products and accessories online at a discount.

 

Since December 2008, Respondent has fulfilled over 26,000 orders for discount coffee products and accessories for over 16,000 customers in the United States through its coffee web sites.

 

Respondent is not in the business of selling coffee-related domain names to other parties.

 

Respondent had not heard of Complainant and was not aware of its business until Respondent received a demand letter from Complainant’s attorney in July 2009.

 

During the trademark application process, Complaint admitted that it did not possess any exclusive rights to DISCOUNTCOFFEE.COM apart from the graphical design it was using.

 

The use of generic words in a domain name is a legitimate use.  The use of the words “discount” and “coffee” in a domain name is highly descriptive and a generic use of words that any consumer would typically use when looking to purchase coffee products at a good price.  The combination of the words in no way uniquely identifies Complainant or is established in the minds of consumers as being solely associated with Complainant.

 

The Complainant has failed to prove registration and use in bad faith by the Respondent.  The mere fact that Respondent resells domains does not in and of itself establish any evidence that Respondent is engaged in bad faith practices.

 

A Google search query “buy discount coffee online” returns 114,000,000 hits and reveals that there are numerous companies selling coffee products online using the phrase “discount coffee.”

 

FINDINGS

For the reasons set forth below the Panel finds Complainant has not proven it is entitled to the relief requested.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

The United States Patent and Trademark Office (“USPTO”) registration lists Complainant’s registered mark as DISCOUNTCOFFEE.COM (Reg. No. 2,906,139 issued November 30, 2004).  Previous panels have found that trademark registration with the USPTO is sufficient to establish rights in a complainant’s mark.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).  Therefore, the Panel finds Complainant has established rights in the DISCOUNTCOFFEE.COM mark.

 

Complainant claims Respondent’s <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names are confusingly similar to Complainant’s DISCOUNTCOFFEE.COM mark.  The disputed domain names each contain Complainant’s DISCOUNTCOFFEE.COM mark with one or more of the following alterations: (1) the addition of a hyphen; (2) the addition of the letters “ed” to create the past tense form of “discount;” and/or (3) the substitution of the generic top-level domain “.net,” for the “.com” portion of Complainant’s mark.  The Panel finds none of these alterations alone or in combination sufficiently distinguish Respondent’s disputed domain names from Complainant’s mark.  The Panel finds the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). 

 

While Respondent contends that the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names are comprised of common and descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain names are identical or confusingly similar to Complainant’s mark.  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

Respondent alleges it is operating a legitimate business and was engaged in a bona fide offering of goods prior to receiving notice from Complainant of this proceeding.  Respondent contends its business is selling coffee products and accessories online at a discount.  Respondent asserts it both retains fifteen employees and operates a separate warehouse for use in connection with Respondent’s business of selling coffee products.  Respondent claims it has fulfilled 26,000 orders for coffee products and accessories through its coffee websites.  The Panel finds Respondent’s use of the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names constitutes a bona fide offering of goods under Policy ¶ 4(c)(i).  See Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

Respondent also argues that the terms of the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.  Respondent further alleges Complainant has expressly admitted it did not possess exclusive rights in the DISCOUNTCOFFEE.COM mark.  Respondent provides examples of other domain names that have also combined the two terms “discount” and “coffee.”  The Panel finds that Respondent can establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).

 

Complainant has not proven this element.

 

Registration and Use in Bad Faith

 

The Panel finds that Complainant failed to meet the burden of proof of 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 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).

 

Since the Panel found that Respondent has rights or legitimate interests in the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

 

Respondent argues the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names were not acquired for the primary purpose of selling, renting, or otherwise transferring them to Complainant.  Respondent alleges it has made no offers or attempts to transfer the disputed domain names to Complainant.  Respondent claims it is using the disputed domain names for legitimate interests and has no interest in selling the disputed domain names.  The Panel finds Respondent has not registered the disputed domain names for the purpose of offering them for sale, and the Panel finds Respondent has not registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(i).  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also PRIMEDIA Special Interest Publ’ns Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that the respondent did not register the domain names in bad faith where there is no evidence that the respondent intended to sell the domain names and actually refused several offers from third parties).

 

Respondent contends it has not registered the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names for the purpose of disrupting Complainant’s competing coffee product business.  Respondent claims the disputed domain names were acquired solely for the purpose of operating Respondent’s business.  Respondent provides its business is selling coffee products and accessories online at a discount.  Respondent argues its 26,000 fulfilled orders for coffee products and accessories prove that Respondent is attempting to operate a legitimate business and not simply attempting to disrupt Complainant’s business.  The Panel finds Respondent has not disrupted Complainant’s business through Respondent’s use of the disputed domain names, and the Panel does not find bad faith registration and use under Policy ¶ 4(b)(iii).  See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that the respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”); see also Election Systems & Software, Inc. v. Stewart, FA 805224 (Nat. Arb. Forum Nov. 14, 2006) (Where the respondent registered the disputed domain name to reflect one of the products available from Respondent, the panel did not find bad faith pursuant to Policy ¶ 4(b)(iii)).

 

Respondent alleges the disputed domain names are not being used to create a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  Respondent contends it is not attempting to be associated with Complainant, and is actually attempting to avoid association because Respondent is attempting to build its own brand and identity.  The Panel finds Respondent’s use of the disputed domain names does not constitute bad faith registration and use under Policy ¶ 4(b)(iv).  See DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute); see also Accu-Find Internet Servs. v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the complainant’s allegations that the respondent registered the disputed domain name to divert Internet users from the complainant’s business were not sufficiently substantiated under Policy ¶ 4(a)(iii)).

 

Respondent contends that the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s DISCOUNT COFFEE mark.  Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith.  The Panel finds that Respondent did not register or use the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names in bad faith under Policy ¶ 4(a)(iii).  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

 

Complainant has not proven this element.

 

DECISION

 

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names remain with Respondent.

 

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

October 21, 2009

 

 

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