Blue Mountain Coffee, Inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1204001439829
Complainant is Blue Mountain Coffee, Inc. (“Complainant”), represented by Kenneth L. Kunkle of Kunkle Law, PLC, Minnesota, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), represented by Bret S. Moore, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blue-mountain-coffee.com>, registered with INTERNET.BS CORP.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2012; the National Arbitration Forum received payment on April 17, 2012.
On April 19, 2012, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <blue-mountain-coffee.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@blue-mountain-coffee.com. Also on April 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 8, 2012.
On May 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
B. Respondent
Respondent makes the following contentions:
a. Complainant has no rights in any of the marks asserted and has not provided sufficient evidence to establish such rights;
b. The BLUE MOUNTAIN COFFEE mark is descriptive of the region of Jamaica where the coffee is produced;
c. Complainant is merely one of many licensees using the Jamaican Blue Mountain Coffee brand name and associated marks;
d. Complainant has not established rights in its business name;
e. Respondent has rights and legitimate interests in the disputed domain name;
f. Respondent is a legitimate reseller of genuine goods, coffee, through an Amazon.com affiliate program;
g. Respondent is a native of Jamaica and uses the disputed domain name to describe its business;
h. Complainant has failed to provide any evidence of false association, initial interest confusion, or personal information collection;
i. Respondent has not offered the disputed domain name for sale or used it to prevent Complainant from reflecting its business name in a domain name;
j. Complainant has engaged in Reverse Domain Name Hijacking.
The company Coffee Marks Limited Company Jamaica, of Jamaica, is the owner of the U.S. trademark registrations:
No 1,414,598 JAMAICA BLUE MOUNTAIN COFFEE, registered on October 21, 1986 in respect of “coffee” with the date of first use of December 12, 1983
No 3,448,247 JAMAICA BLUE MOUNTAIN COFFEE & Device, registered on June 17, 2008 in respect of “coffee and coffee beans” with the date of first use of December 12, 1983
The Complainant, Blue Mountain Coffee, Inc., is an authorized importer of Jamaican Blue Mountain Coffee since 1986, as well as a licensee of the Jamaican Coffee Industry Board.
The Respondent registered the disputed domain name <blue-mountain-coffee.com> on August 20, 2010.
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."
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.
The Panel notes that the Complainant has not alleged rights in a registered service or trademark. However, as stated by previous panels, a complainant need not register a mark with a trademark authority to establish rights in a mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
The question is if Complainant has established its rights in the BLUE MOUNTAIN COFFEE mark based by common law rights in the mark.
In this respect, the Complainant states that it has used the mark in conjunction with its business since 1986, referring to its importer license to verify that claim. The Complainant also claims that it has expended a large amount of resources promoting its business publicly under the mark, but has not provided any evidence in support of that statement to convince the Panel.
Complainant claims that it is a licensee of the Coffee Industry Board, which granted Complainant permission to use the JAMAICA BLUE MOUNTAIN mark. The Panel finds no reason to doubt that Complainant has the right to import, market and sell products marked with the Coffee Marks Limited JAMAICA BLUE MOUNTAIN COFFEE trademark.
However, the Panel cannot find that Complainant has any clear rights to represent the Coffee Marks Limited, ordering the disputed domain name to be transferred to the Complainant. Complainant’s own submissions appear to reflect that Complainant is a mere licensee of the Coffee Industry Board of Jamaica (“CIBJ”), and has not provided any convincing evidence that the Complainants use can be considered as creating a common law rights in BLUE MOUNTAIN COFFEE as a trademark.
The Panel also notes the comments of the Respondent that BLUE MOUNTAIN COFFEE as such represents a geographic region that produces coffee within Jamaica (compared to JAMAICA BLUE MOUNTAIN COFFEE which is a registered trademark, however not in the name of the Complainant).
Based upon the evidence provided, by both Complainant and Respondent, the Panel determines that Complainant has failed to establish rights in the BLUE MOUNTAIN COFFEE mark under Policy ¶ 4(a)(i). See Sorel Corp. v. Domaine Sales Ltd., FA 96674 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent has shown that SOREL is used as a geographic term. Complainant cannot claim an exclusive right to use the name SOREL, as it is not exclusively associated with Complainant’s business.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Given that the term ‘British meat’ is the normal and natural term to describe meat produced in Britain, the Panel is not satisfied that the [<britishmeat.com> and <britishmeat.org>] Domain Names would be regarded by Internet users as indicating a website of the Complainant.”).
Further, as the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel finds no reason to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. UDRP Proc. Rules ¶ 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” UDRP Proc. Rules ¶ 15(e) further defines the situation as filing the complaint “in bad faith, for example in an attempt to harass the domain-name holder.”
Although the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
In this case, the Complainant has tried to convince the Panel that Complainant has rights based on the license agreement, and/or by extensive use. Although the Panel is not convinced by the arguments and evidence provided by the Complainant, the Panel finds no reason to question that the Complainant filed the Complaint in good faith.
The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <blue-mountain-coffee.com> domain name REMAIN WITH Respondent.
Mr. Petter Rindforth, Panelist
Dated: May 21, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page