Starbucks Coffee Co. d/b/a Starbucks Coffee Company v. Carl Knight
Claim Number: FA1304001494398
Complainant is Starbucks Coffee Co. d/b/a Starbucks Coffee Company (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Carl Knight (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com>, registered with eNom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2013; the National Arbitration Forum received payment on April 11, 2013.
On April 12, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2013 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@freestarbucksdrink.com and postmaster@starbucksdrinkgiveaway.com. Also on April 12, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. 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
1. Complainant’s STARBUCKS mark represents a strong and well-recognized brand around the world. Complainant uses the STARBUCKS mark to designate its coffee house franchises, and has spent substantial sums of money to promote and advertise its name.
2. Complainant opened its first coffee house in Seattle, Washington in 1971, and currently operates over 17,000 coffee houses throughout the world. Complainant’s business includes coffee houses, as well as selling coffee, tea, confectioneries, beverages, and other products in retail stores throughout the United States.
3. Complainant offers gift cards with its STARBUCKS mark and logo, which come in a variety of designs, but almost always feature the logo and the trademark STARBUCKS CARD. Complainant owns the registration for the <starbucks.com> domain name, as well as numerous other domain names incorporating the STARBUCKS mark, in combination with another term, including <starbuckscard.com>. Complainant owns trademark registrations for the STARBUCKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,444,549 registered June 23, 1987). Complainant also claims to own trademark registrations in numerous jurisdictions outside the United States.
4. Respondent registered the <freestarbucksdrink.com> domain name on August 12, 2012, and the <starbucksdrinkgiveaway.com> domain name on January 24, 2013. The <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names are likely to cause confusion with Complainant’s STARBUCKS mark.
5. Respondent’s previous operation of a website at the <freestarbucksdrink.com> domain name and its current use of both the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names demonstrates bad faith. Respondent previously used the <freestarbucksdrink.com> domain name to resolve to a website that purports to offer free beverages in exchange for sharing the domain name’s hyperlink with friends.
6. Respondent currently uses both domain names to resolve to a webpage that depict “mutilated, but virtual identical” images of Complainant’s logo, along with language stating “CLAIM YOUR FREE STARBUCKS DRINK TODAY,” and induces visitors to enter their e-mail address in order to claim the free beverage.
7. Respondent’s use of the disputed domain name continues to injure Complainant’s reputation and goodwill in the STARBUCKS mark, and confuses and deceives consumers. Respondent has no rights or legitimate interests in the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names, and is not commonly known by the domain names. Respondent registered and uses the disputed domain names in bad faith, by receiving revenue from its use and deceiving consumers. Respondent improperly solicits contact information from Complainant’s customers and potential customers. Respondent had prior actual and constructive knowledge of Complainant’s rights in the STARBUCKS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STARBUCKS mark. Respondent’s <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names are confusingly similar to Complainant’s STARBUCKS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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.
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.”).
Complainant owns rights in the STARBUCKS mark through its USPTO registrations, and provides evidence thereof (e.g., Reg. No. 1,444,549 registered June 23, 1987). In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the complainant’s rights in the claimed marks were established by their USPTO registrations, pursuant to the Policy. The Panel concludes that Complainant’s has satisfied Policy ¶ 4(a)(i) insofar as its rights in the STARBUCKS mark are concerned. The Panel notes that Complainant is located in the United States and Respondent is located in Panama. A complainant is not required to have a trademark registration in the respondent’s country of residence, as long as the complainant can establish rights in any jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant’s USPTO registration adequately demonstrates rights in its mark in satisfaction of Policy ¶ 4(a)(i).
Complainant alleges that the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names are confusingly similar to Complainant’s STARBUCKS mark, as the domain names include descriptive terms, such as “free,” “drink,” and “giveaway.” The <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names include the generic top-level domain (“gTLD”) “.com;” despite adding descriptive terms and a gTLD, both disputed domain names are confusingly similar to Complainant’s STARBUCKS mark pursuant to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names; the WHOIS information associated with the domain names indicates that “Carl Knight” is listed as the registrant. WHOIS information that is not similar to the domain name can serve as evidence that a respondent is not commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The Panel therefore finds that Respondent is not commonly known by the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names because the registrant identified in the WHOIS information does not correspond with the domain names.
Complainant makes the allegation that Respondent previously used the <freestarbucksdrink.com> domain name in such a way that fails to show rights or legitimate interests, and has attached a screenshot of the resolving website, which purports to offer “free” STARBUCKS beverages when a user shares the hyperlink with friends. Using the <freestarbucksdrink.com> domain name to divert Internet users from Complainant’s website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name)
Complainant argues that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names due to Respondent’s use of the resolving websites to mislead and divert consumers. Complainant asserts that Respondent uses the disputed domain names to direct users to a website that purports to offer free beverages under the STARBUCKS name in exchange for visitors’ e-mail addresses. Such use constitutes “phishing,” which demonstrates that Respondent does not make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names in such a way that satisfies a bad faith finding under Policy ¶ 4(b)(iii). Complainant alleges that Respondent “attempt[s] to high jack the goodwill of Complainant for commercial gain and deceive consumers” by hosting a website that purports to offer free beverages under the STARBUCKS mark. The Panel determines that Respondent’s use competes with Complainant and disrupts its business by offering free STARBUCKS beverages at the resolving website, thereby demonstrating bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent is engaged in bad faith registration and use pursuant to Policy, as Respondent uses the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names to solicit contact information from Complainant’s customers. Complainant alleges that Respondent’s use of the domain name results in commercial gain to Respondent. The Panel concludes that Respondent’s actions cause consumer confusion and attract Internet users to its websites in order to make a financial gain which is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
Complainant argues that the resolving websites offers “free” STARBUCKS beverages in exchange for a website visitor’s e-mail address. The Panel concludes that soliciting contact information from Internet users amounts to “phishing,” and that such use is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Complainant sets forth the contention that the fame of its STARBUCKS mark, and Respondent’s infringing use of the disputed domain names depicting virtually identical versions of Complainant’s logo, demonstrate Respondent’s prior knowledge of Complainant’s rights in the STARBUCKS mark which is clear evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freestarbucksdrink.com> and <starbucksdrinkgiveaway.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 20, 2013
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