Blue Bottle Coffee, LLC v. LEE JUN SOO
Claim Number: FA1403001548332
Complainant is Blue Bottle Coffee, LLC (“Complainant”), represented by Brian M. Davis of VLP Law Group LLP, North Carolina, USA. Respondent is LEE JUN SOO (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bluebottlecoffeeco.com> and <bluebottlecoffeeco.net>, registered with Gabia, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2014; the National Arbitration Forum received payment on March 12, 2014. The Complaint was submitted in both English and Korean.
On March 19, 2014, Gabia, Inc. confirmed by e-mail to the National Arbitration Forum that the <bluebottlecoffeeco.com> and <bluebottlecoffeeco.net> domain names are registered with Gabia, Inc. and that Respondent is the current registrant of the names. Gabia, Inc. has verified that Respondent is bound by the Gabia, 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 March 24, 2014, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of April 14, 2014 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@bluebottlecoffeeco.com and postmaster@bluebottlecoffeeco.net. Also on March 24, 2014, the Korean language 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 April 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings Korean. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in, inter alia, BLUE BOTTLE COFFEE CO and alleges that the disputed domain names are identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has provided coffee, coffee products and coffee shop and café services by reference to the trademarks BLUE BOTTLE COFFEE and BLUE BOTTLE COFFEE CO. since 2002.
2. Complainant owns, inter alia, United States (“USPTO”) Trademark Reg. No. 4,435,134 filed November 26, 2012 for the word mark BLUE BOTTLE COFFEE CO.
3. The disputed domain names were registered on April 3, 2012.
4. The domain names are parked with the Registrar and resolve to a holding page which states, in the Korean language, “We are preparing an official website. Please wait.”
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.
Unhelpfully, the annexure to the Complaint from the USPTO official records does not show the registration numbers of the properties. The Panel has however made its own enquires and can confirm that Complainant owns a subsisting USPTO registration for BLUE BOTTLE COFFEE CO., and so the Panel is satisfied that Complainant has trademark rights in that expression (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
Panel is also satisfied that the disputed domain names are legally identical to Complainant’s trademark. The disputed domain names takes the trademark and merely add the non-distinctive gTLD, “.com” or “.net” (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information identifies Respondent as “LEE JUN SOO” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain names are parked with the Registrar and resolve to a rudimentary holding page.
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant’s arguments in relation to bad faith are largely undeveloped. There is simple nomination of subparagraphs 4(b)(ii) and (iii) above and an oblique reference to the principles laid out in the seminal Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case D2000-0003 case.
Nonetheless, the Panel need not enter in the debates as to whether, for the purposes of subparagraph 4(b)(ii), registration of two domain names constitutes a relevant “pattern of conduct”, or whether, for the purposes of subparagraph 4(b)(iii), Respondent could sensibly be regarded as a “competitor” of Complainant, since there is a good case for registration and use in bad faith separate from the specific scenarios outlined in paragraph 4(b) of the Policy.
In particular, on a balance of the evidence and having regard to timing, Panel accepts Complainant’s submission that Respondent was aware of Complainant’s trademark and business when registering the domain names. Moreover, having regard to the distinctive nature of the trademark, Panel also gives credibility to Complainant’s submission that it is difficult to conceive of any legitimate reason why Respondent would have chosen to register corresponding domain names. Finally, whilst at one level it might be said that that domain names are not “in use”, Panel notes that even the little information on the holding page is deceptive in so far as it anticipates the construction of an “official” webpage.
Panel finds registration and use in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bluebottlecoffeeco.com> and <bluebottlecoffeeco.net> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: April 29, 2014
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