Blue Bottle Coffee, LLC v. Domain Admin / HugeDomains.com
Claim Number: FA1901001827481
Complainant is Blue Bottle Coffee, LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Domain Admin / HugeDomains.com (“Respondent”), represented by Megan R. Long, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluebottlecoffe.com>, registered with DropCatch.com 604 LLC.
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.
Lars Karnøe as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2019; the Forum received payment on January 29, 2019.
On January 31, 2019, DropCatch.com 604 LLC confirmed by e-mail to the Forum that the <bluebottlecoffe.com> domain name is registered with DropCatch.com 604 LLC and that Respondent is the current registrant of the name. DropCatch.com 604 LLC has verified that Respondent is bound by the DropCatch.com 604 LLC 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 February 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2019 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@bluebottlecoffe.com. Also on February 4, 2019, 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 February 25, 2019.
On 28 February 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lars Karnøe as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
The Complainant, Blue Bottle Coffee, LLC, is a high-end specialty coffee roaster and retailer and the proprietor of numerous United States trademark registrations for its BLUE BOTTLE COFFEE Mark, including but not limited to:
Registration No. 4678758, filed June 22, 2014, in Class 30;
Registration No. 4470362, filed June 12, 2013, in Class 35;
Registration No. 4435134, filed November 26, 2012, in Classes 30 and 43.
The Complaint founded Blue Bottle Coffee in 2002 in Oakland and currently operates <bluebottlecoffee.com>, as well as 56 Blue Bottle Coffee cafés and coffee shops locations in the United States. As of January 29, 2019, Blue Bottle Coffee had 136,304 followers on Facebook and 316,000 followers on Instagram and has gained some notoriety to its trademark and domain name.
B. Respondent
The Respondent only agrees with Complainant’s request in this matter and askes The Forum and the Panel to transfer this domain to Complainant while arguing that a Panel need not be appointed as the Respondent willingly agrees to the transfer of this domain.
As laid out in the Complaint the Respondent consented to transfer the <bluebottlecoffe.com> domain name to Complainant. However, after the initiation of this proceeding, DropCatch.com 604 LLC placed a hold on Respondent’s account and therefore the Respondent cannot transfer the <bluebottlecoffe.com> domain name while this proceeding is still pending.
As a result, the Panel may find that in a circumstance such as this, where the Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <bluebottlecoffe.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) and Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653. (Forum Jan. 13, 2004)
However, the Panel may also decide that the Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel and that the “consent-to-transfer” approach by the Respondent is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the Panel stated that:
“Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”
This Panel agrees with Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008) and will, consequently, base its decision on the merits of the case, rather than the consent of the Respondent.
Finally, the Panel conducted additional searches to determine whether or not the Respondent was commonly known by the disputed domain name according to the Policy 4(a)(ii), including a WHOIS search, which determined that the Respondent registered the disputed domain name on 24 August 2018 and a web search, which determined that the Respondent does not seem to be commonly known by the disputed domain name.
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.
Initially, the Panel finds that the Complainant has proven rights to the BLUE BOTTLE COFFEE mark based upon its registration of the mark with the USPTO, which generally establishes rights for purposes of Policy 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017).
Furthermore, the Complainant has provided copies of its USPTO registrations for the BLUE BOTTLE COFFEE mark in Annex E, and, consequently, the Panel concludes that Complainant has rights in the BLUE BOTTLE COFFEE mark under Policy 4(a)(i).
The Complainant argues that Respondent’s <bluebottlecoffe.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the BLUE BOTTLE COFFEE mark in the domain name, removes one letter “e,” and adds a gTLD. Such changes are typically insufficient to distinguish a disputed domain name from a mark under Policy 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018).
Therefore, the Panel may conclude that Respondent’s <bluebottlecoffe.com> domain name is confusingly similar to Complainant’s BLUE BOTTLE COFFEE mark under Policy 4(a)(i).
The <bluebottlecoffe.com> domain name differs only from the Complainant’s trademarks and domain name by the last letter “e” and is, consequently merely a misspelling of the word “coffee” as it has no independent meaning.
The Panel therefore finds that the <bluebottlecoffe.com> domain name is confusingly similar to the Complainant’s rights.
The Respondent has not, to the satisfaction of this Panel, provided sufficient evidence to support any other conclusion.
According to the Policy, the Complainant must make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect to the disputed domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests according to Policy 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
In this case, the Complainant argues that Respondent lacks rights and legitimate interests in the <bluebottlecoffe.com> domain name because the Respondent is not authorized or permitted to use Complainant’s BLUE BOTTLE COFFEE mark and is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017).
Next, the Complainant argues that the Respondent fails to use the <bluebottlecoffe.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the Respondent offers the domain name for sale to the general public, which may not constitute a bona fide offering or a legitimate use under Policy 4(c)(ii) or (iii). See Airbnb, Inc. v. xiechunfu, FA 1770765 (Forum Mar. 7, 2018).
The Complainant provided screenshots of the disputed domain name’s resolving webpage, which displays an offer to sell the domain name for $3395.00 cf. Annex H.
Therefore, the Panel concludes that Respondent fails to use the <bluebottlecoffe.com> domain name in connection with a bona fide offering of goods or services under Policy 4(c)(ii) or a legitimate noncommercial or fair use under Policy 4(c)(iii).
The Respondent has not, to the satisfaction of this Panel provided sufficient evidence to support any other conclusion.
The Complainant argues that the Respondent registered and uses the <bluebottlecoffe.com> domain name in bad faith because the Respondent offers the domain name for sale to the generic public. Registration of a domain name for the purpose of offering it for sale may evince bad faith under Policy 4(b)(ii). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019).
The Complainant provides a screenshot of the disputed domain name’s resolving webpage, which displays an offer to sell the domain for $3395.00 cf. Annex H.
The Panel finds that the Respondent primarily intended for such an offer when it registered the disputed domain name and, consequently, the Panel may find that Respondent registered and uses the <bluebottlecoffe.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Next, the Complainant argues that Respondent registered and uses the <bluebottlecoffe.com> domain name in bad faith because the Respondent creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website in order to attract users for commercial gain. Such use of a disputed domain name may evince bad faith under Policy 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007).
The Complainant claims that the confusing similarity between the <bluebottlecoffe.com> domain name and Complainant’s BLUE BOTTLE COFFEE mark causes user confusion, and that the Respondent does this intentionally for commercial gain cf. Annex H.
The Panel agrees with the Complainant and concludes that the Respondent registered and uses the <bluebottlecoffe.com> domain name in bad faith under Policy 4(b)(iv).
Next, the Complainant argues that the Respondent registered and uses the <bluebottlecoffe.com> domain name in bad faith because Respondent engages in typosquatting. Typosquatting may evince bad faith generally under Policy 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014).
Here, the Complainant argues that Respondent is typosquatting because the <bluebottlecoffe.com> domain name is a typographical error of Complainant’s BLUE BOTTLE COFFEE mark, the only difference being the absence of one letter “e.”
The Panel agrees with the Complainant and concludes that the Respondent engages in typosquatting, and thus registered and uses the <bluebottlecoffe.com> domain name in bad faith under Policy 4(a)(iii).
Finally, the Complainant asserts that the Respondent had actual knowledge of Complainant’s rights in the BLUE BOTTLE COFFEE mark prior to registering the <bluebottlecoffe.com> domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy 4(a)(iii), and can be established through evidence of the fame of the mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018).
Here, Complainant cites its use of the mark in commerce prior to the registration of the disputed domain name, as well as the fame of the mark cf. Annexes E-G.
From the evidence, it is difficult to assert whether the BLUE BOTTLE COFFEE mark is famous or well-known.
However, given the information in Annexes E-G and the distinctiveness of the trademark, it is the Panels opinion that the Respondent must have had knowledge of Complainant’s rights in the mark prior to registering the <bluebottlecoffe.com> domain name, thereby supporting a finding of bad faith under Policy 4(a)(iii).
The Respondent has not, to the satisfaction of this Panel, provided sufficient evidence to support any other conclusion.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bluebottlecoffe.com> domain name be TRANSFERRED from Respondent to Complainant
Lars Karnøe Panelist
Dated: 4 March 2019
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