Jalmar Carvalho Araujo v. Jeff Hernandez / Black Rock Coffee Bar
Claim Number: FA2005001895665
Complainant is Jalmar Carvalho Araujo ("Complainant"), US. Respondent is Jeff Hernandez / Black Rock Coffee Bar ("Respondent"), represented by Alexander J.A. Garcia, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <br.coffee>, registered with Google 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2020; the Forum received payment on May 11, 2020.
On May 11, 2020, Google LLC confirmed by e-mail to the Forum that the <br.coffee> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 May 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2020 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 firstname.lastname@example.org. Also on May 13, 2020, 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 June 2, 2020.
On June 10, 2020, an Additional Submission from Complainant was received. The Panel finds that such Additional Submission complies with Supplemental Rule 7 and it will be considered in the Panel's decision. On June 11, 2020, an Additional Submission from Respondent was received. The Panel finds that that Additional Submission complies with Supplemental Rule 7 and it will also be considered in the Panel's decision.
On June 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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 disputed domain name be transferred from Respondent to Complainant.
- Complainant has been engaged in the marketing and distribution of coffee products. Complainant has used the BRCOFFEE trademark in connection with its business since at least January 7, 2008, and has obtained a valid registration for that mark with the Untied States Patent and Trademark Office ("USPTO").
- The disputed domain name, <br.coffee>, is virtually identical to Complainant's BRCOFFEE mark. The lettering is exactly the same, and the only minor difference is the insertion of a period between the "br" and "coffee" elements of the mark.
- Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized Respondent to use the BRCOFFEE trademark in any manner, including use in a domain name.
- The disputed domain name was registered and is being used in bad faith. Respondent competes with Complainant in the coffee selling and distribution market, and intends to gain commercially based upon likely Internet user confusion between the disputed domain name and Complainant's trademark. As evidence of this confusion, Complainant has received misdirected emails intended for Respondent due to Respondent's illegitimate use of the disputed domain name.
- Respondent operates under the company name Black Rock Coffee Bar (through Black Rock Coffee Bar, LLC) in the coffee retail and coffee shop services business, among other products and services. It has used the BLACK ROCK COFFEE BAR trademark, which it has registered with the USPTO, from as early as 2008. Since then, Respondent has used various stylized "BR" logos (individually and collectively, "the BR logo") in connection with its services, as the letters "B" and "R" stand in for the "BLACK ROCK" portion of Respondent's trademark.
- Complainant does not have priority of trademark rights in a mark that is identical or confusingly similar to the disputed domain name. Respondent has common law rights in the BR logo, and thus there exists a trademark dispute concerning the respective common law rights of the parties, which rests outside the scope of the UDRP.
- Respondent has rights and legitimate interests in the disputed domain name. Respondent has used the BR logo in connection with goods and services since as early as February 2008. Respondent has been commonly known by the "br" element of the disputed domain name, since those letters form the initials of "Black Rock".
-Complainant offers nothing more than conclusory allegations that Respondent registered and uses the disputed domain name in bad faith. Prior to notice of this dispute, Respondent had no knowledge of Complainant. Respondent registered the disputed domain name to correspond with the BR logo. Complainant's evidence of misdirected emails does not show Respondent registered the disputed domain name with the intent to create confusion between the parties.
- Respondent requests a finding of Reverse Domain Name Hijacking ("RDNH") against Complainant. Respondent has clearly used the BR logo for twelve years, is engaged in a bona fide offering of corresponding goods and services under the disputed domain name, and did not engage in bad faith registration or use of that name.
C. Complainant Additional Submission
- Complainant has clear priority with respect to trademark rights. Whereas Complainant's trademark registration is for BRCOFFEE, Respondent's registration is for BLACK ROCK COFFEE BAR. Respondent's claim of a trademark registration based on the BR logo is disingenuous, as that logo is a small part of an overall mark that, once again, references BLACK ROCK COFFEE BAR. Moreover, the "B" in the logo is printed backwards, effectively nullifying its meaning.
- Complainant sells its products under the BRCOFFEE trademark on the Internet and through its <brcoffee.com> domain name.
- Respondent has never been known as "BR" or by the disputed domain name <br.coffee> as Respondent refers to itself, even on its own website, only as "Black Rock." The BR logo is irrelevant, especially because the logo does not contain "BR" since the "B" is printed backwards.
- Respondent's registration and use of the disputed domain name was in bad faith because Respondent neglected its obligation to search for and find Complainant's prior trademark rights in the BRCOFFEE mark. Moreover, in bad faith, Respondent failed to respond to Complainant's attempts to communicate with Respondent concerning Complainant's trademark rights and the infringing nature of the disputed domain name.
- Complainant is certainly not guilty of RDNH because Complainant has clear common law and trademark rights in BRCOFFEE that predate any use by Respondent of the BR logo.
D. Respondent Additional Submission
- Complainant's prior use of its BRCOFFEE trademark on its website does not give it common law rights in that mark superior to Respondent's common law rights in the BR logo. Respondent has used the BR logo in connection with its coffee-related goods since February 2008.
- Respondent has consistently use the BR logo as an acronym for the "Black" and "Rock" elements of its business name.
Complainant is a United States of America company that markets and distributes coffee products. It operates under the BRCOFFEE trademark, which it has registered with the USPTO (Reg. No. 3,787,253, registered May 11, 2010).
The disputed domain name, <br.coffee>, is owned by Respondent (company name, Black Rock Coffee Bar), who registered the name on April 18, 2016. Respondent operates coffee marketing and coffee shop services in connection with 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.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Respondent asserts that, due to competing trademark claims and issues, this dispute lies outside the boundaries of the UDRP for resolution. However, after a close review of the filings submitted, the Panel believes that this case is less than a complex trademark dispute, but simply represents the registration of a disputed domain name that falls comfortably within the scope for which the UDRP was intended. As a result, the Panel will proceed to make a decision under the UDRP as set forth below. See Telebrands Corp. v. Khalid, FA 467079 (Forum May 31, 2005) ("...the Panelist believes it would be unfair and costly to the parties to perceive this proceeding simply as a trademark dispute. Such a concern is not the gravamen of this proceeding. Rather, the issue is the alleged misuse of the disputed domain name. Accordingly, the Panelist will now turn to the merits.); see also Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) ("The jurisdiction of this Panel is limited to providing a remedy in cases of 'the abusive registration of domain names,' or 'Cybersquatting.'...Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it.").
Through its registration with the USPTO for the trademark BRCOFFEE, Complainant has demonstrated to the Panel that Complainant has sufficient rights in that mark to satisfy the threshold requirement under Policy paragraph 4(a)(i). See Haas Automation, Inc. v. Fraser, FA 1627211 (Forum Aug. 4, 2015) ("The Panel finds that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)."); see also Expedia, Inc. v. Emmerson, FA 873346 (Forum Feb. 9, 2007) ("Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).").
In viewing the disputed domain name <br.coffee>, the Panel finds no distinction between it and Complainant's mark. The minor deviation, the inclusion of a period between the letters "r" and "c" in the mark, is of no moment, for it is required of all domain names that a period be included at some point. Therefore, the Panel concludes that the disputed domain name is identical to Complainant's valid trademark. See Car&Boat Media v. Tmd location, D2019-0992 (WIPO July 10, 2019) (finding <mavoiture.cash> to be confusingly similar to the MAVOITURECASH trademark); see also Totaljobs Group Limited v. Faisal Khan, D2017-0295, (WIPO Apr. 7, 2017) (finding <total.jobs> to be confusingly similar to the TOTALJOBS mark).
Accordingly, the Panel finds that Complainant has successfully proved that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel has found the disputed domain name to be identical to Complainant's mark, and Complainant denies ever having authorized Respondent to make use of that mark. Consequently, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The onus in thus placed upon Respondent to supply evidence to the Panel that would rebut that case. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”); see also Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
Paragraph 4(c) lists three ways in which a respondent in a Policy proceeding may establish rights or legitimate interests in a disputed domain name, as follows:
(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 trademark or service mark at issue.
The Panel finds that subparagraph 4(c)(ii) is plainly applicable to this case. Respondent's company name is Black Rock Coffee Bar. Moreover, it has offered comprehensive evidence that it has used for years the BR logo, which contains the initials of the first two words, Black and Rock, of that company name. Thus, it is entirely believable to the Panel that, to the pertinent public, Respondent's company would be commonly known as BR Coffee, or the disputed domain name, <br.coffee>, since Respondent is in the coffee business.
Complainant counterclaims that Respondent has never been known as "BR" nor the disputed domain name. Complainant cites as evidence Internet screenshots wherein Respondent refers to itself solely as "Black Rock." However, the Panel finds Complainant's argument to be less than persuasive since it is clear that "BR" constitutes the initials of "Black Rock" and, in the experience of the Panel, many people and companies are commonly known by their initials within the relevant locale. Finally, Complainant places much emphasis on the fact that the BR logo contains a backwards "B." Again, the Panel is not much impressed with this distinction as the logo is stylized and anyone familiar with the English language would recognize the backwards B" to be an artful version of the letter "B."
Keeping in mind that Complainant bears the burden of proving that Respondent has no rights or legitimate interests in the disputed domain name, the Panel believes that Complainant's arguments do not successfully sustain that burden given that Respondent has put forth credible evidence that it could be commonly known as the disputed domain name within a certain sphere of the coffee-consuming market. See Toyota Motor Sales U.S.A. Inc. v. J. Alexis Productions, D2003-0624 (WIPO Oct. 16, 2003) ("...a Respondent need only show 'a plausible, non-infringing explanation for selecting the disputed domain name.'"). Ergo, the Panel must conclude that Respondent has established its rights and legitimate interests in the disputed domain name per Policy paragraph 4(c)(ii).
Accordingly, the Panel finds that Complainant has failed to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
Because Complainant failed to succeed with respect to the second element required under the Policy, the Panel will not consider or render a decision regarding the third, bad faith element of the Policy.
Reverse Domain Name Hijacking
Respondent has requested the Panel issue a finding of RDNH against Complainant. To do so, the Panel would have to conclude that this filing was an abusive and bad faith attempt to deprive Respondent of the disputed domain name. However, given Complainant's well-established rights in a trademark identical to the disputed domain name, the Panel declines to issue a finding of RDNH in this case.
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 <br.coffee> domain name REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: June 19, 2020
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