Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Starbucks Corporation, Starbucks U.S. Brands LLC v. gratefulnet.com

Case No. D2006-1649

 

1. The Parties

The Complainants are Starbucks Corporation, Seattle, Washington, United States of America, and Starbucks U.S. Brands LLC, Minden, Nevada, United States of America, represented by Fulbright & Jaworski, LLP, United States of America.

The Respondent is gratefulnet.com, Longmeadow, Massachusetts, United States of America.

 

2. The Domain Names and Registrar

There are seven disputed Domain Names in this proceeding:

<starbuckscommunications.com>

<starbucksentertainment.com>

<starbucksinternetcafe.com>

<starbucksinternet.com>

<starbuckslive.com>

<starbucksmerchandise.com>

<starbucksprices.com>.

Each of the Domain Names is registered with Intercosmos Media Group d/b/a directNIC.com (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2006. On December 28, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 28, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact (all listed as William Young at the same address as the Respondent). In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on January 12, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2007.

The Center appointed W. Scott Blackmer, M. Scott Donahey, and Angela Fox as panelists in this matter on March 7, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant Starbucks Corporation (“Starbucks”) is a Washington corporation headquartered in Seattle. Starbucks, founded in 1971, is a publicly traded company listed on the NASDAQ stock exchange. The company describes itself as “the leading retailer, roaster, and brand of specialty coffee in the world.” Starbucks operates or licenses some 8800 retail locations in the United States of America and Canada, including every state of the United States, and 3600 locations in 27 other countries. The company also sells coffees, teas, and other STARBUCKS-branded products through supermarkets and other retail distribution channels, including “Starbucks Kiosks” at 295 airports in the United States of America and Canada, 657 Barnes & Noble bookstore cafes, Sheraton and Westin hotels, United Airlines, and a variety of cinemas and sports and entertainment venues. Starbucks reported net revenues in fiscal year 2006 of USD 7.6 billion.

The STARBUCKS brand has been featured in numerous national media reports (samples were furnished with the Complaint), in addition to extensive national advertising campaigns in the United States of America and other countries. Starbucks has operated several websites, including its main website at “www.starbucks.com,” since 1993. According to the Complainants, that website alone receives more than two million visits monthly.

Brandchannel listed STARBUCKS as one of the ten best recognized brands in the world in 2002, and Business Week has listed STARBUCKS among the top 100 most valuable global brands for the past five years.

The Complainant Starbucks U.S. Brands LLC (“Starbucks LLC”) is a Nevada Limited Liability Company that is wholly owned by the Complainant Starbucks. Starbucks LLC (formerly Starbucks U.S. Brands Corporation) owns and manages the United States trademarks associated with the STARBUCKS brand and licenses them to the Complainant Starbucks for use in its business.

In addition to trademark registrations in other countries, the Complainant Starbucks LLC owns numerous United States trademarks. These include the following standard-character trademarks in several different classes of goods and services (collectively, the “STARBUCKS mark”):

Trademark	U.S. Reg. No.	Reg. Date	First Use in Commerce
STARBUCKS	1372630	Nov. 26, 1985	Nov. 1, 1983
STARBUCKS	1452359	Aug. 11, 1987	Mar. 29, 1971
STARBUCKS	2086615	Aug. 5, 1997	Jul. 31, 1995
STARBUCKS	2176977	Jul. 28, 1998	Nov. 1, 1995
STARBUCKS	2178663	Aug. 4, 1998	May 20, 1997
STARBUCKS	2696594	Mar. 11, 2003	Oct. 23, 1987
STARBUCKS	3027528	Dec. 13, 2005	Jul. 23, 2001

Thus, the Complainants’ registered STARBUCKS mark has been in use since 1971 and registered since 1985. The uncontested evidence in this record indicates that STARBUCKS is a famous mark in the United States, where the Respondent is located, and that it achieved widespread recognition before the various Domain Names were registered in the period 2001-2005.

The Respondent gratefulnet.com, the name given as the registrant for all of the Domain Names, appears to be an alias rather than a legal entity. The online database of the Massachusetts Corporations Division does not list a registered business entity by the name of “gratefulnet.com” or “gratefulnet” in Massachusetts, nor does it list these names as trademarks registered in Massachusetts. The names similarly do not appear in the online database of the United States Patent and Trademark Office.

The name “gratefulnet.com” is most likely an alias, alter ego, or unregistered trade name used by William Young. Young is the person listed as the administrative, technical, and billing contact for each of the Domain Names, at the same postal address in Longmeadow, Massachusetts that is shown as the Respondent’s address. Although the Respondent did not submit a response in this proceeding, William Young has corresponded with the Complainants’ counsel, as discussed below. The name of the Respondent corresponds to the domain name <gratefulnet.com>, which resolves only to a GoDaddy domain parking website with sponsored advertising links. GoDaddy’s WHOIS database lists William Young (with a different street address in Longmeadow, Massachusetts) as the registrant of the domain name <gratefulnet.com>. Therefore, for purposes of this proceeding, the Panel will presume that William Young is likely the real party in interest, and responsible for registering the Domain Names in the name of gratefulnet.com.

The Respondent gratefulnet.com is listed as the registrant of over 100 domain names, some of them also showing “William Young” in the “registrant name” data field, as revealed by the results of an October 30, 2006 Reverse Whois search conducted by MarkMonitor and furnished by the Complainants. Those search results also suggest that several of the domain names registered in the name of the Respondent (in addition to the seven Domain Names at issue in this proceeding) incorporate third-party trademarks. Examples include the following:

<koolaidcubes.com>

<homedepotgames.com>

<homedepotchallenge.com>

<lowesgames.com>

<loweschallenge.com>

<lowesnews.com>.

The Respondent registered the Domain Names at issue in this proceeding on the following dates:

<starbuckscommunications.com> Mar. 21, 2001

<starbucksentertainment.com> May 15, 2004

<starbucksinternetcafe.com> Mar. 21, 2001

<starbucksinternet.com> Mar. 21, 2001

<starbuckslive.com> Mar. 21, 2001

<starbucksmerchandise.com> Nov. 2, 2003

<starbucksprices.com> Apr. 2, 2005.

The Domain Name <starbuckscommunications.com> does not currently resolve to a website. However, the Internet Archive (www.web.archive.org) indicates that at some times in 2004 the Domain Name resolved to an “Andale Stores” website selling a variety of consumer products and displaying links to other websites including “www.gratefulbeads.com,” “www.gratefulhats.com,” “www.gratefulmusic.com,” “www.gratefulpolitics.com,” www.gratefulshirts.com,” and “www.gratefulstickers.com.” Some of these domain names no longer resolve to a website, while others redirect to an “Andale Stores” page at the website “www.andale.com.” The prevalence of links to websites with “grateful” in the domain name suggests a connection with the Respondent gratefulnet.com, which is indeed listed as the registrant of numerous “grateful” domain names, as reflected in the Complainants’ ReverseWhois search.

The Domain Names <starbucksentertainment.com> and <starbucksprices.com> currently resolve to a directNIC domain parking website displaying links to a wide variety of retailers and information providers. These include links to the Complainant Starbucks’ website at “www.starbucksstore.com” and to websites of third parties reselling STARBUCKS products, such as “www.shop.com.”

The Domain Names <starbucksinternetcafe.com>, <starbucksinternet.com>, and <starbuckslive.com> currently resolve only to a search engine entry page at “www.searchnut.com.” A notice on the page indicates that it is a “parked page” provided by directNIC. However, the Internet Archive (www.web.archive.org) indicates that at some times in 2004 these Domain Names resolved to the “Andale Stores” website described above.

The Domain Name <starbucksmerchandise.com> currently redirects to a page at “www.andale.com” advertising a commercial service that assists individuals and businesses in selling items on the eBay auction website.

Thus, all of the Domain Names have at some point been used for commercial purposes, apparently advertising the products and services of third parties.

On November 1, 2006, counsel for the Complainant Starbucks sent the Respondent a cease-and-desist letter demanding transfer of the Domain Names. William Young responded by email on November 2, 2006, acknowledging Starbucks’ “concern and the effort put forth by Starbucks.” Young went on as follows:

“I have held these names for between 2-5 years and had planned to approach Starbucks with a complete package of development. I certainly will transfer the names if Starbucks were willing to talk with me about my ideas for development of said names. I will also expect reimbursement of my costs of holding said names. Just a fair reimbursement. Not an exaggerated value. I estimate my total cost over the years at $700.”

On November 10, 2006, counsel for Starbucks sent Young an email saying that counsel “cannot guarantee that Starbucks will talk to you about a business relationship” and rejecting Young’s request for reimbursement. The next day, Young replied with an email saying that he would respond to Starbucks’ demands within 30 days. Counsel for Starbucks objected to this delay in an email dated November 13, 2006 and made further, apparently unsuccessful, attempts to contact Young by telephone and email, as reflected in an email dated November 21, 2006. This proceeding followed.

 

5. Parties’ Contentions

A. Complainants

The Complainants contend that the Domain Names are confusingly similar to their STARBUCKS mark, and that there is no evidence that the Respondent has rights or legitimate interests in using that mark in the Domain Names. To the contrary, the Complainants argue, the Respondent’s stated reason for registering the Domain Names was to present ideas to the Complainant Starbucks for the “development of said names.”

The Complainants argue that this intention, coupled with the Respondent’s “passive holding” of the Domain Names in the interim, amounts to bad-faith registration and use of Domain Names that are likely to mislead Internet users attracted by the famous Starbucks mark.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainants must demonstrate each of the following:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

As in other cases where a respondent fails to reply, the Panel must still satisfy itself that the Complainant in this proceeding has met its overall burden of proof under paragraph 4 of the Policy. Thus, the uncontested facts must provide a sufficient prima facie basis for finding identity or confusing similarity with the Complainant’s mark and then for inferring that, more probably than not, the Respondent has no right or legitimate interest in the Domain Names and has registered and used them in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

A. Multiple Complainants

Neither the Policy nor the Rules expressly contemplates multiple complainants, and some panels have rejected complaints filed in the name of more than one complainant on the ground that they have not sufficiently identified their respective ownership rights and requested remedies. See, e.g., Ken Done, Ken Done & Associates Pty Limited, and Ken Done Down Under Pty Limited v. Ted Gibson, eResolution Case No. AF-0638. In other cases, panels have accepted complaints by multiple complainants based on agency, licensing, or affiliate relationships. See, e.g., Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. NYIM SkyLabs Corporation and DL Enterprises NYIM, WIPO Case No. D2004-0220.

A Policy proceeding must be predicated on a trademark or service mark in which a complainant has rights pursuant to paragraph 4(a)(i) of the Policy. The Complainant Starbucks LLC owns the trademarks that underlie the Complaint, and it licenses them to the Complainant Starbucks, which uses them pervasively in its business. Thus, both Complainants have a legal interest in the marks at issue in this proceeding. Allowing both to appear as Complainants is unlikely to result in prejudice to the Respondent. Therefore, the Panel accepts the Amended Complaint as submitted. However, any order directed to the Registrar will, in the interest of avoiding confusion, refer only to the Complainant Starbucks LLC, the owner of the United States trademark registrations for the STARBUCKS marks.

B. Identical or Confusingly Similar

Each of the Domain Names begins with the Complainants’ registered STARBUCKS mark in its entirety. The Complainants assert that they have not authorized the Respondent to use this mark, and the Respondent did not claim otherwise in replying to the Complainant Starbucks’ cease-and-desist letter.

An English word or words follows the STARBUCKS mark in each of the Domain Names. The addition of generic or descriptive words to a distinctive mark does not avoid confusion, and the addition of apparently relevant words may actually reinforce rather than lessen the confusing similarity. See, e.g., Lilly ICOS LLC v. Cialis Pillz, WIPO Case No. D2005-0063, and cases cited therein; 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §23:50 (4^th ed. 2006) (in United States trademark law, the user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-descriptive matter to it”). An Internet user might well believe that the STARBUCKS mark followed in a Domain Name by the words “prices,” “communications,” “internet,” “internetcafe,” or “merchandise” would lead to a Starbucks website. The Domain Names including the words “entertainment” and “live” appear to refer to some form of entertainment rather than to Starbucks products or a Starbucks online presence. But this does not effectively avoid confusion with the STARBUCKS mark, which is the leading and distinctive element of each Domain Name, especially given the fact that Starbucks does operate or franchise hundreds of cafes and kiosks in cinemas, sports arenas, and entertainment venues.

Thus, the Panel finds that the Domain Name is confusingly similar to the Complainants’ STARBUCKS trademark, satisfying the first requirement of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(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.”

There is no evidence in the record of this proceeding that William Young or gratefulnet.com have been known by a name corresponding to any of the Domain Names, nor that William Young or gratefulnet.com have made any legitimate noncommercial or fair use of the Domain Names. Rather, the Domain Names have each been used, at one time or another, simply to redirect Internet users to a commercial website selling goods and services at “www.andale.com” or to a domain parking website displaying an even wider variety of third-party advertising links.

In replying to the Complainant’s cease-and-desist letter and subsequent emails, William Young did not claim to use or plan to use a name corresponding to any of the Domain Names in connection with his own offering of goods or services. Instead, he said that he “had planned to approach Starbucks with a complete package of development” for the Domain Names, presumably in connection with the Complainants’ own business. This does not amount to a “legitimate interest” in the Domain Names under paragraph 4(c) of the Policy. There was no agreement authorizing the Respondent to use the STARBUCKS trademark for such a purpose, and the Complainants did not request a “package of development” from the Respondent. Registering Domain Names incorporating the Complainants’ mark in the hope of extorting such an agreement from the Complainants certainly could not be considered a bona fide offering of goods or services.

In the years that passed between the registration of the Domain Names and the Complainant Starbucks’ cease-and-desist letter, the Domain Names were employed, at least sporadically, to present third-party advertising. Particularly where the Domain Names are all confusingly similar to the Complainants’ famous STARBUCKS mark, such advertising cannot be deemed use in connection with a bona fide offering of goods or services by the Respondent. See, e.g., Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services”).

The Panel concludes that the Complainants have established the second element of the Policy with respect to each of the Domain Names.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that indicate bad faith. Three of these are potentially relevant in the current proceeding:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or . . .

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

In his November 2, 2006 email, William Young made the requested transfer of the Domain Names expressly contingent on negotiating a business arrangement with the Complainant Starbucks: “I certainly will transfer the names if Starbucks were willing to talk with me about my ideas for development of said names.” He also asked for USD 700 as reimbursement for costs, without documenting those costs. The Panel finds that Young’s demand for some form of business arrangement with Starbucks in addition to the reimbursement of costs represents an effort to obtain “valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the domain name.” Moreover, the conclusion that this was the “primary” purpose for registering the Domain Names is warranted because of Young’s own statement, in the November 2, 2006 email, that he had “planned to approach Starbucks with a complete package of development.” This purpose reflects bad faith as described in the paragraph 4(b)(i) of the Policy.

The Complainants also cite paragraph 4(b)(ii) of the Policy, referring to the results of the Reverse WhoIs search to demonstrate that the Respondent has engaged in a pattern of registering domain names that incorporate the trademarks of others. While this appears to be true, it does not necessarily prove that the Respondent registered the Domain Names to prevent the Complainants from using the STARBUCKS mark in a corresponding domain name. The Complainant Starbucks operates a website at “www.starbucks.com,” while the Respondents’ Domain Names are complicated by adding other words to the STARBUCKS mark. To the extent that the Respondent registered the Domain Names to create leverage in negotiating a business deal with the Complainant Starbucks, that purpose more closely fits the circumstances described in paragraph 4(b)(i) of the Policy, as discussed above.

Paragraph 4(b)(iv) of the Policy is also pertinent to the facts of this proceeding, because the Domain Names, incorporating the famous STARBUCKS mark, have been used to present third-party commercial advertising. Based on the undisputed evidence in the record, the Panel finds that the STARBUCKS mark was famous by the time the Domain Names were registered. Moreover, William Young acknowledged his awareness of the mark by saying, in response to the cease-and-desist letter, that he held the Domain Names precisely in order to “approach Starbucks with a complete package of development.” In the interim, each of the Domain Names pointed, at least at times, to a commercial website or to domain parking pages with advertising links. The Respondent has acted similarly with domain names based on other famous trademarks. In these circumstances, it is fair to infer an intent to capitalize on the fame of the Complainants’ mark in making such commercial use of the Domain Names, both before and after Young attempted to realize his avowed purpose of persuading the Complainant Starbucks to discuss a “package of development.”

In addition, as the Complainants observe, the list of instances of bad faith in paragraph 4(b) of the Policy is expressly nonexclusive. The Respondent’s use of some of the Domain Names has been minimal to date, but WIPO UDRP panels have often found bad faith in “passive holding” cases where there was no evidence that a disputed domain name had yet been used for a respondent’s commercial gain. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Here, as in Telstra, the Complainants’ mark is distinctive, famous, and long-established. The Respondent has not come forward with a legitimate reason for registering the Domain Names, and, as in Telstra, it is difficult to conceive of a good-faith reason to select the Domain Names, precisely because of the fame and distinctiveness of the mark.

The Panel concludes that registering the Domain Names for the avowed purpose of negotiating a “package of development” with the Complainant Starbucks, and using the Domain Names in the interim to divert Internet users to websites with third-party advertising links, constitute bad-faith registration and use under paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <starbuckscommunications.com>, <starbucksentertainment.com>, <starbucksinternetcafe.com>, <starbucksinternet.com>, <starbuckslive.com>, <starbucksmerchandise.com>, and <starbucksprices.com> be transferred to the Complainant Starbucks U.S. Brands LLC.

W. Scott Blackmer Presiding Panelist
M. Scott Donahey Panelist	Angela Fox Panelist

Dated: March 21, 2007