WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-1991

1. The Parties

The Complainant is Starbucks Corporation, United States of America, represented by Focal PLLC, United States of America (“United States”).

The Respondent is Registration Private, Domains by Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <starbucksmatch.com> (“the Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2019. On August 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 16, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 20, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 23, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2019.

The Center appointed Isabel Davies as the sole panelist in this matter on October 1, 2019. The Panel finds that it was properly constituted. 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 owns many trade mark registrations for the term “starbucks” in the United States and around the world for a wide range of goods and services, including the Unites States trade mark STARBUCKS, registered on November 26, 1985, with the registration No. 1372630.

The Complainant has been trading as Starbucks, a manufacturer of coffee and coffee related products, since 1971 and now has nearly 30,200 stores in 78 markets around the world.

The Disputed Domain Name was registered on June 6, 2019 and previously redirected to an Amazon associates affiliate link that advertises Starbucks products under the health and personal care category.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1)).

The Complainant states that it is the owner of all rights in and to the STARBUCKS trade mark in connection with a wide variety of goods and services and that it owns numerous trade mark and service mark registrations for the STARBUCKS trade mark in the United States and around the world.

The Complainant states that it has used its STARBUCKS trade mark since the opening of its first store in 1971. As it approaches its 50th year of existence, STARBUCKS has developed into a brand that is known worldwide and used in connection with a wide variety of goods and services.

It says that it has nearly 30,200 STARBUCKS stores in 78 markets around the world.

The Complainant avers that it indisputably owns the rights to the STARBUCKS trade mark, including the United States registrations for the mark and refers to CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2017-0144; and Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

The Complainant avers that the Disputed Domain Name is confusingly similar to the Complainant’s STARBUCKS mark stating that the Disputed Domain Name incorporates the STARBUCKS trade mark in its entirety. It states that the UDRP panels have routinely held that the addition of generic or descriptive terms (like, in this instance, “match”) do not sufficiently distinguish a domain name that incorporates a complainant’s mark in its entirety and refers to various cases including Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1109 (which found that the use of the common term “cigarettes” in the disputed domain name with the well-known MARLBORO trade mark did not prevent a finding of confusing similarity); and Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156 (which stated that “It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark.”).

As a result, the Complainant submits that the Disputed Domain Name is confusingly similar to the Complainant’s famous STARBUCKS trade mark and the Complainant.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2)).

The Complainant states that the Policy requires the Respondent to demonstrate one of the following circumstances to show “rights or legitimate interests” in the Disputed Domain Name:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Complainant states that none of these circumstances is present in this case.

The Complainant states that the Respondent was undoubtedly aware of the Complainant’s STARBUCKS trade mark when the Disputed Domain Name was registered. The Respondent registered the Disputed Domain Name on June 6, 2019. The Complainant has consistently used the STARBUCKS mark since it opened its first store in 1971 and now has thousands of stores worldwide. Given that long usage and the resulting fame of the STARBUCKS mark, there can be no dispute that the Respondent was well aware of the Complainant’s STARBUCKS mark when the Respondent registered the Disputed Domain Name and refers to CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2017-0144.

The proximity of the Respondent’s registration of the Disputed Domain Name to the Complainant’s launch of <starbucksmatchgame.com> is further evidence of the Respondent’s awareness of the STARBUCKS trade mark.

The Complainant states that there is no evidence to support an argument that the Respondent is commonly known by the Disputed Domain Name and that the Complainant has never licensed or otherwise authorized the Respondent’s use of its STARBUCKS mark in any domain name, much less the confusingly similar Disputed Domain Name and refers to Suncor Energy Inc. v. Whois Privacy Protection Service, Inc./andre bechamp, WIPO Case No. D2012-2123; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735.

Moreover, it states, evidence of commercial use of the Disputed Domain Name refutes any purported claim of a legitimate noncommercial or fair use. Specifically, as of July 29, 2019, the Disputed Domain Name redirects to an Amazon Associates affiliate link that advertises Starbucks products under the Health & Personal Care category. According to the Amazon Associates program, affiliates who use their link to advertise products in the Health & Personal Care category receive a percentage of qualified sales generated from the link. It also states that, even if the Respondent ends the redirect in the future, the fact remains that the Complainant has no control over how the Respondent may use the Disputed Domain Name and refers to Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564.

Finally, the Complainant states, the Respondent previously has been found to have engaged in a pattern of cybersquatting and typosquatting with respect to domain names to which the Respondent has no rights or legitimate interests and refers to Baillie Gifford & Co. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1312; and Altria Group, Inc. / Altria Group Distribution Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1127. As a result, the Respondent cannot establish any rights or legitimate interests in the Disputed Domain Name.

Finally, the Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3)).

The Complainant states that numerous factors also indicate that the Respondent registered and used the Disputed Domain Name in bad faith.

First the Complainant’s use and registration of its STARBUCKS trade mark long predates the Respondent’s registration of the Disputed Domain Name and refers to Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735. The Respondent was indisputably aware of the Complainant’s STARBUCKS mark when the Respondent registered the Disputed Domain Name, which the previous UDRP panels have held supports a finding of bad faith and refers to Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156.

Secondly, the Disputed Domain Name redirects to an Amazon affiliate link which provides the Amazon affiliate, namely the Respondent, a percentage of the income generated from sales of Starbucks products on “www.amazon.com” via the link. It states that the UDRP panels have explicitly held that, under paragraph 4(b)(iv) of the Policy, it will be evidence of bad faith registration and use by a respondent if, by using the domain name, it has intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the domain name resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolves.

Thirdly, the Complainant states that use of a proxy registration service to mask the identity of the registrant is further inferential evidence of bad faith and refers to Suncor Energy Inc. v. Whois Privacy Protection Service, Inc./ andre bechamp, WIPO Case No. D2012-2123.

Fourthly, the Complainant states, the Respondent has been found to have engaged in a pattern of cybersquatting and typosquatting and refers to Redbox Automated Retail, LLC d/b/a Redbox v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0812.

The Complainant therefore submits that there is ample evidence to demonstrate that the Respondent has registered and used the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to the trade mark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;

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

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is the owner of all rights in and to the STARBUCKS trade mark in connection with a wide variety of goods and services and that it owns numerous trade mark and service mark registrations for the STARBUCKS trade mark in the United States and around the world.

It also accepts that the Complainant has used its STARBUCKS trade mark since the opening of its first store in 1971 and that STARBUCKS has developed into a brand that is known worldwide and used in connection with a wide variety of goods and services and owns the rights to the STARBUCKS trade mark, including the United States registrations for the mark and refers to CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2017-0144; and Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

The Panel accepts that the Disputed Domain Name incorporates the STARBUCKS trade mark in its entirety and that panels have routinely held that the addition of generic or descriptive terms (like, in this instance, “match”) do not prevent a finding of confusing similarity between a domain name and a complainant’s mark, and refers to various cases including Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1109 which found that use of the common term “cigarettes” in the disputed domain name with the well-known MARLBORO trademark did not prevent a finding of confusing similarity and Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC, et al., WIPO Case No. D2017-0156 which stated that “It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark.”

The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s well known STARBUCKS trade mark.

B. Rights or Legitimate Interests

The Panel accepts that the Respondent was undoubtedly aware of the Complainant’s STARBUCKS mark when the Disputed Domain Name was registered on June 6, 2019 as the Complainant has consistently used the STARBUCKS trade mark since it opened its first store in 1971 and now has thousands of stores worldwide.

Many cases refer to situations where the panels accepted that the respondent was aware of the complainant’s mark such as in CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2017-0144 (finding that, where complainant used the CENTURYLINK mark since at least June 2009, respondent was likely aware of complainant’s mark when it registered the disputed domain names beginning in November 2009); Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671 (drawing “a strong inference that the Respondent was well aware of the Complainant and the Complainant’s TATA mark, and that the Respondent in fact registered the disputed domain name with the aim of trading on the strength and reputation of the Complainant’s mark”).

The Panel accepts that the Respondent registered the Disputed Domain Name six days after the Complainant released its “Starbucks Match Two” game available at the domain name <starbucksmatchgame.com> and the proximity of the Respondent’s registration of the Disputed Domain Name to the Complainant’s launch of the game is further evidence of the Respondent’s awareness of the STARBUCKS trade mark.

Secondly the Panel accepts that there is no evidence to support an argument that the Respondent is commonly known by the Disputed Domain Name.

Thirdly, the Panel accepts that the Complainant has never licensed or otherwise authorized the Respondent’s use of its STARBUCKS trade mark in any domain name, much less the confusingly-similar Disputed Domain Name. See, Suncor Energy Inc. v. Whois Privacy Protection Service, Inc./ andre bechamp, WIPO Case No. D2012-2123 (noting that, “in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed”); Sanofi-Aventis v. Abigail Wallace, WIPO Case No.D2009-0735 (finding that complainant had established a prima facie case that respondent did not have rights or legitimate interests “due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use [Complainant’s] trademark, or a variation thereof”).

The Panel accepts that evidence of commercial use of the Disputed Domain Name refutes any purported claim of a legitimate noncommercial or fair use of the Disputed Domain Name in that, as of July 29, 2019, the Disputed Domain Name redirects to an Amazon associates affiliate link that advertises Starbucks products under the health and personal care category. It accepts that according to the Amazon associates program, affiliates who use their link to advertise products in the health and personal care category receive a percentage of qualified sales generated from the link.

The Panel also accepts that, even if the Respondent ends the redirect in the future, the Complainant has no control over how the Respondent may use the Disputed Domain Name and refers to Conair Corp. v. Pan Pin, et al., WIPO Case No. 2014-1564 (finding that although the disputed domain name resolved to an inactive website, “the presence of the Domain Name in the hands of the Respondent represents . . . an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered at any time) and therefore a continuing abusive use”); Westdev Ltd. v. Private Data, WIPO Case No. D2007-1903 (“[T]he fact that the Domain Name . . . is out of [Complainant’s] control and in the hands of a third party . . . is itself an abusive threat hanging over the Complainant’s head and falls to be condemned under the Policy.”).

The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.3 (“[A] respondent’s use of a complainant’s mark to redirect users (e.g., to a competing site) would not support a claim to rights or legitimate interests.”).

The Panel also accepts that the Respondent previously has been found to have engaged in a pattern of cybersquatting and typosquatting with respect to the disputed domain names to which the Respondent has no rights or legitimate interests and refers to Baillie Gifford & Co. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1312 (noting that the same Respondent as in this case “has been subject to multiple findings of domain names bad faith registrations under the Policy”); Altria Group, Inc. / Altria Group Distribution Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1127 (noting that the same Respondent as in this case “has engaged in a pattern of domain name grabbing”).

As a result, the Panel finds that the Respondent cannot establish any rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts that the Complainant’s use and registration of its STARBUCKS mark long predated the Respondent’s registration of the Disputed Domain Name and refers to Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735 (finding it suggestive of bad faith that the complainant’s trade mark was registered in 2005, long before the respondent registered the disputed domain name in 2008).

The Panel accepts that the Respondent was aware of the Complainant’s STARBUCKS mark when the Respondent registered the Disputed Domain Name, which previous UDRP panels have held supports a finding of bad faith and refers to Bayerische Motoren Werke AG (“BMW”) v. Registration Private, Domains By Proxy, LLC / Armands Piebalgs, WIPO Case No. D2017-0156 (finding it “inconceivable” that the respondent selected the disputed domain names without knowledge of the complainant where they operated websites “clearly promoting a business which supplies technical information” about the complainant’s products); and CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain, WIPO Case No. D2017-0144 (finding that domain names were registered and used in bad faith based in part on finding that the respondent was likely aware of the complainant’s mark when domain names were registered).

The Panel also accepts that the Disputed Domain Name redirected to an Amazon affiliate link which provides the Respondent with a percentage of the income generated from sales of Starbucks products on “www.amazon.com” via the link.

UDRP panels have explicitly held that, under paragraph 4(b)(iv) of the Policy, it will be evidence of bad faith registration and use by a respondent if, by using the domain name, it has intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the domain name resolves, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolves. Such cases include Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657; and Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1109 (finding that the fact that the same Respondent as in this case “derives (or has the opportunity to derive) some commercial benefit from the click-through revenue generated by the website to which the Domain Name presently resolves” supported a bad faith finding).

Additionally, the Panel accepts that the Respondent registered the Disputed Domain Name just six days after the Complainant released its “Starbucks Match Two” game promotion using its domain name <starbucksmatchgame.com> and that the proximity of the Respondent’s registration of the Disputed Domain Name to the Complainant’s launch of <starbucksmatchgame.com> is further evidence of the Respondent’s bad faith use of to attract Starbucks customers looking for the “Starbucks Match Two” promotion to the Respondent’s Amazon affiliate page in order to generate income.

The Panel also accepts that the use of a proxy registration service to mask the identity of the registrant is further inferential evidence of bad faith as was the case in Suncor Energy Inc. v. Whois Privacy Protection Service, Inc. / andre bechamp, WIPO Case No. D2012-2123 (finding that “Respondent’s use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is consistent with an inference of bad faith in registering and using disputed domain names”).

Finally, in 44 prior UDRP cases, the Respondent has been found to have engaged in a pattern of cybersquatting and typosquatting in all of which the panel has ordered transfer to the complainants, for example Redbox Automated Retail, LLC d/b/a Redbox v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0812 (finding, based on prior cases naming the same Respondent as in this case, that it was “reasonable to infer that the Respondent has engaged in a pattern of cybersquatting and typosquatting”, and citing numerous cases).

Where, as here, “a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith’.” as stated in Tata Sons Limited v. TATA Telecom Inc./Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671. Moreover, even if the Respondent derived “no immediate commercial benefit, it is still taking unfair advantage of the reputation of the Complainant’s mark to divert Internet users to its website through confusion.” Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.

The Panel finds that the Respondent has registered and used the Disputed Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <starbucksmatch.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: October 8, 2019