WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Keurig Green Mountain, Inc. v. Super Privacy Service LTD c/o Dynadot / Cola Sich / Hatten Bach / Douglas Hall

Case No. D2021-3625

1. The Parties

Complainant is Keurig Green Mountain, Inc., United States of America (“United States”), represented by Schwegman Lundberg & Woessner, P.A., United States.

Respondent is Super Privacy Service LTD c/o Dynadot / Cola Sich / Hatten Bach / Douglas Hall, United States.

2. The Domain Names and Registrar

The disputed domain names <k-cupcoffee.online>, <kcupcoffee.shop>, <keurig-coffee.fit>, <keurigcoffee.one>, <keurig-machine.store>, and <keurigsale.store> are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 3, 2021 providing the registrants and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 8, 2021.

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 Respondent of the Complaint, and the proceedings commenced on November 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 14, 2021.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on January 10, 2022. 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

Complainant is Keurig Green Mountain, Inc. (“Keurig”), an American beverage and beverage-maker conglomerate with headquarters in Burlington, Massachusetts. Keurig is a subsidiary of Keurig Dr. Pepper, Inc., one of the largest food and beverage companies in the world. Keurig was originally founded in 1992 as a purveyor of single-servings pods of coffee and compatible brewing machines. The name “Keurig” was derived from the Dutch word for “excellence”. Keurig was acquired by Green Mountain Coffee Roasters in 2006. In 2014, Green Mountain Coffee Roasters changed its name to Keurig Green Mountain, Inc. to reflect the significance of Keurig products to its business. Keurig Green Mountain, Inc. merged with Dr. Pepper Snapple Group in 2018 to become Keurig Dr. Pepper, Inc.

Complainant owns the KEURIG mark which was first adopted and first used in 1994 and registered as far back as April 29, 1997 for “coffee brewing machines for domestic and commercial use” and the K-CUP mark which was first adopted and first used in 1999 and registered as far back as February 27, 2001 for “Plastic cartridges each containing coffee and a filter, for use in coffee brewing machines.” Sample trademark registrations for Complainant (together, the “Keurig Marks”) include:

- KEURIG, United States Registration No. 2,057,361, registered on April 29, 1997; and
- K-CUP, United States Registration No. 2,431,816, registered on February 27, 2001.

Complainant operates its primary website at the domain name <keurig.com> which was registered on August 21, 1996.

The disputed domain names were each registered in August 2021. Each of the disputed domain names resolves to a site that offers for sale coffee-related products and includes a similar banner layout at the bottom of the page which includes a “Navigate” heading, the four options of “About Us”, “Contact Us”, “Shipping Policy”, and “Privacy Policy”, and a “CASH ON DELIVERY” image. The “Contact Us” page of each of the disputed domain names follows an identical format with similar content, all of which appears to belong to an individual, rather than a business. The email address appears to be a personal email, and the listed addresses appear to be residential, including an apartment number.

5. Parties’ Contentions

A. Complainant

According to Complainant, the disputed domain names are identical or confusingly similar to Complainant’s Keurig Marks in which Complainant has rights as demonstrated through its cited registrations and widespread use. Complainant states that it has expended significant time, money, and effort to establish substantial customer recognition of the Keurig Marks as identifying Complainant as the source of its beverages, machines, and related products and services. As a result, Complainant asserts that it has built up and now owns valuable goodwill in its Keurig Marks. Complainant claims that the Keurig Marks have been used extensively and continuously in connection with identifying Complainant’s goods and services, in the advertising and promotion of Complainant’s goods and services, and in other ways customary in the trade, to promote its goods and services throughout the United States and internationally. Complainant argues that, as a result of such advertising, promotion and widespread use, the consuming public recognizes the Keurig Marks and associates these marks with Complainant and its goods.

Complainant also claims to have developed a significant presence on the Internet, particularly through its primary website, operated at the <keurig.com> domain name.

Complainant states that all of the disputed domain names were registered in August 2021, more than 26 years after Complainant’s first use of the trademark KEURIG, more than 24 years after Complainant’s first trademark registration for KEURIG, more than 21 years after Complainant’s first use of the trademark K‑CUP, more than 20 years after Complainant’s first trademark registration for K-CUP, and more than 24 years after Complainant registered its similar domain name <keurig.com>. Complainant further states that each of the disputed domain names currently resolves to a page that displays coffee and/or sells coffee-related products.

Complainant argues that each of the disputed domain names is confusingly similar to the Keurig Marks in which the Complainant has rights. Particularly, the Complainant has used and registered the mark KEURIG for coffee, coffee machines, online retail store services, and related products for decades before the registration of the disputed domain names <keurig-coffee.fit>, <keurigcoffee.one>, <keurigsale.store>, and <keurig-machine.store>, which incorporate the mark KEURIG in its entirety. Complainant has also used and registered K-CUP for coffee, coffee pods, and coffee brewers for decades before the registration of the disputed domain names <kcupcoffee.shop> and <k-cupcoffee.online>, which incorporate the mark K-CUP. Complainant argues that the use of “coffee”, “sale”, or “machine” in the disputed domain names is clearly insufficient to distinguish or differentiate each of the disputed domain names from Complainant’s Keurig Marks given that the Keurig Marks are associated with the sale of coffee and coffee machines. As such, Complainant further argues that adding “coffee”, “sale”, or “machine” will likely confuse consumers more into thinking the disputed domain names are associated with Complainant and Complainant’s goods and services.

Complainant argues that, as a result, when each of the disputed domain names is used, there is a strong likelihood that confusion will result. Complainant asserts that the public is likely to believe that there is some connection, sponsorship, affiliation, or association between the disputed domain names and Complainant and its well-known marks.

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant states that Respondent is not and has never been commonly known, either as a business, an individual, or an organization, by any of the disputed domain names. The “Contact Us” page of the disputed domain name <keurig-coffee.fit> includes stolen contact information, suggesting that Respondent is not operating a legitimate business at the disputed domain name. There is no evidence of Respondent’s use of, or preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, as Respondent has intentionally concealed its identify by using fraudulent contact information. Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Complainant has given Respondent no authorization or license to use its registered or common law marks, and there exists no connection between the Parties.

Complainant argues that the disputed domain names were registered and are being used in bad faith. Complainant reiterates that the disputed domain names were registered in August 2021, more than 24 years after Complainant first adopted and used its well-known Keurig Marks and more than 24 years after Complainant registered its domain name <keurig.com>. Complainant argues that, by registering and using disputed domain names which use Complainant’s Keurig Marks and offer for sale similar goods to Complainant, Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. As additional evidence of bad faith, the “Contact Us” page at the disputed domain name <keurig-coffee.fit> allegedly includes stolen contact information. Complainant’s representative sent a letter to the contact information listed on the “Contact Us” page and the top of the landing page at “www.keurig-coffee.fit” and received a response from the listed email address stating that the owner of the email address was unaffiliated with the site. Complainant argues that use of false contact information (particularly stolen contact information), that does not allow consumers to contact Respondent, suggests that Respondent’s business at the disputed domain name <keurig-coffee.fit> is fraudulent, and that Respondent is intentionally using Complainant’s Keurig Marks and offering to sell goods similar to Complainant for the express purpose of directing confused consumers to its website to perpetrate fraud. Complainant concludes that Respondent’s intentional use of the disputed domain names to create a likelihood of confusion with Complainant’s Keurig Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s products, and to commit fraud, shows bad faith on the part of Respondent.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Consolidation of Multiple Registrants

Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. Where a complaint is filed against multiple resgistrants, UDRP panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

The Complainant has submitted a consolidation request in the Complaint, including the following main reasons that the disputed domain names have the same month and year of registration, the same Registrar, the same nameserver, similar naming convention, similar oddities in registrant contact information, and overlapping content and layout, including what appears to be identical content for at least the “About Us”, “Shipping”, and “Privacy Policy” pages of each of the disputed domains names.

In the circumstances of this case, the Panel finds that the disputed domain names are believed to be under common control and may be treated as such, and the consolidation would be fair and equitable to both Parties.

6.2. Substantive Issues

Under paragraphs 5(f) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview 3.0. Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns several registrations in the United States for the KEURIG and K-CUP trademarks as referenced above. Therefore, Complainant has established that it has rights in the Keurig Marks.

The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.

Here, the disputed domain names fully incorporate the KEURIG and K-CUP trademarks in their entirety, with the addition of other terms (such as “coffee”, “machine” or “sale”). Previous UDRP panels have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element because the Complainant’s KEURIG and K-CUP trademarks are clearly recognizable in the disputed domain names. See WIPO Overview 3.0, section 1.8.

The Panel finds that the disputed domain names are confusingly similar to the trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain names. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with relevant evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has failed to come forward with any evidence showing rights or legitimate interests. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not an assignee or licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain names and that there is no evidence that Respondent has established trademark rights in the disputed domain names. Respondent is using the disputed domain names to engage in commercial activity, purportedly to sell coffee machines, which do not appear to be Complainant’s machines, and other coffee-related products. The disputed domain name <keurig-coffee.fit> also resolves to a site that contains contact information that appears to belong to an unaffiliated private individual, indicating misrepresentation of identity or otherwise possible fraudulent activity. Previous UDRP panels have categorically held that the use of a domain name for illegal activity (impersonation/passing off, or other types of fraud) never confers rights or legitimate interests on a respondent. See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.

Therefore, this Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names within the meaning of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Bad faith under the third element is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(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 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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location.

Here, Respondent’s actions align with paragraph 4(b)(iv) of the Policy. The disputed domain names contain the identical terms of the KEURIG and K-CUP marks, with the addition of other terms indicating goods and services with which Complainant is engaged, and resolve to websites advertising the sale of coffee machines and other coffee-related products. Due to the global nature of the Keurig Marks and widespread sale of its coffee and coffee machine products, Respondent likely was aware of Complainant and the famous Keurig Marks when it registered the disputed domain names. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

This Panel therefore finds that Respondent acted in bad faith by its registration and use of the disputed domain names, intentionally creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the websites associated with the disputed domain names with the purpose of attracting Internet users to the websites for commercial gain as per paragraph 4(b)(iv) of the Policy.

Therefore, the Panel concludes that Respondent has registered and used the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

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 names <k-cupcoffee.online>, <kcupcoffee.shop>, <keurig-coffee.fit>, <keurigcoffee.one>, <keurig-machine.store>, and <keurigsale.store> be transferred to the Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: January 24, 2022