Discount Coffee.com Inc c/o Kirby Newbury v.
WCM Investments, Inc. c/o William McClure
Claim Number: FA0908001281715
PARTIES
Complainant is Discount Coffee.com Inc c/o
Kirby Newbury (“Complainant”), represented by Cherri
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <discount-coffee.net>,
<discountcoffee.net>, and <discountedcoffee.com>,
registered with GoDaddy.com, Inc.
PANEL
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 26, 2009; the National Arbitration Forum received a
hard copy of the Complaint on August 28, 2009.
On August 27, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <discount-coffee.net>,
<discountcoffee.net>, and <discountedcoffee.com> domain
names are registered with GoDaddy.com, Inc. and that the Respondent is the
current registrant of the names.
GoDaddy.com, Inc. has verified that Respondent is bound by the
GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 4, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 24, 2009 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@discount-coffee.net,
postmaster@discountcoffee.net, and postmaster@discountedcoffee.com by e-mail.
A timely Response was received and determined to be complete on
September 23, 2009.
On October 5, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
Preliminary Issue: Non-UDRP Legal Arguments
Complainant argues various legal
points pursuant to the Lanham Act and the Arkansas Deceptive Trade Practices
Act as they may apply to Respondent’s alleged unfair competition and deceptive
trade practices. The instant dispute is
governed by the UDRP and not the Lanham Act and the Arkansas Deceptive Trade
Practices Act. While Policy ¶ 4(k)
allows the parties to litigate these points in court, the Panel finds that
these arguments are not applicable to this arbitration proceeding within the
scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006)
(holding that assertions of trademark infringement are “entirely misplaced and
totally inappropriate for resolution” in a domain name dispute proceeding
because the UDRP Policy applies only to abusive cybersquatting and nothing
else).
PARTIES’ CONTENTIONS
A. Complainant
Through the Complainant’s long and continuous use and promotion of its
business and the Discount Coffee domain name, the DISCOUNT COFFEE trademark has
become strongly associated in the minds of on-line consumers with the company
and the products and services it offers.
The Respondent is using the domains names as landing pages to
deceptively redirect consumers away from DiscountCoffee.com to its company web
site, Coffee.org.
Respondent (as an individual, business, or other organization) is
commonly known by the domain name(s) Coffee.org, MissElliesCoffee.com, WJM.net
or ClickLeasing.com (domain holding companies); it is not known by Discount
Coffee.
Since 1998, Discount Coffee has offered the highest quality coffee and
related products and services to its clients across the
The Respondent’s use of these domain names with the “Discount Coffee”
trade name has caused confusion among consumers.
B. Respondent
Respondent operates a legitimate business selling discount coffee
online through various websites. These
sites include coffee.org and the domain names subject to this dispute.
Respondent employs 15 people in
Since December 2008, Respondent has fulfilled over 26,000 orders for
discount coffee products and accessories for over 16,000 customers in the
Respondent is not in the business of selling coffee-related domain names
to other parties.
Respondent had not heard of Complainant and was not aware of its
business until Respondent received a demand letter from Complainant’s attorney
in July 2009.
During the trademark application process, Complaint admitted that it
did not possess any exclusive rights to DISCOUNTCOFFEE.COM apart from the
graphical design it was using.
The use of generic words in a domain name is a legitimate use. The use of the words “discount” and “coffee”
in a domain name is highly descriptive and a generic use of words that any
consumer would typically use when looking to purchase coffee products at a good
price. The combination of the words in
no way uniquely identifies Complainant or is established in the minds of
consumers as being solely associated with Complainant.
The Complainant has failed to prove registration and use in bad faith
by the Respondent. The mere fact that
Respondent resells domains does not in and of itself establish any evidence
that Respondent is engaged in bad faith practices.
A Google search query “buy discount coffee online” returns 114,000,000
hits and reveals that there are numerous companies selling coffee products
online using the phrase “discount coffee.”
FINDINGS
For the reasons set forth below the Panel
finds Complainant has not proven it is entitled to the relief requested.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The United States Patent and
Trademark Office (“USPTO”) registration lists Complainant’s registered mark as
DISCOUNTCOFFEE.COM (Reg. No. 2,906,139 issued November 30, 2004). Previous panels have found that trademark
registration with the USPTO is sufficient to establish rights in a
complainant’s mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark
registration adequately demonstrates a complainant’s rights in a mark under
Policy ¶ 4(a)(i)); see also
Complainant claims Respondent’s <discount-coffee.net>, <discountcoffee.net>,
and <discountedcoffee.com> domain
names are confusingly similar to Complainant’s DISCOUNTCOFFEE.COM mark.
The disputed domain names each contain Complainant’s DISCOUNTCOFFEE.COM
mark with one or more of the following alterations: (1) the addition of a
hyphen; (2) the addition of the letters “ed” to create the past tense form of
“discount;” and/or (3) the substitution of the generic top-level domain “.net,”
for the “.com” portion of Complainant’s mark.
The Panel finds none of these alterations alone or in combination
sufficiently distinguish Respondent’s disputed domain names from Complainant’s
mark. The Panel finds the disputed
domain names are confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that
hyphens and top-level domains are irrelevant for purposes of the Policy); see
also Classic Metal Roofs, LLC
v. Interlock Indus., Ltd., FA 724554
(Nat. Arb. Forum Aug. 1, 2006) (concluding that the
<classicmetalroofing.com> domain name was confusingly similar to the
complainant’s CLASSIC METAL ROOFS mark because changing the final term of the
mark from “roofs” to “roofing” was a minor alteration and did not sufficiently
distinguish the domain name from the mark);
see also Jerry Damson, Inc. v. Tex. Int’l
Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere
addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.”).
While
Respondent contends that the <discount-coffee.net>, <discountcoffee.net>,
and <discountedcoffee.com> domain
names are comprised of common and descriptive terms and as such c
The
Complainant has proven this element.
The Panel finds that Complainant has not established
a prima facie case in support of its arguments that Respondent lacks
rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum
Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its
burden and as a result found that the respondent had rights and legitimate
interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v.
Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the
respondent overcame the complainant’s burden by showing it was making a bona
fide offering of goods or services at the disputed domain name).
Respondent alleges it
is operating a legitimate business and was engaged in a bona fide offering of goods prior to receiving notice from
Complainant of this proceeding.
Respondent contends its business is selling coffee products and
accessories online at a discount.
Respondent asserts it both retains fifteen employees and operates a
separate warehouse for use in connection with Respondent’s business of selling
coffee products. Respondent claims it
has fulfilled 26,000 orders for coffee products and accessories through its
coffee websites. The Panel finds
Respondent’s use of the <discount-coffee.net>, <discountcoffee.net>,
and <discountedcoffee.com> domain
names constitutes a bona fide offering
of goods under Policy ¶ 4(c)(i). See
Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum
Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com>
domain name to provide information on its demapathology services was a bona
fide offering of goods or services under Policy ¶ 4(c)(i) despite the
complainant’s registration of the SKIN DEEP mark with the USPTO and use of the
mark in connection with similar services); see also Workshop Way, Inc. v.
Harnage, FA
739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the
complainant’s burden by showing it was making a bona fide offering of
goods or services at the disputed domain name).
Respondent
also argues that the terms of the <discount-coffee.net>, <discountcoffee.net>,
and <discountedcoffee.com> domain
names are common and
descriptive, and therefore, Complainant
does not have an exclusive monopoly on the terms on the Internet. Respondent further alleges Complainant has
expressly admitted it did not possess exclusive rights in the
DISCOUNTCOFFEE.COM mark. Respondent
provides examples of other domain names that have also combined the two terms
“discount” and “coffee.” The Panel finds
that Respondent can establish rights or legitimate interests in the disputed
domain names pursuant to Policy ¶ 4(a)(ii).
See Kaleidoscope
Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004)
(finding that the respondent was using the <kaleidoscope.com> domain name
for a bona fide offering of goods or services because the term was “generic”
and respondent was using the disputed domain name as a search tool for Internet
users interested in kaleidoscopes); see
also Qwest
Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s
rights in the QWEST mark are limited to its application to the
tele-communications industry,” where a variety of other businesses used the
mark in unrelated fields).
Complainant
has not proven this element.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since the Panel found that
Respondent has rights or legitimate interests in the <discount-coffee.net>, <discountcoffee.net>,
and <discountedcoffee.com> domain
names pursuant to Policy ¶ 4(a)(ii), the Panel also finds that
Respondent did not register or use the disputed domain names in bad faith
pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom
Cycle, D2004-0824 (WIPO Jan. 18,
2005) (finding that the issue of bad faith registration and use was moot once
the panel found the respondent had rights or legitimate interests in the
disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track,
FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has
rights and legitimate interests in the disputed domain name, his registration is
not in bad faith.”).
Respondent argues the <discount-coffee.net>, <discountcoffee.net>,
and <discountedcoffee.com> domain
names were not acquired for the primary purpose of selling, renting, or
otherwise transferring them to Complainant.
Respondent alleges it has made no offers or attempts to transfer the
disputed domain names to Complainant.
Respondent claims it is using the disputed domain names for legitimate
interests and has no interest in selling the disputed domain names. The Panel finds Respondent has not registered
the disputed domain names for the purpose of offering them for sale, and the
Panel finds Respondent has not registered and used the disputed domain names in
bad faith under Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15,
2000) (finding that considering or offering to sell a domain name is
insufficient to amount to bad faith under the Policy; the domain name must be
registered primarily for the purpose
of selling it to the owner of a trademark for an amount in excess of
out-of-pocket expenses); see also PRIMEDIA Special Interest Publ’ns Inc. v. Treadway, D2000-0752
(WIPO Aug. 21, 2000) (finding that the respondent did not register the domain
names in bad faith where there is no evidence that the respondent intended to
sell the domain names and actually refused several offers from third parties).
Respondent contends it has not
registered the <discount-coffee.net>, <discountcoffee.net>,
and <discountedcoffee.com> domain
names for the purpose of disrupting Complainant’s competing coffee product
business. Respondent claims the disputed
domain names were acquired solely for the purpose of operating Respondent’s
business. Respondent provides its business is selling
coffee products and accessories online at a discount. Respondent argues its 26,000 fulfilled orders
for coffee products and accessories prove that Respondent is attempting to
operate a legitimate business and not simply attempting to disrupt Complainant’s
business. The Panel finds Respondent has
not disrupted Complainant’s business through Respondent’s use of the disputed
domain names, and the Panel does not find bad faith registration and use under
Policy ¶ 4(b)(iii). See Successful Money
Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar.
7, 2001) (finding the domain name <seminarsuccess.com> to be generic and
that the respondent registered and used the domain name in good faith “because
Respondent selected the name in good faith for its web site, and was offering
services under the domain name prior to the initiation of the dispute”); see also Election Systems & Software, Inc. v.
Stewart, FA 805224 (Nat.
Arb. Forum Nov. 14, 2006) (Where the respondent registered the disputed
domain name to reflect one of the products
available from Respondent, the panel did not find bad faith pursuant to Policy
¶ 4(b)(iii)).
Respondent alleges the disputed domain names are not
being used to create a likelihood of confusion with the Complainant’s trademark
as to the source, sponsorship, affiliation, or endorsement of Respondent’s
website. Respondent contends it is not
attempting to be associated with Complainant, and is actually attempting to
avoid association because Respondent is attempting to build its own brand and
identity. The Panel finds Respondent’s
use of the disputed domain names does not constitute bad faith registration and
use under Policy ¶ 4(b)(iv). See DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov.
1, 2000) (finding the respondent has shown that it has a legitimate interest in
the domain name because the respondent selected the name in good faith for its
website, and was offering services under the domain name prior to the
initiation of the dispute); see also Accu-Find Internet
Servs. v. AccuFind, FA 94831
(Nat. Arb. Forum June 19, 2000) (denying the complainant’s request because the
complainant’s allegations that the respondent registered the disputed domain
name to divert Internet users from the complainant’s business were not
sufficiently substantiated under Policy ¶ 4(a)(iii)).
Respondent contends that the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names are comprised entirely of common terms that have many meanings apart from use in Complainant’s DISCOUNT COFFEE mark. Moreover, Respondent contends that the registration and use of domain names comprising such common terms is not necessarily done in bad faith. The Panel finds that Respondent did not register or use the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Complainant has not proven this element.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <discount-coffee.net>, <discountcoffee.net>, and <discountedcoffee.com> domain names
remain with Respondent.
Honorable Karl V. Fink
(Ret.), Panelist
October 21, 2009
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