Starbucks Corporation d/b/a Starbucks Coffee Company v. JAMES VIDES
Claim Number: FA1402001542702
Complainant is Starbucks Corporation d/b/a Starbucks Coffee Company (“Complainant”), represented by Anessa Owen Kramer of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is JAMES VIDES (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myfreestarbucks.com>, registered with eNom, Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 7, 2014; the National Arbitration Forum received payment on February 7, 2014.
On February 7, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <myfreestarbucks.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@myfreestarbucks.com. Also on February 7, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
i. Complainant owns the STARBUCKS mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,444,549, registered June 23, 1987).
ii. Complainant uses the mark to operate retail coffee houses and cafes, as well as to sell coffee, tea, confectioneries, beverages, and other products in retail and grocery stores.
iii. Complainant has made substantial effort to promote and advertise the STARBUCKS mark such that it has gained significant recognition and goodwill.
iv. Complainant operates more than 17,000 stores throughout the world. Complainant’s primary website is <starbucks.com>.
i. Policy ¶ 4(a)(i)
1. The <myfreestarbucks.com> domain name is confusingly similar to the STARBUCKS mark as the domain name incorporates the mark in full, and adds the descriptive terms “my” and “free”.
ii. Policy ¶ 4(a)(ii)
1. Respondent is not authorized, licensed, or sponsored by Complainant. Respondent has never been commonly known by the disputed domain name.
2. Respondent has not used the <myfreestarbucks.com> domain name in connection with a bona fide offering of goods or services, or making legitimate noncommercial or fair use of the disputed domain name.
3. The <myfreestarbucks.com> domain name resolves to webpage that displays the title “Starbucks Giveaway”, Complainant’s STARBUCKS logo, as well as a linked “Get Started” button.
4. Respondent’s use of the disputed domain name to direct users to a website allegedly offering free drinks under the STARBUCKS name in exchange for e-mail addresses shows that Respondent does not have rights or legitimate interest in the subject domain name, but is instead engaged in phishing.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s use of the disputed domain name to intentionally confuse and divert Internet users to its own website for solicitation purposes is evidence of Respondent’s bad faith.
2. Respondent had knowledge of Complainant’s rights in the STARBUCKS mark at the time Respondent registered the disputed domain name.
3. Respondent is attempting to trick Internet users into divulging personal information through the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims to own the STARBUCKS mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,444,549, registered June 23, 1987). Complainant purports to use the mark to operate retail coffee houses and cafes, as well as to sell coffee, tea, confectioneries, beverages, and other products in retail and grocery stores. Complainant argues that its registrations with the USPTO are sufficient to establish rights pursuant to Policy ¶ 4(a)(i). The Panel agrees. In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the panel wrote, “As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).” Accordingly, the Panel finds that Complainant has established rights in the STARBUCKS mark pursuant to Policy ¶ 4(a)(i) by registering the mark with the USPTO.
Complainant contends that the <myfreestarbucks.com> domain name is confusingly similar to the STARBUCKS mark as the domain name incorporates the mark in full, and merely adds the descriptive terms “my” and “free”. Previous panels have determined that a domain name comprised of the complainant’s mark with generic or descriptive terms is confusingly similar to the complainant’s mark. Notably, in Starbucks Coffee Co. d/b/a Starbucks Coffee Company v. Carl Knight, FA 1494398 (Nat. Arb. Forum May 20, 2013), the panel held that the <freestarbucksdrink.com> and <starbuckdrinkgiveaway.com> domain names were confusingly similar to complainant’s STARBUCKS mark. This Panel similarly finds that the <myfreestarbucks.com> domain name is confusingly similar to the STARBUCKS mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent has never been commonly known by the disputed domain name. In so arguing, Complainant contends that Respondent is not authorized, licensed, or sponsored by Complainant. The Panel also notes that WHOIS record identifies “JAMES VIDES” as the registrant of the disputed domain name. Further, the Panel notes that Respondent has failed to submit a response in this proceeding to refute Complainant’s contentions. Under comparable circumstances, previous panels have determined that a respondent is not commonly known by the disputed domain name where the respondent is not authorized to use the mark by the complainant, and there is no evidence in the record to infer otherwise. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also contends that Respondent has not used the <myfreestarbucks.com> domain name in connection with a bona fide offering of goods or services, or for legitimate noncommercial or fair use. Complainant contends that the <myfreestarbucks.com> domain name resolves to a webpage that displays the title “Starbucks Giveaway”, Complainant’s STARBUCKS logo, as well as a linked “Get Started” button. The Panel notes that Respondent has submitted a screenshot of the resolving page. Upon clicking on the “Get Started” button, Complainant notes that Internet users are directed to the <awardzoom.com> website, which displays Complainant’s mark and logo and congratulates users on winning a $100 STARBUCKS gift card to be accessed after users submit their email address. Complainant acknowledges that said website is no longer active. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel wrote, “Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” This Panel finds that Respondent’s use of the disputed domain name in connection with a website designed to misdirect and solicit Internet users for Respondent’s own benefit does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Complainant asserts that Respondent’s use of the disputed domain name to direct users to a website allegedly offering free drinks under the STARBUCKS name in exchange for e-mail addresses shows that Respondent does not have rights or legitimate interest in the subject domain name. Complainant corroborates this assertion through screenshots of the resolving pages. The Panel finds that such use constitutes “phishing,” which does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of the disputed domain name to intentionally confuse and divert Internet users to its own website for solicitation purposes is evidence of Respondent’s bad faith. As Respondent likely commercially benefits from this aforementioned scheme designed to confuse Internet users as to the sponsorship of the resolving page and offer, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant next asserts that Respondent registered the <myfreestarbucks.com> domain name in bad faith because Respondent had knowledge of Complainant’s rights in the STARBUCKS mark at the time Respondent registered the disputed domain name. To support this position, Complainant points out that the STARBUCKS mark was well-known and federally registered at the time the disputed domain name was registered by Respondent. Complainant further contends that the resolving page presents visitors with Complainant’s mark and logo. Based on the foregoing, the Panel infers that Respondent had actual knowledge of Complainant's rights in the STARBUCKS mark and therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
In further arguing for a finding of bad faith against Respondent, Complainant asserts that Respondent is attempting to trick Internet users into divulging personal information through the disputed domain name. Previous panels have found evidence of bad faith where the respondent is using the disputed domain in connection with a scheme devised to acquire personal information from misdirecting Internet users. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). The Panel finds this to constitute further evidence that Respondent registered and used the domain in bad faith use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myfreestarbucks.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 17, 2014
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