WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Starbucks Corporation v. Contact Privacy Inc. Customer 1242735021 / Green Starbuck Coffee Cafe

Case No. D2019-1234

1. The Parties

The Complainant is Starbucks Corporation, United States of America (“United States”), represented by Vikrant Rana, S.S. Rana & Co., Advocates, India.

The Respondent is Contact Privacy Inc. Customer 1242735021, Canada / Green Starbuck Coffee Cafe, India.

2. The Domain Name and Registrar

The disputed domain name <greenstarbuckcoffeecafe.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 June 3, 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 June 7, 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 June 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2019.

The Center appointed Steven A. Maier as the sole panelist in this matter on July 4, 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 is a corporation located in Seattle, Washington, United States. It operates a multi-national chain of coffee shops and offers retail goods under the name and trademark STARBUCKS.

The Complainant is the owner of numerous trademark registrations throughout the world comprising or including the mark STARBUCKS. Those registrations include, for example:

- United States trademark number 1444549 for the word mark STARBUCKS, registered on June 23, 1987 for goods and services including retail store services and distributorship services for coffee and tea in Class 35 and 43;

- India trademark number 1917273 for the word mark STARBUCKS, registered on February 4, 2010 for goods and services including franchising in connection with the operation of restaurants, cafes and coffee houses in Class 35;

- India trademark number 2231536 for the word mark STARBUCKS COFFEE, registered on November 9, 2011 for goods and services including cafe, coffee bar and coffee house services in Class 43.

The Complainant has promoted its services by reference to designs including the device pictured below (“the Starbucks Coffee Logo”):

The disputed domain name was registered on May 27, 2018.

According to evidence submitted by the Complainant, on May 17, 2019 the disputed domain name resolved to a website headed “GREEN STARBUCK COFFEE CAFE – Fast Food Restaurant in ROHTAK” and prominently displayed the design pictured below:

5. Parties’ Contentions

A. Complainant

The Complainant states that it opened its first store under the name STARBUCKS in 1971 and is now the world’s largest multi-national chain of coffee shops with 30,184 retail locations in 78 countries. It submits evidence of its substantial business activity and reputation worldwide including its consistent recognition as one of the Interbrand “Top 100 Brands”.

In addition to a portfolio of trademark registrations for the mark STARBUCKS in numerous jurisdictions worldwide, the Complainant provides details of its principal website at “www.starbucks.com”, of numerous other domain names which have been registered including the terms “starbucks” and “starbuckscoffee”, and of a substantial social media presence.

The Complainant states that it has operated in India since October 2012 and that it currently has 129 STARBUCKS outlets in that country. It provides evidence of substantial revenues from its commercial activities including retail sales in India.

The Complainant submits that, as a result of the above matters, its mark STARBUCKS has gained the status of a well-known trademark on a global basis.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights. It relies on both its trademarks STARBUCKS and STARBUCKS COFFEE and submits that the disputed domain name incorporates both of these trademarks in full. The Complainant contends that the addition of the word “green” only adds to the potential for confusion because it calls to mind the primary colour of the Starbucks Coffee Logo and that the inclusion of the term “cafe”, which also describes the Complainant’s services, does nothing to dispel the confusing similarity of the disputed domain name.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it is not affiliated with the Respondent, that it has never licensed or authorized the Respondent to use its STARBUCKS or STARBUCKS COFFEE trademarks, that the Respondent has not commonly been known by any name corresponding to the disputed domain name, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. The Complainant denies that there is any business operating under the name “Green Starbuck Coffee Café” and submits that the Respondent can only have chosen the disputed domain name with the intention of trading off the Complainant’s goodwill.

The Complainant submits that the disputed domain name was registered and has been used in bad faith. The Complainant contends that the Respondent’s intention to take unfair advantage of the Complainant’s goodwill is evident not only from the adoption of the Complainant’s well-known trademark but also the use of a device which is deceptively similar to the Starbucks Coffee Logo. The Complainant repeats its allegations that the Respondent is not operating any genuine café under the disputed domain name and that it has chosen to include the term “green” in order to call to mind the Starbucks Coffee Logo. The Complainant submits that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

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

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

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

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of registered trademark rights in the marks STARBUCKS and STARBUCKS COFFEE. The Panel finds these marks to be distinctive and accepts the Complainant’s contention that (with the exception of the letter “s”) both marks are fully incorporated in the disputed domain name. The Panel is not of the view that either of the dictionary terms “green” or “cafe” is effective to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks and finds therefore that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration of the disputed domain name or its use as described above, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

In the light of its findings that the Complainant’s trademarks STARBUCKS and STARBUCKS COFFEE are distinctive and widely-known, the Panel can conceive of no reasonable explanation for the Respondent’s registration and use of the disputed domain name other than to take advantage of the Complainant’s goodwill attaching to those trademarks. This inference is supported by the Respondent’s inclusion use of a design on its website which resembles the Starbucks Coffee Logo and by its inclusion of the term “green” (being the predominant colour of that logo) in the disputed domain name. The Panel therefore accepts the Complainant’s submission that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel concludes in the circumstances that the disputed domain name has been registered and is being used 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, <greenstarbuckcoffeecafe.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: July 12, 2019