Starbucks Coffee Company Corporation v Mohammad Mukati

WIPO Case No. DIO2023-0015

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Starbucks Coffee Company Corporation v. Mohammad Mukati

Case No. DIO2023-0015

1. The Parties

Complainant is Starbucks Coffee Company Corporation, United States of America (“US”), represented by

CSC Digital Brand Services Group AB, Sweden.

Respondent is Mohammad Mukati, US.

2. The Domain Name and Registrar

The Disputed Domain Name <starbucks.io> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2023. On

May 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection
with the Disputed Domain Name. On the same day, 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 (REDACTED FOR PRIVACY) and contact information in the
Complaint. The Center sent an email communication to Complainant on May 10, 2023, providing the
registrant and contact information disclosed by the Registrar, and inviting Complainant to submit

an amendment to the Complaint. Complainant filed an amended Complaint on May 12, 2023.

The Center verified that the Complaint together with the amended Complaint satisfied the formal

requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 May 15, 2023. In accordance with the Rules, paragraph 5, the due

date for Response was June 4, 2023. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on June 6, 2023.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on June 7, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant Starbucks is one of the world’s premier roaster, marketer and retailer of specialty coffee with

cafe, grocery, and foodservice operations in over 80 global markets, founded in 1971. With its US
operations expanding, it open stores in Japan, Europe, and China starting in 1996. It now has over one
million customers each week, part of tens of thousands of neighborhoods and cities around the world.

Annex 6 to the Complaint.

Complainant has trademark registrations for STARBUCKS in the US, the United Kingdom, the European
Union, and Mexico, beginning in 1985, in multiple classes, including 25, 30, 32, and 43. One of them being
the US registration numbered 1372630 with a registration date of November 26, 1985. Annex 1 to the

Complaint.

Complainant operates over 36,000 stores in 86 countries, 15,952 stores in the US, both company operated

(9,300) and licensed. Complainant is ranked 120 of the Fortune 500 companies. Complainant is recognized

by Fortune on their 2023 “World’s Most Admired Companies”, keeping its number one spot in the Food

Services industry and ranking 14th overall.

Online, Complainant has provided information about its STARBUCKS brand and products since 1993 from

its main website “ Annexes 4.1 and 5. Complainant has registered its STARBUCKS

trademark in country-code Top-Level Domains, enabling Internet users access to Complainant’s service with

information specific to their region. A non-exhaustive list of such domain name are identified in Annexes 4.2-
4.5, including:

<starbucks.in> <starbucks.jp> <starbucks.ca> <starbucks.com.ag>

According to Similarweb.com the primary domain name <starbucks.com> has received an average of 20 million visitors per month during the three month period January-March 2023. It is the fifth most popular website in its sector. Annex 8 to the Complaint. Complainant has established a strong media presence on

Facebook (36,262,071 likes), Twitter, and 18 million followers on Instagram. Annex 9 to the Complaint.
Complainant has spent substantial time, effort, and money marketing and promoting the STARBUCKS brand
and has developed substantial good will in such brand. STARBUCKS has become uniquely associated with

Complainant and its products and services.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is identical to the trademarks and service marks of
Complainant. The Respondent has no rights or legitimate interests in respect of the Disputed Domain

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

1. The Disputed Domain Name Is Identical or Confusingly Similar to a Trademark or Service Mark in Which
Complainant has Rights (Policy, Paragraph 4(a)(i); Rules, Paragraph 3(b)(viii), (b)(ix)(1))

Complainant is the owner of the STARBUCKS trademark. Annex 1 to the Complaint, prima facie satisfying the threshold requirement of standing to file a UDRP case. WIPO Overview of WIPO Panel Views on

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Selected UDRP Questions, Third Edition (WIPO Overview 3.0) section 1.2.1. The applicable Top-Level

Domain (“TLD”) (e.g., “.com”, “. club” and “. nyc”) are standard registration requirements and are disregarded

under the first element of the confusing similarity test.

The Second Level Domain of the Disputed Domain Name consists solely of Complainant’s STARBUCKS

trademark with no additions, alterations, or adornments, resulting in an identical domain name to

Complainant’s trademark, meeting the requirements of 4(a)(i) of the Policy.

The Disputed Domain is identical to Complainant’s trademark.

2. 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 granting of registrations to Complainant of the STARBUCKS trademark is prima facie evidence of

Complainant’s exclusive right to use the STARBUCKS trademark in commerce and/or in connection with the

goods and service of Complainant specified in the registration certificates. Annex 1 of the Complaint.

Respondent is not sponsored in any way by or with Complainant. Respondent has not been given

permission to use Complainant’s trademarks in any manner.

Respondent is not commonly known by the Disputed Domain Name, evincing a lack of rights or legitimate interests. Further, Complainant has not licensed, authorized, or permitted Respondent to register domain

names incorporating Complainant’s STARBUCKS trademark. Absent such license or permission no actual

or contemplated bona fide use of the Disputed Domain Name can be reasonably claimed.

The Notice of Registrant Information identifies the Respondent as “Mohammad Mukati”, which does not

resemble the Disputed Domain Name in any manner. Annex 2.2 of the Complaint. Where no evidence
exists that Respondent is commonly known by the Disputed Domain Name, Respondent has acquired no
rights under the Policy. Paragraph 4(c)(ii).

At the time of filing the Complaint Respondent was using a privacy WhoIs service which has been found under the Policy to equate to a lack of legitimate interest. Annex 2.1 of the Complaint.

Respondent is using the Disputed Domain to redirect Internet users to a website that resolves to a blank page and lacks content. Respondent has failed to make a legitimate use of the domain and website.

“Parking” does not constitute a legitimate offer of services as required by the Policy Paragraph 4(c)(i). Annex

3 of the Complaint.

Respondent registered the Disputed Domain on November 29, 2018, significantly after Complainant filed for

registration of the STARBUCKS trademark and significantly after Complainant’s first use in commerce in

1971 of the STARBUCKS trademark. And significantly after the registration of Complainant’s

<starbucks.com> domain on October 25, 1993. Annexes 1, 2, and 4.1 of the Complaint.

Respondent lacks legitimate rights or interests in the Disputed Domain Name under Paragraph 4(a)(ii) of the

Policy.

3. The Disputed Domain Name was Registered and Being Used in Bad Faith

Complainant and its trademark STARBUCKS are known internationally. Complainant has marketed and
sold its goods and services since 1971 well before the registration of the Disputed Domain Name by
Respondent on November 29, 2018. It is illogical to believe Respondent registered the Disputed Domain

Name without specifically targeting Complainant and its rights in the STARBUCKS name. There is no

plausible situation in which Respondent would not know of the STARBUCKS trademark. Respondent’s use

strongly implies bad faith. It defies common sense to believe Respondent coincidently selected a name

connected with such a well-known trademark. It suggests opportunistic bad faith. Given Complainant’s

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worldwide reputation it defies common sense to believe the coincidental selection of precisely the same

name by Respondent.

The Disputed Domain Name resolves to an inactive site and is not being used, but past panels have noted

that the phrase “bad faith use” does not require a positive act on the part of Respondent-a passive holding

can constitute a factor in bad faith registration and use under Policy Paragraph 4(a)(iii). Under
circumstances such as here inactivity can amount to use in bad faith. Alitalia-Linee Aeree Italiane S.p.A. v

Colour Digital, WIPO Case No. D2000-1260.

Although the Disputed Domain does not host any active content, it has been set up with mail exchange

(“MX”) records. It is set up to be actively used for email purposes. It is likely this use may facilitate

fraudulently intended activity, as impersonating or passing off Complainant. Annex 11 of the Complaint for
such MX records of the Disputed Domain Name.

Given the above circumstances any use of the Disputed Domain can only be with bad faith competitive or detrimental to Complainant.

Respondent has ignored Complainant’s attempts to resolve the dispute outside of this proceeding.

Respondent has failed to respond to multiple cease and desist letters from Complainant. Annex 12 to the complaint. These are another basis to find bad faith registration and use.

The factual presentations above it is likely Respondent knew of and targeted Complainant for no good
purpose. Tudor Games, Inc v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy

Services Pty Ltd/Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754. Respondent had

Complainant’s trademark STARBUCKS in mind when it first filed its Disputed Domain Name and thereafter.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has shown substantial international rights to the world-famous trademark STARBUCKS and
substantial continued use of same since 1971 in the United States and from 1986 worldwide. The rights of

Complainant are not only prima facie but conclusive without any doubt. WIPO Overview 3.0 at 1.2.1.

The Disputed Domain Name is identical to Complainant’s STARBUCKS trademark.

Policy Paragraph 4(a)(i); Rules Paragraph 3(b)(ix)(1))

B. Rights or Legitimate Interests

The Disputed Domain Name is not being used for an active website and is identical to the Complainant’s

famous trademark, which composition carries a high risk of implied affiliation to the Complainant, contrary to

the fact, and as such cannot vest any rights or legitimate interests to Respondent. Moreover, it is not

connected with respondent’s name, Muhammad Mukati, nor has the Respondent been authorized to use the

name and mark STARBUCKS nor Complainant’s business or name. In view of the potential for Internet user

confusion given the identical disputed domain name, the active MX records indicate an illegal undertaking to
capitalize on the fame and goodwill of Complainant. This panel sees no legitimate claim that can be made

by Respondent. Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875. Accordingly,

setting up MX records account to accept emails gives no legitimate purpose to Respondent’s actions.

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Policy Paragraph 4(a)(ii); Rules Paragraph 3(b)(ix)(2))

C. Registered or Used in Bad Faith

Given the Respondent’s registration of the disputed domain name that is identical to Complainant’s

world-famous trademark, it is evident that the Respondent was aware of and purposefully targeted disputed domain name, he is creating an attempt to distrupt the commercial enterprise of Complainant by misleading Internet users via the identical disputed domain name. No good faith act can attend such an attempt. That there may not be an actual use is irrelevant here as there is no plausible good faith use to which the identical disputed domain name could be put by Respondent that would not infringe upon Complainant’s rights. Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Alitalia-Linee

Aeree Italiane S.p.A. v. Colour Digital, WIPO Case No. D2000-1260. DCI S.A. v. Link Commercial Corp.,

WIPO Case No. D2000-1232 (December 7, 2000).

Policy Paragraph 4(a)(iii),4(b); Rules, Paragraph 3(b)(ix)(3))

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, <starbucks.io> be transferred to the Complainant.

/Maxim H. Waldbaum/

Maxim H. Waldbaum

Sole Panelist
Date: June 14, 2023