Starbucks Corporation v Carolina Rodrigues, Fundacion Comercio

WIPO Case No. D2024-1367

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Starbucks Corporation v. Carolina Rodrigues, Fundacion Comercio
Electronico

Case No. D2024-1367

1. The Parties

The Complainant is Starbucks Corporation, United States of America (“US”), represented by Focal PLLC,

US.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <starbuckspartnerhour.com> is registered with GoDaddy.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2024. On April 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2024, 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 (Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2024, 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 April 11, 2024.

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 April 12, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2024.

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The Center appointed Stefan Abel as the sole panelist in this matter on May 23, 2024. 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 US-based company. It has opened its first store in 1971 and now runs many thousand shops under its company name in over 80 markets around the world.

The Complainant owns numerous STARBUCKS - trademarks registered for coffeepots, cubs, mugs, coffee, tea, herb tea, chocolate and cocoa and for coffee café services such as US registrations nos. 1.372.630, 1.452.359 and 1.444.549 registered in 1985 and 1987 respectively. The Complainant further owns numerous European Union trademarks for STARBUCKS registered for the same or similar goods and services registered between 1999 and 2023. The Complainant’s trademark registrations of the term STARBUCKS in 2023 and before extend to many other countries all over the world.

The disputed domain name war registered on January 16, 2024. It resolves to a parking page containing links to advertisings related to the Complainant’s field of business as reflected by Annex 11.

Further, the Center’s database on UDRP - decisions submitted by the Complainant (Annex 12) shows that several hundred UDRP - proceedings have been directed against the Respondent since 2012.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that it currently owns over 2,000 trademark applications and registrations for the STARBUCKS mark in 187 countries.

The disputed domain name is confusingly similar to the Complainant’s STARBUCKS - mark as the Respondent’s domain name incorporates the STARBUCKS - mark in its entirety and the addition of generic descriptive terms do not sufficiently distinguish a domain name from a trademark incorporated in the domain name.

The Complainant has never licensed or otherwise authorized the Respondent’s use of its STARBUCKS - mark in any domain name, much less the confusingly-similar domain name at issue. It is reasonable to infer the Respondent is earning pay-per-click revenue from the parking page and is wrongfully obtaining profit from the use of the Complainant’s STARBUCKS mark.

As the Complainant’s use and registration of its STARBUCKS - mark long predated the Respondent’s registration of the disputed domain name there can be no credible dispute that the Respondent was not aware of the Complainant’s STARBUCKS - mark when she registered the disputed domain name. Even if the Respondent derives no immediate commercial benefit, it is still taking unfair advantage of the reputation of the Complainant’s mark to divert Internet users to its website trough confusion.

Not only the Respondent has been a named Respondent in several hundred UDRP - proceedings since 2012, there have been 93 UDRP cases against the Respondent in 2023 of which 92 panel decisions resulted in transfer of the relevant domain names into the control of the complainants, which reflects engagement in a pattern of registering domain names reproducing trademarks of third parties in order to prevent the owners of the trademarks to reflect them in a corresponding domain name.

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B. Respondent

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

6. Discussion and Findings

The Policy provides for a transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

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

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

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

Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, shall be evidence of registration and use of the domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks STARBUCKS.

The disputed domain name consists of this distinctive trademark in combination with the terms “partner” and
“hour” which do not prevent the confusing similarity between the disputed domain name and the
STARBUCKS - mark owned by the Complainant.

Similarly, the generic Top-Level Domain (“gTLD”) “.com” does not affect the finding of confusing similarity. gTLDs are in general not considered as an identifier of the website as to its owner or its operator. Reasons for a possible exception to this rule, such as the inclusion of the gTLD by the disputed second level domain name to form a conceptual whole, are not apparent.

The Panel finds that 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its registered trademark or to register the disputed domain name.

The Complainant has successfully made out a prima facie case by stating that the Respondent is neither affiliated nor related to the Complainant and lacks any authorization to use the Complainant’s trademark. The contested trademark does not have a purely generic or descriptive meaning. Rather, it appears to have

no other meaning but to designate the Complainant’s business. The Complainant has been using the term
as a trademark for 50 years and in recent decades around the globe.

The evidentiary burden therefore shifts to the Respondent to come forward with appropriate allegations and evidence demonstrating rights or legitimate interest in the disputed domain name. See e.g., Accor v. Eren Atesmen, WIPO Case No. D2009-0701. The Respondent has failed to do so. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods of noncommercial purposes. The Respondent is not known by the disputed domain name and has failed to demonstrate the acquisition of any trademark in STARBUCKS.

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The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant has established the element of paragraph 4(a)(iii) of the Policy, too, for the following reasons:

The term STARBUCKS is not descriptive in a language of the country where the Respondent is located.

The Complainant’s non-descriptive company name and trademarks STARBUCKS are well-known, at least in the US and in the European Union.

The Complainant has used the sign STARBUCKS as its business identifier and trademark for many decades before the disputed domain name has been registered.

The disputed domain name is identical to the Complainant’s business name and trademarks STARBUCKS; the only difference are the generic terms “partner” and “hour” added to STARBUCKS, which may easily be understood as identifying a service of the Complainant.

The Respondent does not make any use of the disputed domain name for a particular business; there is only a parking site accessible under the disputed domain name, containing numerous links.

In the Panel’s view, Internet users are likely to get the idea that the Respondent site at the disputed domain name is sponsored by the Complainant or affiliated with the Complainant. That likelihood of confusion will likely attract more customers to the site at the disputed domain name which will result in commercial gain as the Respondent’s site provides links to numerous commercial websites.

The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant and its trademarks in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its products and services is obvious to the Panel considering that no rights or legitimate interest in using the disputed domain name are apparent, that the Complainant’s trademarks have been registered decades before the registration of the disputed domain name and that STARBUCKS is a famous trademark, at least in the European Union and in the US.

The Panel concludes, that by using the disputed domain name for a parking site, 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 STARBURKS trademarks as to the source, sponsorship and affiliation of the website (paragraph 4(b)(iv) of the Policy).

The finding of registration and use bad faith is further supported by the fact that the disputed domain name owner obviously deals with domain names and has been the Respondent in several hundred cases in the last 12 years. See Stichting BDO v. Carolina Rodrigues, Fundacion Comercio Electronico, Case No. D2024-0274; Schibsted ASA v. Carolina Rodrigues, Fundacion Comercio Electronico, Case No. D2024-0235. Although this element on its own may not suffice to establish bad faith registration and use, it supports this finding when considered in combination with the circumstances set out above.

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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 <starbuckspartnerhour.com> be transferred to the Complainant.

/Stefan Abel/ Stefan Abel Sole Panelist Date: June 6, 2024