Starbucks Corporation v Privacy service provided by Withheld for Privacy ehf

WIPO Case No. D2022-2417

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Starbucks Corporation v. Privacy service provided by Withheld for Privacy ehf
/ Foresight Global Consulting

Case No. D2022-2417

1. The Parties

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

PLLC, United States.

Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Foresight Global Consulting,

United States.

2. The Domain Name and Registrar

The disputed domain name <starbucksfranchise.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2022. On July 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 4, 2022, 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 Complainant on July 5, 2022, 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 July 8, 2022.

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 Respondent of the Complaint, and the proceedings commenced on July 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2022. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on August 8, 2022.

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The Center appointed Lorelei Ritchie as the sole panelist in this matter on August 15, 2022. 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

Complainant is a multinational company, based in the United States. For decades prior to the registration of the disputed domain name, Complainant has offered various goods and services under its STARBUCKS mark, including the retail sale of coffee. Complainant has several registered trademarks for its STARBUCKS mark, including in the United States, where Respondent lists an address of record. These include, among others, United States Registration Nos. 1372630 (registered November 26, 1985) and 1444549 (registered June 23, 1987).

The disputed domain name was registered on April 29, 2021. Although the website was inactive at the time the Complaint was filed, Respondent has used the URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant. The website referred to “Starbucks Franchise & Licensed Stores” and invited prospective business partners to click links or to contact Respondent via email. Respondent has also sent fraudulent emails impersonating Complainant. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s
trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii)
Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has established rights in its globally-known STARBUCKS mark. Complainant contends that Respondent has merely added the term “franchise.” Complainant asserts that Respondent has no rights or legitimate interests in the domain name registration or use of the disputed

domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a website
meant to impersonate Complainant and to confuse prospective partners seeking to franchise the use of
Complainant’s highly regarded STARBUCKS mark, when Respondent clearly knew of Complainant’s rights.
In this regard, Complainant asserts that Respondent has used Complainant’s mark in order to obtain
sensitive personal and financial information from prospective business partners of Complainant for

Respondent’s own commercial gain.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <starbucksfranchise.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered STARBUCKS mark, with the addition of the term “franchise.”

Numerous UDRP panels have agreed that supplementing or modifying a trademark with additional words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first

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prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case
No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No.
D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. Step-Web, WIPO Case No.
D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO

Case No. D2000-1065 (transferring <cbsone.com>).

The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which

Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the

bona fide

domain name “in connection with a offering of goods or services;” (ii) demonstration that of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Respondent did not submit a reply to Complainant’s contentions, and Respondent did not allege or otherwise provide any information that would support a finding that Respondent has rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has previously set up a URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, and which attempts to confuse prospective partners by referring to “Starbucks Franchise & Licensed Stores.” The website further invited prospective consumers to click links or to contact Respondent via email. Respondent has also sent fraudulent emails regarding Starbucks license applications. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

The Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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, <starbucksfranchise.com>, be transferred to Complainant.

/Lorelei Ritchie/
Lorelei Ritchie
Sole Panelist
Dated: August 25, 2022