The Marigny Corporation v. Kirby Newbury

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

The Marigny

Corporation v. Discount Coffee.com, Inc.

Case No.

D2001-0354

1. The Parties

Complainant is The

Marigny Corporation, located in Wilmington, Delaware, United States of America.

Respondent is Discount

Coffee.com, Inc., located in Lake Saint Louis, Missouri, United States of

America.

2. The Domain Name

and Registrar

The domain name at issue

is ("Domain Name"): <standardcoffeeservice.com>.

The registrar is Network

Solutions, Inc. of Herndon, Virginia, United States of America.

3. Procedural History

This action is subject

to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October

24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain

Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The Complaint was submitted

on March 12, 2001. The Response was submitted on April

9, 2001.

On April 30, 2001, Mark

V.B. Partridge was appointed Sole Panelist.

4. Factual Background

Complainant is the

owner of the business associated with the Standard Coffee Service Company.

Complainant and its predecessors in interest and licensees have done business

under the name STANDARD COFFEE SERVICE COMPANY since at lease 1967. Complainant

owns federal registrations for the a design mark consisting of the words

STANDARD COFFEE SERVICE COMPANY in a stylized format, Reg. No. 1, 112, 920,

Dated February 6, 1979, for "coffee vending services and supplying coffee

and related items," and Reg. No. 1,272,972, Dated April 3, 1984, for "coffee,

sugar, and non-dairy creamer sold in conjunction with the provision of coffee

service under the same mark to businesses."

Respondent is a Missouri

Corporation incorporated on October 26, 1999, by a former employee of Complainant's

licensee, the Standard Coffee Service Company division of The Standard Companies,

Inc. On January 16, 2000, Respondent registered the Domain Name and has

used it to direct Internet users to a web site it operates at <discountcoffeedirect.com>.

Respondent's site advertises products and services related to coffee, coffee

vending services and related items in competition with Complainant. Later,

Respondent used the Domain Name to direct Internet Users to a directory

of coffee services which it calls Internet Coffee Service.

5. Parties’ Contentions

Complainant contends

that the Domain Name is confusingly similar to its mark, that Respondent

has no rights or legitimate interests in the Domain Name, and that Respondent

has registered and used the Domain Name in bad faith as a deliberate attempt

to trade on Complainant's mark and to disrupt its business.

Respondent contends

that Complainant has no rights in <standardcoffeeservice.com> and

that the term is generic. Respondent claims it has a legitimate interest

because it began using the Domain Name to sell coffee and related products

prior to notice of the dispute. Finally, Respondent denies that the Domain

Name was registered or used in bad faith.

6. Discussion

To obtain relief under

the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a)

of the Policy requires the complainant to prove each of the following:

(1) that

the domain name registered by the respondent is identical or confusingly

similar to a trademark or service mark in which the complainant has

rights; and

(2) that

the respondent has no rights or legitimate interest in the domain

name; and

(3) that

the domain name has been registered and used in bad faith.

A. Confusing Similarity

Complainant has established

rights in the name and mark STANDARD COFFEE SERVICE COMPANY based on registration

and use.

The Domain Name is

confusingly similar to Complainant's registered mark in stylized format.

The absence of "Company" and the addition of ".com" are not distinguishing

features sufficient to avoid a finding of confusing similarity. Moreover,

given the conventions in presentation of domain names, the lack of spacing

or stylized letters is not distinguishing. Internet users seeking Complainant's

business are likely to be mistakenly directed to Respondent's site based

on confusion between the Domain Name and Complainant's mark. Therefore,

I find that Complainant has met the requirements of Paragraph 4(a)(i) of

the Policy.

B. Legitimate

Interests

Under the Policy, legitimate

interests in a domain name may be demonstrated by showing that: (i) before

any notice of this dispute, respondent used, or demonstrably prepared to

use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; (ii) respondent has been

commonly known by the domain name, even if no trademark or service mark

rights have been acquired; or (iii) respondent is making a legitimate

noncommercial or fair use of the domain name, without intent for commercial

gain to misleadingly divert customers or to tarnish the trademark at issue.

Here, Respondent contends

that it has a legitimate interest because it made bona fide use of the Domain

Name before it received an objection from Complainant.

Other decisions recognize

that consideration of good faith is a key issue in determining whether use

is bona fide under the policy. See World Wrestling Federation Entertainment,

Inc. v. Rift, ICANN D2000-1499 (WIPO 2000)("not all use prior to notice

of the dispute can qualify as bona fide use"). As explained in Ciccone

v. Parisi, ICANN D2000- 0847 (WIPO 2000), intentionally infringing use

should not be viewed as bona fide use:

We . . . conclude

that use which intentionally trades on the fame of another can not constitute

a "bona fide" offering of goods or services. To conclude otherwise

would mean that a Respondent could rely on intentional infringement to

demonstrate a legitimate interest, an interpretation that is obviously

contrary to the intent of the Policy.

Here, there is no dispute

that Respondent has used the Domain Name for a commercial site relating

to coffee. However, that alone is insufficient for a finding of legitimate

interest, as noted in the cases cited above. It appears that Respondent

used the Domain Name as a means of attracting Internet Users to its site

where it sells coffee and related products and services. This use appears

to be a deliberate infringement of Complainant's rights. Accordingly, I

find that Respondent lacks any right or legitimate interest in the Domain

Name.

C. Bad Faith Registration

and Use

Paragraph 4(b) of the

Policy states:

"For

the purposes of Paragraph 4(a)(iii), the following circumstances, in particular

but without limitation, if found by the Panel to be present, shall be

evidence of the registration and use of a domain name in bad faith:

(i) circumstances

indicating that [Respondents] have registered or [Respondents] have

acquired the domain name primarily for the purpose of selling, renting,

or otherwise transferring the domain name registration to the Complainant

who is the owner of the trademark or service mark or to a competitor

of that complainant, for valuable consideration in excess of [Respondents’]

documented out-of-pocket costs directly related to the domain name;

or

(ii) [Respondents]

have registered the domain name in order to prevent the owner of

the trademark or service mark from reflecting the mark in a corresponding

domain name, provided that [Respondents] have engaged in a pattern

of such conduct; or

(iii) [Respondents]

have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by

using the domain name, [Respondents] have intentionally attempted

to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service

on [Respondents’] web site or location."

Here, Respondent was

well-aware of Complainant's prior use of the STANDARD COFFEE SERVICE name

and mark, since he was a former employee of Complainant's licensee. Respondent

registered the Domain Name with knowledge of Complainant's rights and used

the Domain Name to lead Internet users a site in direct competition with

the business of Complainant. This conduct appears to violate Paragraph 4(b)(iii)

of the Policy.

It also appears that

Respondent registered and used the Domain Name intentionally to attract

Internet users to it commercial web sites by creating a likelihood of confusion

with the name and mark of its former employer. This conduct is contrary

to Paragraph 4(b)(iv) of the Policy.

Respondent's attempt

to justify its conduct is not supported by the record. There is no showing

that STANDARD COFFEE SERVICE is a generic term for either Complainant's

or Respondent's business. The phrase does seem to be descriptive, but Complainant's

mark is the subject of an incontestable registration and therefore cannot

be held invalid based on descriptiveness. See Park'N Fly, Inc. v. Dollar

Park and Fly, Inc., 469 U.S. 189 (1985).

Based on the evidence

presented, it appears that Respondent registered and used the Domain Name

in bad faith by deliberately selecting and using a name confusingly similar

to its former employer's name and mark to misdirect Internet users to its

own site. Accordingly, I find that Complainant has met its burden under

Paragraph 4(a)(iii) of the Policy.

7. Conclusion

I conclude that the

Domain Name is confusingly similar to a mark in which Complainant has prior

rights, that the Registrant lacks any right or legitimate interest in the

Domain Name, and that the Domain Name was registered and used in bad faith.

Therefore, Complainant's request for transfer of the Domain Name <standardcoffeeservice.com>

is granted.

Mark Partridge

Sole Panelist

Dated: May

17, 2001