Brett Habenicht v. Plantation Coffee Roasters, Inc.

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Brett Habenicht v. Plantation Coffee Roasters, Inc.

Case No. D2003-0770

1. The Parties

The Complainant is Brett Habenicht of Maple Valley, Washington, United States of America, represented by Graham & Dunn, PC, United States of America.

The Respondent is Plantation Coffee Roasters, Inc. of Elk Grove, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <javajavacoffee.com> is registered with Network Solutions, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 30, 2003. On October 1, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On October 3, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing details of the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2003. On November 17, 2003, the Center issued Procedural Order No. 1 requiring the Complainant to file further information and documents in support of the Complaint. On November 19, 2003, the Complainant filed its information in reply.

The Center appointed Angela Fox as the sole panelist in this matter on November 6, 2003. 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 coffee merchant based just outside of Seattle, Washington. He has traded under the name JAVA! JAVA! since June 1992.

The Complainant’s JAVA! JAVA! trademark is the subject of United States federal trademark registration 2077765. The application was filed on June 22, 1992, and was registered on July 8, 1997, in respect of "carry-out restaurant services rendered from carts and kiosks, featuring primarily coffee-based beverages." The Complainant exhibited a recent print-out of the registration details from the United States Patent and Trademark Office website.

The Respondent registered the disputed domain name <javajavacoffee.com> on April 28, 1999. The Complainant discovered this shortly thereafter when himself attempting to register the domain name. On June 2, 1999, the Complainant sent an email to the Respondent, quoted as follows in exhibited correspondence from the Respondent to the Complainant’s lawyers dated June 24, 2003:

"Just thought I would check out your site. I own the Java! Java! Coffee Company here in Seattle Washington. And yes, we are federally trademarked. But protected? We’ll have to wait and see. Just don’t get too attached to your URL yet."

In its letter of June 24, 2003, the Respondent stated that it did not reply to that email because it considered the Complainant’s approach to be condescending. The Complainant took no further action in 1999.

By 2002, the Complainant’s business had grown and his wholesale volume, from which most Internet sales were made, had tripled. The Complainant states that in 2002, he received reports of customers attempting to reach his website who found themselves at the Respondent’s site by mistake. The Complainant discovered that the Respondent was using the disputed domain name to redirect visitors to <plantationcoffee.com>, a website promoting the Respondent’s own coffee business located some 800 miles away in California.

The Complainant re-raised his objection by letter to the Respondent (not exhibited) in May 2003. The Complainant states that, following this approach, the Respondent directly linked some of its own website pages to the disputed domain name and inserted the words JAVAJAVACOFFEE and JAVA on the web page borders and background. In its letter of June 24, 2003, the Respondent stated that it would be prepared to entertain an offer of $18,000 for sale of the domain name. The Complainant counter-offered $1,000. In reply, the Respondent observed that the domain name consisted of generic terms which the Respondent had a legitimate right to use, and that an offer between $1,000 and $18,000 would be more appropriate. Copies of this correspondence were exhibited. The Complainant brought this administrative proceeding on September 30, 2003.

By procedural order, the Panel invited the Complainant to submit further information and documents on what use the Respondent was known to have been making of the domain name prior to notice of the dispute on June 2, 1999, and on what knowledge the Respondent was believed to have had of the Complainant’s trademark or business prior to then. The Complainant replied that he had no knowledge of any use of the domain name before notifying the Respondent of the dispute on June 2, 1999, and did not know what prior knowledge, if any, the Respondent had of the Complainant’s trademark or business.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to his registered JAVA! JAVA! trademark. The omitted exclamation marks are immaterial since such punctuation cannot be included in domain names. The element "coffee" directly refers to the Complainant’s business and cannot, therefore, distinguish.

The Complainant further contends that the Respondent has no rights or legitimate interests in the domain name. The Complainant began using the JAVA! JAVA! trademark long before the Respondent registered its domain name, and the Complainant has not authorized the Respondent to use the mark. Nor does the Respondent appear to be commonly known by any name corresponding to the domain name. The Respondent only appears to sell products under the PLANTATION COFFEE ROASTERS name.

Finally, the Complainant argues that the domain name was registered and is being used in bad faith. As evidence of this, the Complainant points to the Respondent’s offer to sell for an amount exceeding its documented out-of-pocket registration expenses. The Complainant also asserts that the domain name has been held passively since registration and that the failure to develop a specific website for it over four years also indicates bad faith. The Respondent’s insertion of references to JAVA and JAVAJAVACOFFEE and direct linking of pages from its Plantation Coffee Roasters site after the Complainant’s new objection in May 2003, are also evidence of bad faith. Finally, the Complainant contends that the Respondent had constructive notice of the existence of the Complainant’s earlier federal trademark registration. The Respondent’s forging ahead nonetheless with registration and re-directional use of the domain name is therefore further evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complaint and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with Paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under Paragraph 4 (a) of the Policy, a complainant can only succeed in an administrative

proceeding under the Policy if the Panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service

mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the domain name;

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

All three elements must be present before a complainant can succeed in an administrative

proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant has proved that it owns a United States federal trademark registration

for JAVA! JAVA! filed seven years prior to registration of the disputed domain

name.

The disputed domain name consists of three elements: "javajava,"

"coffee" and the nondistinctive domain name suffix, ".com."

"Javajava" differs from the Complainant’s trademark only by the omission

of the exclamation marks. It is not possible to include such punctuation in

domain names and "javajava" is therefore the closest a domain name

can get to the Complainant’s registered mark. The absence of punctuation does

not alter the fact that a domain name, or part of it, is identical to a trademark,

and the Panel agrees that the omission of the exclamation marks does not serve

to distinguish (see Chernow Communications, Inc. v. Jonathan D. Kimball,

WIPO Case No. D2000-0119, where the majority

found <ccom.com> identical to the trademark C-COM).

The remaining elements are equally incapable of distinguishing the domain name

from the Complainant’s trademark. The suffix ".com" is incidental

to domain names and cannot serve to distinguish. The word "coffee"

is a descriptive noun which relates directly to the Complainant’s business.

Its presence is likely to encourage confusion among Internet users familiar

with, or seeking information on, the Complainant.

This reasoning follows a well-established line of decisions holding that descriptive

or generic additions, and particularly those relevant to the field in which

a mark is used, do not avoid confusing similarity where a domain name incorporates

a trademark (see, among others, U-Haul International, Inc. v. Affordable

Web Productions, WIPO Case No. D2003-0511

on inter alia <uhaulmovingtruck.com> and <uhaultraillerrental.com>;

and Time Warner Entertainment Company L.P. v. HarperStephens, WIPO

Case No. D2000-1254, on inter alia, <harrypotterfilms.net>;

and Fendi Adele S.r.l. v. Mark O’Flynn, WIPO

Case No. D2000-1226, on <fendiboutique.com>).

The Panel finds that the domain name is confusingly similar to a trademark

in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that any of the following circumstances,

in particular but without limitation, if found by the Panel to be present based

on its evaluation of all the evidence, shall demonstrate a Respondent’s right

to or legitimate interest in the domain name for the purposes of para. 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

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

with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organisation) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain

name without intent for commercial gain to misleadingly divert customers or

to tarnish the trademark or service mark at issue.

There is no evidence that the Respondent is commonly known by the domain name

or is making a legitimate non-commercial or fair use of it. On the contrary,

print-outs from the site linked to the domain name show commercial use in connection

with the Respondent’s own coffee business, run under the entirely different

name Plantation Coffee Roasters.

Commercial use could, however, evidence a right or legitimate interest under

Paragraph 4(c)(i) of the Policy if bona fide and begun before notice

of the dispute. Certainly the exhibited website print-outs show an offering

of the Respondent’s goods for sale over the Internet, and there is nothing to

suggest that this business is not a genuine, good faith commercial undertaking.

There need be no presumption that the Respondent must have known about the Complainant

in order to arrive at the disputed domain name; the word "java" is

well-known slang for coffee, and given the small size of the Complainant’s business

in 1999 and the 800 miles or so separating the parties, it is quite possible

that neither knew of the other’s existence when the domain name was registered.

There is no evidence that the Complainant had a reputation at that time extending

beyond its local area.

Bona fide commercial use, however, can only support a right or legitimate

interest under Paragraph 4(c)(i) if begun prior to notice of the dispute. In

this case, the Complainant first gave notice of the dispute to the Respondent

by email on June 2, 1999. The Respondent acknowledged receipt of that

email in later, exhibited correspondence with the Complainant’s lawyers. In

order to find a right or legitimate interest under this paragraph, therefore,

the Panel must be satisfied that the Respondent’s use of the domain name began

before June 2, 1999.

There is no evidence as to when the Respondent commenced use, and the Complainant

does not know. On June 2, 1999, the domain name had been registered

for just over a month. That would have been enough time to link a domain name

to existing web pages, which is what the Respondent is later known to have done.

Yet there is nothing except the Respondent’s later known use to suggest that

the Respondent might actually have taken that step prior to June 2, 1999.

A finding based merely on later use would be based on no more than surmise in

this case. Moreover, other evidence, such as the fact that the Complainant himself

only learned of the Respondent’s use from customers nearly three years later,

tends to support the view that the Respondent’s use began some time after June 2, 1999.

The Panel considers that the uncontested facts presented by the Complainant

give rise to an arguable case that the Respondent only commenced use after notice

of the dispute. The Respondent, who is in a better position than the Complainant

to evidence his own rights or interests, did not reply. The Panel therefore

declines to find a right or legitimate interest under Paragraph 4(c)(i).

The means of proving rights or legitimate interests in Paragraph 4 (c) are

not exhaustive. The Respondent might, for example, have a legitimate interest

in using a domain name consisting of a combination of generic words relevant

to his business (see, for example, Goldberg & Osborne v. The Advisory

Board Forum, Inc., WIPO Case No. D2001-0711

on <theinjurylawyers.com> and The Leading Hotels of the World Ltd.

v. Online Travel Group, WIPO Case No.

D2002-0241 on <leadinghotelsworldwide.com> and two others). However,

the disputed domain name is more than a set of relevant generic descriptors.

It is a fanciful repetition of a slang term followed by its common English equivalent,

which makes no grammatical sense apart from almost exactly mimicking the Complainant’s

trademark and identifying his field of business. In light of this, it should

have been apparent to the Respondent when it received the Complainant’s email

of June 2, 1999 that the use of the domain name could give rise to

confusion with the Complainant’s trademark. The strong impression created by

the Respondent’s subsequent use and its silence in this proceeding is that it

either accepted the risk, or was reckless as to its existence. In the Panel’s

view, the mere fact that the domain name included generic descriptors relevant

to the Respondent’s business does not of itself give rise to a legitimate right

or interest on these facts.

The Panel therefore finds that the Respondent has no rights or legitimate interests

in the domain name.

C. Registered and Used in Bad Faith

Under Paragraph 4 (a) (iii) of the Policy, the Complainant must prove that

the disputed domain name was registered and is being used in bad faith. Paragraph

4(b) sets out certain circumstances which, in particular but without limitation,

are to be construed as evidence of both. These include inter alia Paragraphs

4(b)(i) and (iv):

• Circumstances indicating that the domain name was registered or acquired

primarily for the purpose of selling, renting, or otherwise transferring it

to the Complainant trademark owner, for valuable consideration in excess of

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

• By using the 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 mark as to source, sponsorship,

affiliation, or endorsement of its website or of a product on that site.

The Complainant’s principal case on bad faith is that the domain name was registered

with the intent to sell it to the Complainant for a profit. The Complainant

points to the Respondent’s statement in its letter of June 24, 2003,

that it was prepared to sell for an offer in the region of $18,000, and

to its rejection of the Complainant’s counter-offer of $1,000. The Complainant

contends that a figure in excess of $1,000 must surely exceed the Respondent’s

out-of-pocket expenses relating to a domain name which apparently had been used

only to re-direct visitors to an existing site.

This argument, however, presents difficulties. The Panel is prepared to accept

that the consideration sought by the Respondent is in excess of ordinary out-of-pocket

registration fees, and that the Respondent has done nothing to justify it through

documentation of expenses. However, Paragraph 4(b)(i) is not satisfied by proof

of a mere willingness to sell for an inflated price; it requires an actual finding

that the domain name was registered primarily for the purpose of sale.

If the disputed domain name had been registered for the purpose of sale to

the Complainant, one would have expected the Respondent to have invited an offer

when the Complainant first approached it in June 1999, rather than waiting four

more years until the Complainant renewed its objection. The Panel accepts that

the mere absence of an earlier offer is not conclusive that the Respondent did

not intend all along to sell the domain name to the Complainant. However, it

does weigh against such a finding in a way which can only be overcome by other

evidence of the Respondent’s expressed, or presumed, intent. In this case, there

is no such further evidence. The Panel therefore declines to find bad faith

registration and use based on Paragraph 4(b)(i).

The Complainant’s second case is that the Respondent’s overall conduct manifests

bad faith. The Complainant points to what he refers to as four years of passive

holding, which was in fact re-directional use for some of that time, and to

the Respondent’s sudden and unexplained changes in use when it knew that a complaint

might be filed. Indeed, the timing and nature of those sudden changes suggest

an effort to shore up a weak position. They, together with the decision to use

taken in the knowledge that a risk of confusion existed, point to use in bad

faith. However, on the particular facts of this case, they are not enough in

the Panel’s view to support a finding of registration in bad faith. As explained

above, the disputed domain name consists of generic descriptors which, although

fanciful overall in combination, could conceivably have been arrived at by the

Respondent independently. There is no evidence that either party knew, or should

have known, of the other’s existence at the time of registration given the small

size of the Complainant’s business and the 800 or so miles separating the parties.

There is therefore no evidence that the act of registration itself was tainted.

There is, however, a further ground on which the Complainant made no submissions.

Paragraph 4(b)(iv) of the Policy provides that bad faith registration and use

shall be found if there are circumstances indicating that, by using the 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 mark as to source, sponsorship, affiliation, or endorsement

of its website or a product on it. There are circumstances indicating that such

a finding may be appropriate. They are:

• The Respondent used the domain name in an attempt to attract Internet

users to its website, with a view to commercial gain;

• The domain name almost exactly mimicks the Complainant’s trademark

and identifies his field of business, and there is a real risk of confusion

as to the source or affiliation of products on the Respondent’s website;

• When the Respondent began use, it knew of the Complainant’s trademark

and therefore knew, or should have perceived, that there was a risk of confusion;

and

• According to the Complainant, actual confusion ensued.

The Panel must be satisfied that the Respondent’s use was an intentional attempt

to attract Internet business by creating a likelihood of confusion. Of these

criteria, it is clear that the Respondent used the domain name in an attempt

to attract business. It is also apparent that the Respondent’s use created a

likelihood of confusion, which gave rise in fact to instances of actual confusion.

The final element, "intent," is less straight-forward. There is no

evidence that the Respondent actually hoped to profit from the confusion which

was likely to arise from use of a domain name that was confusingly similar to

the Complainant’s trademark. However, in the Panel’s view, the meaning of intent

is wider than that; it encompasses not only state of mind, but also overall

purpose. In this case, the Respondent’s purpose in using the domain name was

to profit commercially from Internet traffic routed to its "www.plantationcoffee.com"

website. The Respondent used the domain name for this purpose despite its awareness

that there was a risk of confusion with the Complainant’s trademark. In the

absence of any reasoned explanation for the Respondent’s actions, the Panel

infers that the Respondent accepted the risk of confusion as part of its attempt

to attract business. In the Panel’s view, that amounts on these facts to an

intentional attempt to attract business by creating a likelihood of confusion.

These circumstances indicate bad faith use and presumed bad faith registration

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

The Panel therefore finds that the Respondent has registered and used the domain

name in bad faith.

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 domain name <javajavacoffee.com>

be transferred to the Complainant.

Angela Fox

Sole Panelist

Date: November 27, 2003