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The Marigny Corporation v. Discount Coffee.com, Inc. [2001] GENDND 972 (17 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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.

The domain name at issue is ("Domain Name"): <standardcoffeeservice.com>.

The registrar is Network Solutions, Inc. of Herndon, Virginia, United States of America.

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.

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.

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.

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.

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.

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.

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., [1985] USSC 8; 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.

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