Starbucks Corporation v Leadbitter

Factual and Procedural Background

The Complainant, Company A, is the registered proprietor of numerous trade marks comprising the word mark "STARBUCKS" and "STARBUCKS COFFEE," including UK and Community Trade Marks predating the disputed Domain Name registration. Company A operates internationally, with extensive commercial presence and reputation in coffee and related products since 1971.

The Respondent, an individual, registered the disputed Domain Name in May 2004. The Domain Name resolves to a website that reproduces Company A's registered logo with derogatory alterations and contains statements falsely alleging product recalls and encouraging defacement of Company A's property. The website also links to additional critical sites and lacks clear disclaimers indicating non-affiliation with Company A.

The Complaint was filed with Nominet UK on September 28, 2004. After validation, the Respondent was notified and given time extensions to respond. An informal mediation was attempted but failed, leading to the appointment of an Expert by Nominet on December 9, 2004, to decide the dispute under the Nominet Dispute Resolution Service Policy ("the Policy").

Legal Issues Presented

1. Whether the Complainant has Rights in respect of a name or mark identical or similar to the disputed Domain Name under the Policy;
2. Whether the disputed Domain Name, in the hands of the Respondent, constitutes an Abusive Registration as defined by the Policy;
3. Whether the Respondent’s use of the Domain Name qualifies as fair use under paragraph 4(b) of the Policy, including whether the website is a legitimate protest or criticism site;
4. Whether the Respondent has rights or legitimate interests in the disputed Domain Name;
5. Whether the Respondent is engaged in a pattern of abusive registrations under paragraph 3(a)(iii) of the Policy.

Arguments of the Parties

Complainant's Arguments

• The Complainant holds registered UK and Community trade marks for "STARBUCKS" and "STARBUCKS COFFEE" that pre-date the disputed Domain Name registration.
• The disputed Domain Name is identical or highly similar to the Complainant’s trade marks, disregarding generic domain suffixes.
• The Respondent’s website infringes the Complainant’s copyright by reproducing and defacing the registered logo.
• The website falsely alleges product recalls, deceiving the public and tarnishing the Complainant’s reputation.
• The Respondent’s use of the Domain Name is unauthorized and intended to unfairly disrupt the Complainant’s business by diverting customers to a critical site.
• The Respondent lacks rights or legitimate interests in the Domain Name and is not known by the mark or any similar derivative.
• The Respondent is engaged in a pattern of abusive registrations, as evidenced by additional domain names registered incorporating the Complainant’s marks.
• The disclaimers on the website are inadequate to prevent confusion or to demonstrate fair use under the Policy.

Respondent's Arguments

• The Response was a brief, unsigned letter denying formal legal argument and included stickers depicting the Complainant’s logo with derogatory wording for personal use only.
• The Respondent did not provide factual or legal submissions addressing the Complaint or the Policy's requirements.

Table of Precedents Cited

Court's Reasoning and Analysis

The Expert applied paragraph 2 of the Policy requiring the Complainant to prove Rights in a name or mark identical or similar to the disputed Domain Name and that the Domain Name is an Abusive Registration.

The Expert found the Complainant’s trade mark rights established and undisputed. The disputed Domain Name is identical or highly similar to the Complainant’s marks when disregarding generic suffixes, satisfying the first requirement.

Regarding abusiveness, the Expert considered the definition in paragraph 1 of the Policy and the examples in paragraph 3(a), as well as the fair use exception in paragraph 4(b). The Respondent’s website was examined and found to be hostile and derogatory, encouraging defacement of Company A’s property and containing misleading statements about product recalls.

The Expert determined that the website was not a legitimate protest site as contemplated by paragraph 4(b), and therefore the burden of proof rested on the Respondent to show the Domain Name was not abusive. The Respondent failed to meet this burden, providing no substantive defense or invocation of fair use rights.

The Expert found the website’s disclaimer inadequate and insufficient to prevent confusion or to negate abusive registration. Furthermore, evidence of additional domain names registered by the Respondent incorporating the Complainant’s marks suggested a pattern of abusive registrations under paragraph 3(a)(iii).

Accordingly, the Expert concluded that the disputed Domain Name is an Abusive Registration under the Policy.

Holding and Implications

The Expert’s final decision is to ORDER THE TRANSFER of the disputed Domain Name from the Respondent to the Complainant.

This decision directly resolves the dispute between the parties by depriving the Respondent of control over the Domain Name and granting it to the Complainant. No new legal precedent was established beyond the application of the existing Nominet Dispute Resolution Service Policy and prior decisions cited.