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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coffee Nation Limited v. Coffee Nation, Inc.

Case No. D2008-0492

1. The Parties

The Complainant is Coffee Nation Limited, Buckinghamshire, United Kingdom of Great Britain and Northern Ireland, represented by Bromhead Johnson, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Coffee Nation, Inc., Bloomington, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <coffeenationroastery.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2008. On April 1, 2008, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. A response to this request was not received by the Center. On April 3, 2008, the Centre transmitted by email to Register.com a further request for registrar verification in connection with the domain name at issue. On April 3, 2008, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 April 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2008. The Response was filed with the Center on April 30, 2008.

The Center appointed John Swinson as the sole panelist in this matter on May 9, 2008. 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 company based in Buckinghamshire, United Kingdom of Great Britain and Northern Ireland (“UK”). It supplies and services a large number of self-service coffee bars throughout the UK. From its coffee bars, the Complainant supplies coffee and hot chocolate. The Complainant also operates a website at “www.coffeenation.com” where customers can obtain information about, and provide feedback on, the Complainant’s products.

The Complainant is the proprietor of a registered British Trademark containing a stylised version of the words “coffee nation” which was registered on May 11, 2001. The Complainant is also the proprietor of two registered European Community Trademarks containing the words COFFEE NATION. These marks were registered on June 5, 2002 and March 14, 2007.

The Respondent is a company based in Illinois, United States of America. The Respondent operates an Internet shopping service under the name “Coffee Nation Microroastery” using the disputed domain name, and offers a range of coffee and tea products for sale.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The disputed domain name contains words which are identical to words protected by the Complainant’s trademarks. There is a likelihood that the public would be confused because of the similarities between the disputed domain name and the Complainant’s marks.

The Respondent sells products identical or similar to those traded by the Complainant from the disputed domain name. The Respondent’s use of the disputed domain name will mislead, divert and confuse customers.

The Respondent has no right to trade under the brand COFFEE NATION and is attempting to create a commercial connection between the Respondent’s business and the Complainant’s successful brand.

The Complaint was not detailed.

B. Respondent

The Respondent makes the following contentions:

The Respondent operates under the business name “Coffee Nation Microroastery”. The disputed domain is essentially the business name of the Respondent. The Respondent is commonly known and referred to by this name.

The Respondent was established without any prior knowledge of the Complainant who is unknown in the United States. The Respondent is a small company operating at a local level in Illinois, and use of the words “Coffee Nation” in Illinois does not infringe on the Complainant’s European Community or British trademarks.

The term “coffee nation” is general and generic and used in everyday parlance.

The Respondent does not sell similar or identical products to the Complainant. The Respondent roasts and sells coffee beans and the Complainant sells vending machines.

The Respondent uses the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was not acquired for the purpose of selling, renting or otherwise transferring the domain name to the Complainant. The Respondent only offered to transfer the disputed domain name to the Complainant, for an amount it considered fair, after it received notification of the Complaint.

The Respondent has not capitalised on the Complainant’s name or products in any way and has not attempted to pirate the Complainant’s name.

6. Discussion and Findings

To succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) 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

(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and

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

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights, and the disputed domain names must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of three registered marks containing the words COFFEE NATION.

The Panel therefore finds that the Complainant has registered trademark rights in relation to the term “Coffee Nation”. The next question is whether the disputed domain name is identical or confusingly similar to the Complainant’s COFFEE NATION trademark.

The disputed domain name contains the entirety of the Complainant’s trademark. It has been held in many prior panel decisions that when a domain name incorporates a distinctive mark in its entirety, it is confusingly similar to that mark despite the addition of other words (see for example Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc, WIPO Case No. D2000-0047; Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413).

The disputed domain name also contains the word “roastery”, after the Complainant’s trademark. “Roastery” is often used in connection with businesses that roast green coffee beans so that they become consumable. The Complainant roasts and packages a range of coffee beans.

It has been well-established by previous panels that the addition of a generic term such as “roastery” to a trademark does not necessarily eliminate the likelihood of confusion. There are many previous decisions which have found a domain name to be confusingly similar to a registered trademark where that name consists of the trademark coupled with a generic term. (See for example, Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727).

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out an initial prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 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 legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

It is unclear what the Complainant meant, in paragraph B of its Complaint, when it stated that “[t]he Complainant registered the domain after the dates of registration of the above trademark registrations and domain. The Complainant therefore submits that the Respondent has no right in the domain <coffeenationroastery.com>.”

It appears that the statement may contain a typographical error and should have read “the Respondent registered the domain after the dates of registration of the above trademark registrations and domain.” However, registration of a domain name after registration of a similar trademark does not, of itself, support a conclusion that the Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant also believes that the Respondent’s domain name and website will mislead, divert and confuse customers. However, there is no evidence to support this, and given the different geographic locations of the Complainant and the Respondent and the differences in website design and other branding, the Panel cannot infer confusion in this case.

The Panel is not satisfied that the Complainant has presented a prima facie case indicating that the Respondent does not have any rights or legitimate interests in the disputed domain name. Further, the Panel is of the view that the Respondent has demonstrated rights or legitimate interests in the disputed domain name.

The Respondent registered the disputed domain name on October 14, 2005, prior to receiving any notice of this dispute. The Respondent currently uses the disputed domain name in connection with a bona fide offering of goods, namely coffee and tea products. The Panel has not been provided with evidence concerning when the Respondent commenced using the disputed domain name in connection with the offering of coffee and tea products. However the following facts indicate that it was prior to the Respondent being notified of this dispute:

(a) the Complainant asserted, in its Complaint, that the products sold by the Respondent on the website connected to the disputed domain name were identical or similar to those traded by the Complainant;

(b) the website connected to the disputed domain name claims copyright protection since 2006; and

(c) the website connected to the disputed domain name contains a record of the number of requests to the website since April 27, 2007.

The Respondent does not claim any trademark rights in the words “Coffee Nation” or “Coffee Nation Roastery”. The Respondent is incorporated as Coffee Nation, Inc in Illinois. The Respondent claims that it is commonly known by its business name “Coffee Nation Microroastery”. The disputed domain name is very similar to the business name of the Respondent and is a reasonable abbreviation of that name.

There is no evidence that the Respondent uses the domain name to misleadingly divert consumers or to tarnish the Complainant’s trademarks. The Respondent is located in Illinois, and, on its evidence, operates at a local level. There is no evidence that the Respondent was aware of the Complainant, or its trademarks, prior to being notified of this dispute.

Accordingly, the Panel concludes that the Respondent has a right or legitimate interest in the disputed domain name.

C. Registered and Used in Bad Faith

As the Panel has concluded that the Respondent has established rights or legitimate interests in the disputed domain name, it is not necessary to determine whether the Complainant has met its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

John Swinson
Sole Panelist

Dated: May 16, 2008