Nominet UK Dispute Resolution Service

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Cite as: [2002] DRS 402

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Nominet UK Dispute Resolution Service

DRS 00402

Starbucks Corp. -v- David Bucknall

Decision of Independent Expert

Parties:

Complainant: Starbucks Corporation

Country: GB/USA

Respondent: Mr David Bucknall

Country: GB
Domain Name:
starbucks.co.uk ("the Domain Name")
Procedural Background:
The Complaint, dated 17 May 2002, was received by Nominet on 21 May 2002. Nominet validated the Complaint, notified the Respondent of the Complaint and informed the Respondent that he had 15 working days within which to lodge a Response. The Response was submitted on 18 June 2002 and forwarded to the Complainant on the same day, with an invitation to make a Reply within 5 working days. The Reply, was submitted on 27 June 2002. An Informal Mediation process followed, which failed to achieve a settlement. On 29 July 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On 31 July 2002, Martin Campbell-Kelly, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. In accordance with Nominet's rules the Expert has not been shown any of the materials generated during mediation.
Outstanding Formal/Procedural Issues (if any):
The Respondent has made a statement that he was unable to obtain "certain critical information" within the timescale set for his Response. This appears to relate to tangible evidence that the Respondent has been using the name "StarBuck" or "StarBucks" in about 1991. In the opinion of the Expert, had such evidence been provided it would not have affected the Expert's Decision.
The Facts:
The Complainant, Starbucks Corporation, is a multinational coffee-house and related services company incorporated in the United States in 1971. The Complainant registered the trademark "STARBUCKS" in the United Kingdom on 15 July 1992 (No. 1506914), and subsequently registered the company's distinctive logo in 1994.

The Respondent, David Bucknall, registered the Domain Name on 15 July 1997. The registration was made in the name of "StarBucks".

During August and September 1999 there was inconclusive e-mail correspondence between the Complainant and the Respondent in which the Complainant sought to acquire the Domain Name.

On 7 December 1999 the Respondent or his agents registered the company name "StarBucks.co.uk Ltd." (Company Registration Number 3889454).

On 11 January 2002 the Complainant's law agents, Wragge & Co. (Birmingham UK ), wrote to the Respondent setting out the grounds for a complaint under Nominet UK's Dispute Resolution Service. No reply was received from the Respondent and the Complainant lodged the Complaint with Nominet UK on 21 May 2002.
The Parties' Contentions:

Complainant:
The substance of the Complaint is as follows:
1. The Complainant, Starbucks Corp., is a firm with 5,000 retail outlets in 25 countries, including the UK. The firm advertises widely and consequently is very well known in all the countries in which it trades. The Complainant began trading in the UK during 1998.
2. The Complainant became aware of the Domain Name registration in about August 1999. The site purported to be a family website but also contained commercial material. On 16 August 1999 the Complainant made an e-mail request to the Respondent to transfer the Domain Name to the Complainant. The Respondent's agent (Ron Starker) replied on 22 September stating that the website was a family website, and offered to remove the non-family related material. (This email correspondence was annexed to the Complaint.)
3. In October 2001 the Complainant received notification from a UK customer that the Domain Name resolved to a site which contained material critical of the Complainant. (Printouts of the relevant web pages were annexed to the Complaint.)
4. On 11 January 2002 the Complainant wrote to the Respondent's agent (Ron Starker) setting out the grounds for a complaint under Nominet UK's Dispute Resolution Service. No response was received.
5. The Respondent subsequently removed the critical and commercial material from the website and added the legend "This site is for the sole use by invited friends and family of the Starker and Bucknall families" and that the material in the website was copyright of "StarBucks.co.uk".
6. The Complainant subsequently verified that StarBucks.co.uk. Limited was registered as a company on 7 December 1999.
7. The Complainant points to the fact that if the name "StarBucks" was intended to reflect the family name Starker and Bucknall, then the additional "s" was superfluous and was a "sham" which disclosed the Respondent's intention to use the Domain Name partly for commercial purposes and to criticise the Complainant.
8. The Complainant submits that:
  
  the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business, either by unfairly diverting users seeking information on the Complainant, or by promoting information which is critical to the Complainant;
  
  the Domain Name resolves to a website which has contained material critical to the Complainant; there were no disclaimers or warnings and this could potentially mislead users to suppose that the site was endorsed by the Complainant as a forum for discussion. The potential for confusion is increased by the fact that the registered holder of the Domain Name is "StarBucks", the name of the Complainant. The recent inclusion of a disclaimer stating that the copyright is owned by "StarBucks.co.uk" only adds to the potential for confusion.
  
  (DRS Case 00048 Pharmacia-v-Wagstaff and Court of Appeal case BT plc -v- One in a Million (1999 FSR 1) were cited in support of the above contentions, and copies were provided as annexes to the Complaint.)
Respondent:
The substance of the Response is as follows:
1. The Respondent placed on record the fact that he had had insufficient time to obtain "certain critical information" in preparing his Response.
2. The Domain Name was registered on 15 July 1997 in good faith. No other business was known to be using the name in the UK, and the Respondent was unaware of the existence of the name "Starbucks Coffee" anywhere in the world.
3. "StarBuck" is a joint nickname for the Starker and Bucknall families. When Ron Starker and Kate Bucknall (the Respondent's sister and brother-in-law) were married on 10 June 1992 they considered changing the family name to Starbuck. Use of this nickname was shown in an annexed copy of a family newsletter titled "StarBuck Times" dated 1998. (Older copies were said to be available on request.)
4. In 1999 the Respondent requested Nominet to change the name of the registrant of the Domain Name from "StarBucks" to "StarBucks.co.uk" and then later to "StarBucks.co.uk Ltd." It is not known why the registration is still listed as "StarBucks".
5. Subsequent to the e-mail interactions with StarBucks in August and September 1999, the Respondent agreed to schedule a telephone discussion. This offer was not taken up, and the Respondent assumed that the Complainant was no longer interested in discussing the issue.
6. The Respondent did not receive the letter from the Complainant dated 11 January 2002.
7. The Domain Name was registered before the Respondent began to trade in the UK in 1998.
8. The Respondent argued that an Internet user would be likely to look first for the name of a major firm with a "com" first level domain.
9. The Respondent argued that it was not acceptable to ignore the "co.uk" suffix, and that "StarBucks.co.uk" was therefore different to "StarBucks".
10. The Respondent cited a number of domain names which contained a registered trademark stem, such as "AMEX" and "Stagecoach."
11. The Respondent pointed to the lack of evidence to support the Complainant's assertion that a customer had complained about the Respondent's website.
12. The material critical of Starbucks Corp. was placed on the website by a hacker, unknown to the Respondent, and security was subsequently improved.
13. The Respondent has never made any commercial gain from the Domain Name and it has never been offered for sale.
Complainant's Reply:
The substance of the Complainant's Reply is as follows:
1. The e-mail correspondence of August-September lapsed because the Respondent had removed the commercial and critical content from the website and the Complainant therefore decided not to pursue the matter further.
2. Although the Respondent claimed not to have received the Complainant's letter of 11 January 2002, the critical material on the website was subsequently removed.
3. The Complainant disputed the Respondent's assertion that the Respondent did not know of any firm trading as Starbucks Coffee "anywhere in the world". The Complainant noted that the Respondent's sister had studied at Harvard University in 1996-97, in the United States where Starbucks is a household name, and that there were four stores operating close to the Harvard campus. Further, the Complainant has operated a website www.starbucks.com since October 1993.
4. The Respondent registered the company StarBucks.co.uk. on 7 December 1999, after the Domain Name was registered.
5. The Complainant pointed to the Respondent's claim that a hacker placed the critical content on the website, and asserted that the owner of a website must be held responsible for its content.
6. The Complainant pointed to the lack of evidence of the use of the nickname "StarBuck" or "StarBucks" dating back to 1991. It was noted that even if the Domain Name had been initially registered in good faith, it had subsequently been used abusively.
Discussion and Findings:

General:
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights:
The Complainant has supplied evidence that it has Rights in the name STARBUCKS. This evidence included UK certificates of registration for the trade mark STARBUCKS and for logos containing the name STARBUCKS dating from 1992 and 1994, respectively.

The Respondent has argued that he registered the Domain Name on 15 July 1997, before the Complainant began trading in the UK in 1998, and that the Complainant did not therefore have Rights at the time that the registration was made. The fact that the Complainant was not actively trading in the UK at the time the Domain Name registration was made does not affect the Complainant's Rights in a registered trade name.

The Respondent asserts that he was unaware of the existence of the name Starbucks Coffee anywhere in the world at the time the registration was made. The Expert, like the Complainant, finds this assertion extraordinary. However, it does not affect the Complainant's Rights in the name STARBUCKS.

The Respondent asserts that the name "StarBuck" has been used as a family nickname since about 1991. No tangible evidence was presented for this assertion, but in any case such private and informal use would not affect the Complainant's Rights in the name Starbucks.

The Respondent registered a company in the name of StarBucks.co.uk Ltd. on 7 December 1999, subsequent to the registration of the Domain name. This post-hoc development does not affect the Complainant's Rights in the name Starbucks.

The Expert finds that the Complainant has Rights in respect of a name which is identical to the Domain Name.
Abusive Registration:
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy.

The Complainant has submitted that the Respondent has registered the Domain Name "primarily for the purpose of unfairly disrupting the Complainant's business". This corresponds to factor 3.a.i(C). Printouts of critical web pages from the Respondent's website, dated 17 December 2001, were provided in evidence as Annex G of the Complaint.

The Complainant has argued that confusion could arise as to the ownership of the website because it is registered in the name of "StarBucks" and there is a statement that the site is copyright of "StarBucks.co.uk". This assertion corresponds to factor 3.a.ii. The Complainant cited a notification from a member of the public as evidence of such confusion, but did not provide any tangible evidence.

The Expert finds that factor 3.a.i(C) applies. Although the Respondent has claimed that the critical material was "hacked", the Expert accepts the Complainant's submission that the owner of website is responsible for its content. The Expert is not of the opinion that an Internet user entering the website would be confused into thinking that the website is operated by the Complainant, and therefore factor 3.a.ii does not apply. However, it is sufficient that one factor in Section 3 applies for the Expert to find that the Domain Name is abusive.

Paragraph 4a of the Policy gives a non-exhaustive list of factors by which the Respondent may demonstrate that the Domain Name is not an Abusive Registration.

The Respondent has asserted that no commercial use has been made of the site and that its use as a criticism site was due to a hacker. Hence neither 4.a.1(A) nor 4.a.1(C) apply. The Respondent has only used the name "StarBuck" or "StarBucks" in a private, family context, and has no legitimate connection with the name other than having recently registered the company name "StarBucks.co.uk Ltd." Hence 4.a.i(B) does not apply.

For factor 4.a.ii to apply the name STARBUCKS would have to be generic or descriptive. In the opinion of the Expert the name is neither.

The Expert finds no other significant factors that might be evidence that the site is non-abusive.

In the view of the Expert, the Respondent has taken unfair advantage of the Complainant's Rights in two respects:
1. The registration prevents the Complainant from using the URL www.starbucks.co.uk, which is likely to be the initial guess of a UK Internet user seeking the Complainant's website;
2. The Respondent has used the Domain Name for purposes detrimental to the Complainant's business, could repeat this behaviour in the future, or could sell the Domain Name to a competitor or a third party for purposes detrimental to the Complainant's business.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant's Rights.
Decision:
In light of the foregoing findings, namely that the Complainant has Rights in respect of a name or mark which is the same as the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, starbucks.co.uk, be transferred to the Complainant.

Martin Campbell-Kelly

Date: 16 August 2002

Complainant:	Starbucks Corporation
Country:	GB/USA

Respondent:	Mr David Bucknall
Country:	GB