Decision for dispute CAC-UDRP-108295

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

In these proceedings, the Complainant mainly relies on the following trademarks:

- BLUE BOTTLE COFFEE (word), US Trademark Registration Serial No. 85958262, registered on January 21, 2014 and duly renewed, in the name of Société des Produits Nestlé S.A. (the Complainant), where Respondent is apparently located;

- BLUE BOTTLE COFFEE (word), US Trademark Registration Serial No. 88471899, registered on August 11, 2020, in the name of Société des Produits Nestlé S.A. (the Complainant), where Respondent is apparently located;

- BLUE BOTTLE COFFEE (word), International Trademark Registration No. 1227790, registered as of November 4, 2014, in the name of Société des Produits Nestlé S.A. (the Complainant);

- BLUE BOTTLE COFFEE (word), EU Trademark Registration No. 018165426, registered on August 22, 2020, now in the name of Société des Produits Nestlé S.A. (the Complainant).

It is worth noting that, the Complainant owns a plethora of other similar trademarks, covering many countries of the world, which have not been cited in these proceedings.

The Complainant is one of the largest food and beverage multinational groups of companies, first created back in 1866 in Switzerland, with thousands of employees nowadays, active in the majority of countries around the world, including the United States of America, where the Respondent is apparently based.

The Complainant owns a large portfolio of trademarks worldwide, including the wording "BLUE BOTTLE COFFEE", among which a US registration dating back to January 2014 (although used in commerce already since 2002). It also owns a multitude of related domain names, such as <bluebottlecoffee.com> since 5/8/2002.

The disputed domain name <bluebottleus.com> was registered on June 16, 2025 by the Respondent.

COMPLAINANT

The Complainant contends that the disputed domain name is confusingly similar to its BLUE BOTTLE COFFEE trademark, as it is a combination of this mostly incorporated trademark and of a geographical term. This last element is sufficient to support the finding that the disputed domain name is confusingly similar to the Complainant's trademark. Indeed, the mere omission of the generic term “COFFEE” and the addition of the simple letters “-US” after the Complainant’s trademark does not change the overall impression of a most likely connection with the trademark BLUE BOTTLE COFFEE of the Complainant. As to the gTLD “.com”, the Complainant suggests that it should be disregarded, as per the usual practice.

The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent is not known by the disputed domain name, the Complainant is not affiliated with the Respondent nor has it ever authorised the Respondent to register its trademark as a domain name, and the Complainant has no business with the Respondent.

According to the Complainant, given the seniority, distinctiveness and worldwide reputation of the BLUE BOTTLE COFFEE trademark, the Respondent registered the disputed domain name with full knowledge of the Complainant's trademark in an intentionally designed way, with the aim to create a likelihood of confusion with the Complainant’s trademarks and domain names, and this is evidence of the fact that the disputed domain name was registered in bad faith. The omission of the word “COFFEE” and the addition of the letters “-US” does not change this view.

With respect to use in bad faith, the Complainant points out that the Respondent has passively held the disputed domain name in an inactive website, a fact that, in combination with the incorporation of a famous trademark in a domain name, proves use in bad faith. Further, the Complainant points out several other facts, such as the hiding of the Respondent behind a privacy service, the impossibility of reaching the Respondent due to its fake data and the previous use by the Respondent of the disputed domain name, for the sale of identical products to the Complainant’s, while in fact impersonating the latter.

For all these reasons, the Complainant concludes that the Respondent registered and used the disputed domain name in bad faith.

RESPONDENT

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The disputed domain name substantially consists of the Complainant's whole trademark (BLUE BOTTLE), the omission of the descriptive word “COFFEE” and the addition of the country code “-US” after which is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark of the Complainant.

As far as the gTLD ".com" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

Since proving a negative fact is almost impossible, panelists in UDRP proceedings have generally agreed that it is sufficient for the Complainant to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the Respondent.

In the case at issue, the Complainant argued that it had never authorised the Respondent to register the BLUE BOTTLE (COFFEE) trademark in a domain name, and that it had never licensed its trademark to the Respondent.

Furthermore, the Respondent has not demonstrated any use of the disputed domain name in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the disputed domain name.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the disputed domain name.

In view of the foregoing, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. In order to rebut the Complainant's arguments, the Respondent had the possibility to make his own defense. However, the Respondent has chosen not to file a Response.

Therefore, the Panel is satisfied that also the second requirement under the Policy is met.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

As far as registration in bad faith is concerned, given the wide reputation of the Complainant's BLUE BOTTLE COFFEE trademark and the fact that the disputed domain name substantially incorporates this trademark, it is rather clear that, at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant's trademark. The registration as a domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith.

With respect to use in bad faith, the disputed domain name resolves to an inactive website. For this Panel, such behaviour combined with the well-known character of the Complainant’s trademark clearly amounts to use in bad faith. At the same time, several other facts – according to the Complainant and not refuted by the Respondent – such as the hiding of the Respondent behind a privacy service, the impossibility to reach the Respondent due to its fake data and the previous use by the Respondent of the disputed domain name, for the sale of identical products to the Complainant’s, while in fact impersonating the latter, make it impossible for this Panel to conceive any plausible active use of the disputed domain name by the Complainant that would be legitimate.

Therefore, the Panel finds it clear that the disputed domain name was used in bad faith.

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The disputed domain name substantially incorporates the Complainant's trademark, accompanied by a geographical abbreviation/term. The disputed domain name is therefore confusingly similar to the Complainant's trademark.

The Respondent was not authorised to include the Complainant's trademark in the disputed domain name, and the Complainant never licensed its trademark to the Respondent. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

The Respondent registered the disputed domain name with full knowledge of the Complainant's well-known trademark. Its use of the disputed domain name is in bad faith, as there is no conceivable use of the disputed domain name that could amount to a legitimate use.