WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Illycaffè S.p.A. v. Webtrade Online-Marketing Ltd. Case No. D2009-1500 1. The Parties
The Complainant is Illycaffè S.p.A., Trieste, Italy, represented by Kivial s.r.l.
The Respondent is Webtrade Online-Marketing Ltd., London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH d/b/a . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2009 via e-mail and a hardcopy version on November 6, 2009. On November 6, 2009, the Center transmitted by email to the registrar a request for registrar verification in connection with the disputed domain name. On the same day, the registrar 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” or “UDRP”), 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 November 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2009. The Respondent did not submit any response within the given deadline. Accordingly, the Center notified the Respondent's default on December 2, 2009.
The Center appointed Christian Schalk as the sole panelist in this matter on December 8, 2009. 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.
The Panel has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English. 4. Factual Background
The Complainant, founded in 1933, produces and sells high quality espresso coffee, which is marketed in 140 countries where it is served in more than 50,000 coffee shops and restaurants. In this context, the Complainant created a chain of Italian-style bars, called “Espressamente Illy”, which operates under a licensing agreement. Since 2003, more than 150 bars have been opened in 20 countries. In 2007, the Complainant had a consolidated turnover of EUR 270 million and a net profit of EUR 7 million. More than 50% of its sales are generated through exports.
The Complainant owns a number of trademark rights in the ILLY mark in Italy and abroad for instance:
- Italian trademark registration no. 587028 for the word mark ILLY, application date December 16, 1992, covering goods and services in international classes 9, 11, 21, 30 and 33;
- International registration no. 600695 for the word mark ILLY with protection in 29 European countries as well as China, Cuba and Vietnam, registration date May 26, 1993, covering goods and services in international classes 9, 11, 21, 30, 33;
- International registration no. 665518 for the word & device mark ILLY with protection in 35 European and Central Asian countries as well as China, Cuba and Vietnam, registration date October 9, 1996, covering goods and services in international classes 11, 30, 42;
- European Community Trademark registration no. 1273044 for the word mark ILLY, application date August 6, 1999, covering goods and services in international classes 2, 3, 4, 6-9, 11-17, 19-24, 26-28, 30-31, 33-42;
- European Community Trademark registration no. 1272103 for the word & device mark ILLY, application date August 6, 1999, covering goods and services in international classes 2, 3, 4, 6, 8, 9, 12-15, 17-23, 26-29, 31, 33-41.
The Complainant has owned the domain names and since 1996 and has used them since then for its company websites. The Complainant has registered the term “illy” as domain name also under the regional extensions “.asia” and “.eu” and several country code Top Level Domains such as “.fi”, “.ie”, “se” and “.”.
The Respondent has registered the disputed domain name on January 10, 2006. The disputed domain name resolves to a website which provides links to coffee shops as well as to competitors of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to the Complainant's trademark ILLY. The Complainant believes that its trademark is very distinctive since it quotes to an uncommon Italian family name, has no specific meaning in other languages and is well-known in the coffee market. In this context the Complainant explains that its ILLY products can be found also in all important supermarket chains in the United Kingdom where the Respondent lives, like Tesco, Waitrose and Sainsbury's.
The Complainant believes also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant explains that it has not licensed or otherwise permitted the Respondent to use it's ILLY trademark or to apply for or use any domain name incorporating this trademark and that the Respondent has not been commonly known by the disputed domain name. The Complainant alleges further that world-wide trademark searches revealed that the Respondent apparently does not have any trademark rights in the term “illy”. Moreover, the Complainant reports that the disputed domain name has been linked to a generic thematic search page concerning coffee which contains links that are dynamically created by specific software. This software analyses domain names and tries to catch the best research results available based on the meaning of the words in the domain name itself. The use of the term “illy” reveals links to coffee-themed links. The Complainant believes that such use of the disputed domain name by the Respondent does not constitute evidence of the Respondent's use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services.
The Complainant submits further that the disputed domain name was registered and is being used in bad faith. The Complainant asserts that the disputed domain name has never been used actively since its registration in 2006, which is in its view a clear indication that the Respondent never really used the domain name and therefore, holds it in bad faith. The Complainant argues also that the non-use of the domain name combined with bad faith when the registration was made is an indication of bad faith use. The Complainant cites in this context Telstra Corporation Limited v. Nuclear Marshmallows ,WIPO Case No. D2000-0003. The Complainant contends further that the Respondent has put on sale the disputed domain name through an auction site which in its view also constitutes bad faith use. The Complainant cites Wagamama Limited v. Transure Enterprise Ltd.,WIPO Case No. D2008-1200, Owens Corning v. NA, WIPO Case No. D2007-1143, and Smith & Nephew plc v. Wesley Perkins, Smith and Newphew Trading,WIPO Case No. D2008-1029 to support its argument. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:
(i) the domain name 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the ILLY mark. The disputed domain name is identical with the ILLY mark, in which the Complainant has trademark rights.
Therefore the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In light of the evidence brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark. Moreover, the fact that the Respondent has linked the disputed domain name to a website which provides links also to competitors of the Complainant cannot constitute a legitimate noncommercial or fair use of the disputed domain name. It does not make a difference in this context whether such links are automatically generated or not.
The Panel finds that the Complainant has satisfied the second element of paragraph 4(1) of the Policy. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for a complainant to show bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(2) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
In light of the evidence brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that the domain name registrant represents and warrants to the registrar that inter alia, to the registrant's knowledge the registration of the domain name will not infringe the rights of any third party.
Given the reputation of the Complainant, its world-wide market presence (including in the United Kingdom where the Respondent lives) and especially the fact that its products are available in all major supermarkets and that coffee shops and restaurants selling its coffee often have signs outside depicting the Complainant's ILLY word and device mark, the Panel finds that the Respondent must have been well aware of the Complainant's trademark when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain name in bad faith.
For the reasons explained below, the Panel finds that the Respondent is using the disputed domain name in bad faith.
Offering the disputed domain name for sale on an auction platform can constitute an indication of bad faith use. This has been decided by Panelists in other UDRP cases already (see for instance, Wagamama Limited v. Transure Enterprise Ltd.,WIPO Case No. D2008-1200; Owens Corning v. NA, WIPO Case No. D2007-1143 and Smith & Nephew plc v. Wesley Perkins, Smith and Newphew Trading,WIPO Case No. D2008-1029). In the present case however, the Complainant has not brought any evidence to support this particular allegation.
The website to which the disputed domain name resolves provides links to information on coffee in general but also to coffee produced and marketed by competitors of the Complainant. It is a well-known fact that Internet users, searching for products of a specific company, for instance, coffee of the Complainant, do often type freestyle addresses that combine trademarks and descriptive words (for instance, “illy” and “coffee”) hoping to narrow down their search results. The links provided at the disputed domain name could lead Internet users to believe that this website is either maintained by the Complainant or by a third person who is somehow linked with the Complainant. Furthermore, the likelihood for confusion is extremely high because the Complainant uses an identical domain name under other generic Top Level Domains as well as under regional endings and a number of country code Top Level Domains for its services. Since trademark owners also frequently register their trademarks as domain names with the gTLD “.info”, Internet users may intuitively type in the disputed domain name.
The Panel believes that the Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal (see also Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231). Furthermore, the Respondent's behavior may also enable others, especially competitors of the Complainant, to take advantage of the fact that Internet users are directed to their website instead of the Complainant's website. The only reason for this would be the infringement of the Complainant's trademark rights by the Respondent which allows a third party to reap the profit of such wrongful conduct (see also Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Christian Schalk
Sole Panelist
Dated: December 22, 2009
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