The Complainant is Luigi Lavazza S.p.A. of Torino, Italy, represented by Studio Barbero, Italy.
The Respondent is Park HyungJin of GimHae, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2013. On September 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 2013, 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 October 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2013.
The Center appointed Nicholas Weston as the sole panelist in this matter on November 7, 2013. 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 language of this administrative proceeding is English, being the language of the registration agreement.
Having regard to the Complainant’s submissions and the location of the principal office of the Registrar, it appears that the applicable mutual jurisdiction1 is the State of Florida in the United States of America (“United States”).
Finally, the Panel finds that the Respondent has received appropriate notice of this proceeding and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. Prima facie evidence of this is the courier’s delivery report to the Center following physical notification of the Written Notice of the Complaint to the Respondent. Even so, the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of actual service. 4. Factual Background
The Complainant operates a coffee business trading in more than 90 countries with over 4,000 employees. The Complainant holds registrations for the LAVAZZA trademark and variations of it in numerous countries including the United States and Korea, which it uses to designate goods and services including coffee, tea, cocoa, coffee substitutes, and coffee products as well as electric coffee makers and percolators for commercial and domestic use. United States trademark registration No. 73256514 has been in effect since 1980 and Korean registration No. 0361580 has been in effect since 1997. Its International registration No. 809577 of the mark LAVAZZA BLUE has been in effect since 2003. Approximate global revenue for sales of LAVAZZA branded product in 2009 was EUR 942 million.
The Complainant owns and operates a website resolving from the domain name and has provided evidence of ownership of hundreds of domain names consisting of or including the marks LAVAZZA and LAVAZZA BLUE such as , , >, and .
The Disputed Domain Name was registered on April 16, 2009, and resolves to click-through or pay-per-click (“PPC”) landing pages. PPC advertisements display a link when a keyword query with a search engine matches an advertiser’s keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name was typed in, it redirected traffic to a PPC landing page with advertisements and links for coffee machines produced by the Complainant and competitors, adult websites and other goods and services. 5. Parties’ Contentions A. Complainant
The Complainant cites its registrations of the trademarks LAVAZZA and LAVAZZA BLUE in various countries, and related marks consisting of, or including these words, as prima facie evidence of ownership.
The Complainant submits that the LAVAZZA trademark is distinctive and well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the LAVAZZA trademark (presumably alluding to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) and that the similarity is not removed by the addition of the TLD extension “.net” (citing Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416, and Wal-Mart Stores Inc. v. Sok kyu Kim, Sokkyu, WIPO Case No. D2006-1502).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the mark LAVAZZA. The Complainant also contends that “use of the domain name via a redirection to the web page currently on line where services of third parties are advertised and sponsored links are published is not to be considered a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain also in view of the fact that the Respondent and/or the Registrar are certainly gaining, for example from the click-through commissions on the sponsored links.” Complainant further contends that an inference should be drawn from the Respondent’s failure to reply to the cease and desist letters “that the Respondent has no rights or legitimate interests in the disputed domain name” (citing The Great Eastern Life Assurance Company Limited v. Unasi Inc.,WIPO Case No. D2005-1218; and Stanworth Development Limited v. Mike Morgan (290436),WIPO Case No. D2006-0230).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainant contends that “the Respondent was or ought to have been aware of the Complainant’s trademark at the time of registration”, (citing The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran,WIPO Case No. D2002-0770; Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005- 0556; Société des Produits Nestlé SA v. Kayvan Sadeghi,WIPO Case No. DIR2007-0002; Luigi Lavazza S.p.A. v. Satoshi Shimoshita,WIPO Case No. D2011-1299; Luigi Lavazza S.p.A. v. Flying Stingrays Ltd,WIPO Case No. D2012-1391; and Luigi Lavazza S.p.A. v. Noori net,WIPO Case No. D2012-0466). On the issue of use, the Complainant contends that the Respondent’s use of the Disputed Domain Name for domain monetization in connection with PPC parking pages amounts to “a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy” (citing, inter alia, McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark LAVAZZA in the United States and in many other countries throughout the world. The Panel finds that the Complainant has rights in the mark LAVAZZA pursuant to United States Trademark Registration No. 73256514 from April 2, 1980, which predates registration of the Disputed Domain Name. The Panel also finds that the Complainant has rights in the mark LAVAZZA BLUE pursuant to International Trademark Registration No. 809577 from June 5, 2003, which also predates registration of the Disputed Domain Name. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the marks LAVAZZA and LAVAZZA BLUE.
The Panel also finds that the mark LAVAZZA is well-known: see Luigi Lavazza S.p.A. v. Flying Stingrays Ltd, WIPO Case No. D2012-1391 (“the Complainant was a very well-known producer of coffee products already well before the time when the Respondent registered the disputed domain name”).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s LAVAZZA BLUE trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark (b) followed by the top level domain suffix “.net”.
It is well established that the top level designation used as part of a domain name may be disregarded: (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374; Wal-Mart Stores Inc. v. Sok kyu Kim, Sokkyu, WIPO Case No. D2006-1502). The relevant comparison to be made is with the second level portion of the Disputed Domain Name “lavazzablue”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark (such as is LAVAZZA) in its entirety, it is confusingly similar to that mark despite the addition of a descriptive word or words (such as “blue”): (see Oki Data Americas, Inc. v. ASD, Inc., supra; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the LAVAZZA trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on a complainant to establish the absence of the respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a parking page bearing links to LAVAZZA brand goods and that also redirect Internet traffic websites of a LAVAZZA competitor as well as offering for sale unrelated goods and access to websites of an adult nature. The Complainant asserts also that it has not licensed, permitted or authorized the Respondent to use the Complainant’s trademarks. The Complainant provided evidence that typing in the Disputed Domain Name diverts traffic to websites of the nature outlined.
This conduct is compounded by the Respondent’s advertising of services that were either those of the Complainant or directly competing with the Complainant’s through the same website. In ACCOR v. Nick V, ActionStudio,WIPO Case No. D2008-0644, the UDRP panel found that a disputed domain name which resolved to a webpage displaying goods or services in the same field of activities as the complainant “cannot be considered a bona fide offering of goods or services.”
In the absence of a Response, there has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name or to demonstrate that it is making any legitimate noncommercial or fair use of the Disputed Domain Name.
The Panel therefore finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith.
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line locations, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or locations or of a product.”
The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming in the view of the Panel. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The name registered by the Respondent, the unlikelihood that registering a domain name containing the Complainant’s LAVAZZA BLUE trademark was pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; Bouygues v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, Webreg,WIPO Case No. D2006-0964; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The Panel finds the trademark LAVAZZA is so widely known for coffee and ancillary goods such as coffee machines, that it is inconceivable that the Respondent might have registered a domain name containing this mark without knowing of it. In this Panel’s view, the Respondent’s conduct in registering the Disputed Domain Name wholly incorporating the LAVAZZA BLUE mark indicates prior knowledge of the Complainant’s trademark rights and warrants an adverse inference to be drawn (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, where the panel found that a claim that the domain name at issue, , could have been registered without knowledge of the complainant’s trademark, was not just implausible, but incredible). It is completely implausible that the Respondent was not fully aware of the significance of the words “Lavazza Blue”.
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark LAVAZZA, United States Registration No. 73256514 from 1980 predating its rights from the Respondent’s registration by approximately 29 years.
A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a web page containing links and advertisements that directly compete with the offerings to be found on the web site operated by the Complainant. In this Panel’s view, it is in breach of the Moniker Online Services, LLC. “Domain Name Registration Agreement” for breach of the acknowledgment: “to the best of your knowledge and belief neither the registration of your domain name nor the manner in which you intend to use such domain name will directly or indirectly infringe, or conflict with, the legal rights of a third party, including their intellectual property rights.” This reinforces the perception of an apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions (see Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Deutsche Telekom AG v. Gary Seto,WIPO Case No. D2006-0690; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814; Luigi Lavazza S.p.A. v. Noori net,WIPO Case No. D2012-0466).
In Accor v. This Domain May be for Sale or Lease,WIPO Case No. D2008-0420, the panel stated: “The case file contains printouts of pages from the websites associated with the domain names at issue here. These so-called ‘parked’ domain name sites contained as of the date of these printouts May 9, 2008 listings and links to (a business) competing with those of the Complainant. This amounts to ‘steering’ unsuspecting Internet visitors to competing services taking advantage of the confusion created by the similarity of the domain names to Complainant’s trademarks — the very essence of bad faith use under the UDRP.”
This Panel finds that the Respondent must have been aware of the relevant trademarks LAVAZZA and LAVAZZA BLUE. This Panel finds that the Respondent has taken the Complainant’s trademarks and incorporated them into in the Disputed Domain Name without the Complainant’s consent or authorization, solely for the purpose of selling them for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: November 19, 2013
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the Registrar’s WhoIs database at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal office (i.e. Florida, United States).
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