The Complainant is Jacobs Douwe Egberts DE GmbH of Bremen, Germany, represented by Ploum Lodder Princen, the Netherlands.
The Respondent is Hola Domains, Hola Dominios Limitada of San Jose, Costa Rica. 2. The Domain Name and Registrar
The disputed domain name is registered with NameP, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2017. On February 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2017.
The Center appointed Zoltán Takács as the sole panelist in this matter on March 31, 2017. 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, that being the language of the Registration Agreement. 4. Factual Background
The Complainant is part of Jacobs Douwe Egberts, an international coffee and tea company that processes and trades in coffee, tea and other foods since 1753.
Jacobs Douwe Egberts was formed in 2015 merging D.E. Master Blenders 1753 and the coffee division of Mondelez International.
The brand Jacobs was created in 1895 in Germany when Johan Jacobs opened a specialty coffee shop in the city of Bremen. Today it is one of the billion-dollar (USD) coffee brands in the Jacobs Douwe Egberts brand portfolio.
The Complainant owns great number of national and international trademark registrations consisting of including the word element JACOBS, e.g.:
- International Trademark Registration No. 370114 JACOBS registered on May 15, 1970, and valid in over 30 jurisdictions for goods and services of Classes 7, 9, 11, 16 and 21 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter: the “Nice Classification”); and
- Costa Rican Trademark Registration No. 134205 JACOBS registered on August 14, 2002, for goods of Class 30 of the Nice Classification.
The disputed domain name was registered on September 11, 2014, and resolved to a parking page with links to websites of the Complaint’s competitors and other parties involved in the coffee business. 5. Parties’ Contentions A. Complainant
The Complainant contends that apart from the generic Top-Level Domain (“gTLD”) “.com” and the descriptive term “coffee” the disputed domain name is identical on its face to the Complainant’s JACOBS trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraph 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith.
Given the international fame of the Complainant’s JACOBS trademark, the Complainant believes that it is virtually impossible that the Respondent accidentally made up the words “jacobs” and “coffee” itself and registered the disputed domain name without any knowledge of the Complainant’s business and its JACOBS brand.
The Complainant states that the fact that the disputed domain name resolved to a parking page featuring pay−per-click links redirected to websites of the Complainant’s competitors, as well as that the Respondent offered to sell the disputed domain name to the Complainant for consideration well in excess of its out-of-pocket costs directly related to the disputed domain name, are evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced adequate evidence that it holds registered rights in the trademark JACOBS.
For the purpose of this proceeding, the Panel establishes that the Complainant’s International Trademark Registration No. 370114 and Costa Rican Trademark Registration No. 134205, both for the mark JACOBS satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the JACOBS mark, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the JACOBS trademark of the Complainant.
According to paragraph 1.2 of the WIPO Overview 2.0, the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, negative terms in the domain name typically being regarded as insufficient to prevent threshold Internet user confusion. In addition, the applicable gTLD suffix in the domain name would also be usually disregarded under the confusing similarity test, as it is a technical requirement of registration.
The disputed domain name contains the Complainant’s JACOBS trademark in its entirety. The applicable gTLD suffix in the disputed domain name, “.com” should in relation to this administrative proceeding be disregarded.
The only element in the disputed domain name other than the JACOBS trademark of the Complainant is the descriptive word “coffee”, the key product for which the JACOBS trademark is used.
The Panel finds that the disputed domain name is confusingly similar to the JACOBS trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark JACOBS.
The Complainant has never authorized the Respondent to use its JACOBS trademark in any way, and the Complainant’s prior rights in the JACOBS trademark long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels, that although the burden of proof rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.
If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production then shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinced the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant’s JACOBS trademark is widely known and used internationally, and the disputed domain name is reproducing it entirely.
In view of this Panel, it is highly improbable that the Respondent had no knowledge of the Complainant’s JACOBS trademark at the time of registering the disputed domain name, since the Respondent added to the JACOBS trademark the word “coffee’”, which is the key product for which the Complainant is using the JACOBS trademark.
The disputed domain name resolved to a pay-per-click website with links to websites of the Complainant’s competitors and other parties involved in the coffee business.
According to paragraph 3.8 of the WIPO Overview 2.0, “a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content − for example, in case of advertising links appearing on an “automatically” generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.”
The Panel cannot conceive of any legitimate use that the Respondent could plausibly make of the disputed domain name, which incorporates the Complainant’s trademark in its entirety.
In the Panel’s opinion the only plausible explanation for the Respondent’s choice to register the disputed domain name that reproduces the widely-known trademark of the Complainant is to exploit the reputation behind the JACOBS trademark without any authorization or rights to do so.
When contacted by the Complainant through a cease and desist letter, the Respondent offered to sell the disputed domain name to the Complainant for USD 1,795. This amount is clearly well in excess of any out−of-pocket costs which the Respondent may have incurred relating to the disputed domain name.
In the present case, the Respondent’s offer to sell the disputed domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name is clear evidence that the domain name has been registered and is being used in bad faith.
In view of this Panel, all the above discussed facts and circumstances support the applicability of paragraphs 4(b)(i) and (iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Zoltán Takács
Sole Panelist
Date: April 12, 2017
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