The Complainant is Koninklijke Douwe Egberts B.V., Netherlands, represented by Ploum, Netherlands.
The Respondent is Big Kot, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 25, 2019.
The Center verified that the Complaint together with the amended 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 July 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2019.
The Center appointed Jane Lambert as the sole panelist in this matter on August 28, 2019. 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. 4. Factual Background
The Complainant is a well-known supplier of coffee, tea, chocolate and other beverages. It was founded in the Netherlands in 1753 but now has interests in 120 countries around the world. Its annual turnover is around EUR 2.5 billion and it employs nearly 7,500 employees
One of the Complainant’s brands is TASSIMO which is registered as a trade mark in the European Union for various goods in classes 11, 21 and 30 under registration number 005416458 with registration date August 20, 2007. The same mark is registered for the same goods in many other trade mark registries around the world.
The Disputed Domain Name was registered on January 14, 2019. The Disputed Domain Name had been used as the Uniform Resource Locator (“URL”) for a website for soliciting investments from members of the public images of which appear in Annex 5 to the Complaint. When the Disputed Domain Name is typed into a browser a landing page appears with the words “Сайт временно недоступен” in white lettering against a red background. According to Google Translate, that phrase means “Site is temporarily unavailable”. The word “Hostland” appears in Latin characters in the top left hand corner of the page and the rest of the page promotes Hostland’s services.
The Respondent’s name and other particulars had been redacted for privacy when these proceedings began. The name and country that appears at paragraph 1 above were supplied by the Registrar. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is confusingly similar to the trade mark mentioned in paragraph 4 above as it incorporates the trade mark in its entirety. It notes that it is well established that the addition of a generic Top-Level-Domain (“gTLD”) extension (such as “.live” in this case) is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trade mark. It concludes that the first element of the Policy set out in paragraph 4(a)(i) is satisfied.
The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Respondent did not make demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services;
- the Respondent (as an individual, business, or other organization) has not been commonly known by the Disputed Domain Name and the Respondent has acquired no trade mark or service mark rights;
- the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Up to the time it received a letter before claim from the Complainant’s legal representative, the Respondent had used the Disputed Domain Name as a URL for a website that solicited money from the public through an electronic wallet that appears to have been defective. The Complainant submits that the Respondent has no rights or legitimate interests in relation to the Disputed Domain Name, and that the second element as referred to in paragraph 4(a)(ii)4(ii) of the Policy has been satisfied.
The Complainant contends that the registration and use of its trade mark, as a domain name, are of themselves acts of bad faith as the TASSIMO brand is well-known throughout the world. It adds that TASSIMO is an invented word which the public and trade associated with the Complainant alone. The solicitation of investments through an electronic wallet that does not appear to work threatens to tarnish the brand. In the Complainant’s submission, the Disputed Domain Name has been used to create a likelihood of confusion thereby attracting Internet users to its site for commercial gain. The Complainant concludes that the third element of the Policy is satisfied. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The agreement for the registration of the Disputed Domain Name contains the following provision:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds that the first element is present.
The second level domain of the Disputed Domain Name is identical to the registered trademark mentioned in paragraph 4 above which is a trade mark in which the Complainant has rights. The gTLD“.live”, is viewed as a standard registration requirement and as such is disregarded under the first element of confusing similarity test the Disputed Domain Name is confusingly similar to that trademark registration. B. Rights or Legitimate Interests
The Panel finds that the second element is present.
Section 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Third Edition, WIPO Jurisprudential Overview 3.0 notes:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has considered all the circumstances that might justify the registration of the Disputed Domain Name and has found no evidence that any of those circumstances applies. As the Complainant has registered the mark TASSIMO around the world it is unlikely that the Respondent could use that mark lawfully anywhere.
The Center has offered the Respondent an opportunity to answer the Complaint and show that it has rights or legitimate interests in the Disputed Domain Name but it has failed to take advantage of that opportunity. In the absence of any argument or evidence to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth of those circumstances is as follows:
“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 web-site or location or of a product or service on your web-site or location.”
The Panel has already found that the Disputed Domain Name is identical to the Complainant’s mark. If follows that at least some Internet users were likely to associate the Disputed Domain Name with the Complainant and type the Disputed Domain Name into their browsers in the hope or expectation of reaching a website, connected to or affiliated with the Complainant. It may reasonably be inferred that the Respondent intended to attract such Internet users. Once on the Respondent’s website, Internet users would have been invited to invest using the electronic wallet from which the Respondent would have derived a commercial gain. 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.
Jane Lambert
Sole Panelist
Date: September 11, 2019
Full & Egal Universal Law Academy