The Complainant is Koninklijke Douwe Egberts B.V., Netherlands, represented by Ploum.Netherlands.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Larry Johnson, Arvato Global Group, United States of America. 2. The Domain Name and Registrar
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 August 16, 2019. On August 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 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 August 20, 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 August 21, 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 August 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2019.
The Center appointed Eduardo Machado as the sole panelist in this matter on September 26, 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 part of Jacobs Douwe Egberts, an international coffee and tea company, headquartered in the Netherlands that processes and trades in coffee, tea and other foods since 1753. The Complainant’s products are sold throughout Europe and the Middle East, being the Complainant also a market leader in Brazil, Germany, Austria, Latvia, Lithuania, Poland, Romania and Ukraine.
The brand JDE, which is an abbreviation of Jacobs Douwe Egberts, originates from the former coffee division of Mondelez International, which dates back to 1895 in Germany.
The Complainant is the owner of trademark rights related to the word mark JDE since 2015, such as Benelux trademark registration No. 0970216, registered on April 22, 2015, and International Trademark registration No. 1248744, registered on April 16, 2015. Said trademark registrations are registered and are being used for goods and services in classes 5, 7, 11, 16, 21, 29, 30, 32, 35 and 43 including coffee and coffee and tea makers.
The Complainant is also the owner of the domain names and .
The Respondent registered the disputed domain name on April 9, 2019.
The disputed domain name currently does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s registered marks, as it incorporates the JDE mark in its integrity, with the addition of the descriptive terms “coffee” and “group”.
The Complainant further alleges that the addition of the word “group” is not enough to prevent the association and confusion of the disputed domain name to the Complainant’s registered trademarks, considering that the Complainant is a consists of many coffee brands, which is often referred to as “group”.
In addition to the above, the Complainant continues to argue that the addition of the term of the descriptive term “coffee” even enhances the confusion, since coffee is the main product sold by the Complainant.
The Complainant continues to argue that the Respondent has no rights or legitimate interests in respect of the domain name considering that the Respondent is not known by the disputed domain name nor has the Respondent made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant maintains that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, considering that on August 5, 2019, the website redirected by the disputed domain name was a parking/landing page featuring pay-per-click links. The links redirected to webpages of other companies and businesses.
Furthermore, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith considering that the Respondent was aware of the Complainant’s products and trademark rights related to the JDE and JDE COFFEE marks when the Respondent registered the disputed domain name and, in this sense, registered such with the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s registered JDE marks.
In addition, the Complainant argues that the use by the Respondent of a privacy service to mask the information at the WhoIs databases is also an indication of bad faith of the Respondent.
Finally, the Complainant alleges that the Respondent’s lack of reply to the cease and desist email sent by the Complainant on May 27, 2019 can be considered an indicative of bad faith registration and use. B. Respondent
The Respondent did not reply to any of the Complainant’s contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain the requested relief. These elements are:
(i) the disputed 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 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, the Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition , (“WIPO Overview 3.0”), section 1.2.1 . As disclosed through Annex 5 of the Complaint, the Complainant is the owner of trademark registrations for the JDE mark since 2015.
Thus, considering that the disputed domain name reproduces, in its entirety, the JDE mark, the mere addition of the terms “coffee” and “group” does not prevent the finding of confusing similarity between the disputed domain name and the Complainant’s marks (see Jacobs Douwe Egberts DE GmbH v. Hola Domains, Hola Dominios Limitada,WIPO Case No. D2017-0365: “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”; and Koninklijke Douwe Egberts B.V. v. WhoisGuard Protected, WhoisGuard, Inc. / argy hery,WIPO Case No. D2019-0916: “Accordingly the Panel agrees that the addition of the generic term “coffee”, the abbreviation “nl” indicating the Netherlands, a hyphen and the gTLD “.com” to the Complainant’s mark will not prevent the Domain Name from being confusingly similar to the Complainant’s trade mark pursuant to the Policy).
Therefore, the Panel finds that paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel, can demonstrate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances include:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the 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 domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the disputed domain name.
The uncontested evidence on the file shows that the Complainant had rights in its mark at the time of the Respondent’s registration of the disputed domain name and that the Respondent nevertheless registered it.
Moreover, considering that the disputed domain name currently does not resolve to any active website, it does not create rights or legitimate interests in the disputed domain name on behalf of the Respondent.
Considering the evidence on file, and considering that the Respondent failed to file a response, the Panel finds that there are no elements suggesting that the Respondent has rights or legitimate interests in respect of the disputed domain name.
The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the disputed domain name, and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the respondent includes, but is not limited to:
(i) 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 the 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
(ii) 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 holder has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the website or location or of a product or service on the respondent’s website or location.
In light of the above and considering the evidence on the file, the Panel understands that the circumstances described in paragraph 4(b)(iv) of the of the Policy fit those of the current proceeding.
The Complainant has proven that that the Respondent, by registering the disputed domain name which reproduces the entirety of the JDE mark, did so with the intention of attracting the Complainant’s customers to the disputed domain name for commercial gain, profiting off the Complainant’s registered JDE mark without the Complainant’s authorization.
This is supported by Annex 9 to the Complaint, that demonstrates that the Respondent was using the disputed domain name as a parking/landing page featuring pay-per-click links. In this sense, considering the evidence on the file, the Respondent, aware of the Complainant’s trademark rights related to the JDE mark, registered and used the disputed domain name confusingly similar to the Complainant’s JDE mark in order to obtain commercial gain off the Complainant’s JDE marks.
Moreover, no evidence has been presented that the Respondent has any rights or legitimate interests in respect of the disputed domain name. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services.
Rather, the Respondent has used the disputed domain name as a parking/landing page featuring pay-per-click links without the Complainant’s authorization. As the uncontested evidence shows, the Respondent was well aware of the Complainant and the Complainant’s marks when registering the disputed domain name, taking into account the reproduction of the mark JDE with the addition of the terms “coffee” and “group” to the disputed domain name, which increases the likelihood of confusion of the disputed domain name with the Complainant’s marks.
Finally, the evidence also shows that the registration of the disputed domain name by the Respondent does not in any fashion predate the Complainant’s rights related to the JDE mark. Nor has any evidence been presented that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s marks as domain name or otherwise. Based on the submitted evidence, the Respondent has intentionally attempted to attract Internet users to its website so as to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement thereof.
Moreover, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith.
The Panel thus concludes that the Respondent has registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been 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.
Eduardo Machado
Sole Panelist
Date: October 10, 2019
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