The Complainant is Andraschko Kaffeemanufaktur GmbH & Co KG, Germany, represented by Raue Partnerschaft von Rechtsanwälten und Rechtsanwältinnen mbB, Germany.
The Respondent is Boosting LLP Asian law firm, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2020, 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. On October 30, 2020, the Center transmitted an email in English and Korean to the Parties regarding the language of the proceeding. The Respondent requested that Korean be the language of the proceeding on October 30, 2020. The Complainant requested that English be the language of the proceeding on November 2, 2020. 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 November 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020. The Respondent did not submit a response within the deadline. Accordingly, on December 7, 2020, the Center informed the Parties that it would proceed to appoint a panel. The Respondent submitted a late Response on December 8, 2020. The Center appointed Andrew J. Park as the sole panelist in this matter on December 18, 2020. 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, Andraschko Kaffeemanufaktur GmbH & Co. KG, is a German entity located in Berlin, Germany. It was founded in 2006, but the two founders, Elisabeth and Willy Andraschko, actually began its coffee business in 1979 when they established a Viennese coffee house in Berlin. Today, the two no longer serve coffee, they make it themselves, and, as a specialty coffee roaster, they are now known beyond city and country borders for their quality craftsmanship. They roast coffee sourced from individual farms, larger estates, and cooperatives. The Complainant holds exclusive rights in the “company signs” “Andraschko” and “Andraschko Kaffeemanufaktur” pursuant to section 5(1) of the German Trademark Law, since it has been using these “signs” as its business name since 2006. The Complainant is also the owner of the following trademarks: Jurisdiction Trademark Registration No. Registration Date International Classes European Union Trade Mark ANDRASCHKO KAFFEE MANUFAKTUR BERLIN (figurative) 11648185 July 30, 2013 Classes 30 and 43 European Union Trade Mark ANDRASCHKO 18248027 October 11, 2020 Classes 21, 30, 35, 40, and 43 The disputed domain name The Respondent uses the website to which the disputed domain name resolves as advertising space for coffee products of German competitors to the Complainant. The disputed domain name is one of over 21,000 domains that the Respondent currently holds. 5. Parties’ Contentions A. Complainant 1. The Complainant, following the filing of the Complaint with the Center, requested that the language of proceeding be in English, providing four main reasons. (a) The Complainant and the Respondent are based in two different countries, Germany and Republic of Korea, thus they do not share a common official language. Both parties, however, can communicate in English, making English the neutral language of communications between them. (b) The website to which the disputed domain name resolves to contains content that is only in German and English. Thus, the Respondent has shown that it is perfectly able to communicate and defend itself in English. (c) The Respondent holds numerous international domain names most of which are in English, and it operates those websites in English. (d) English is a neutral language, affording no particular benefit to either party. 2. The Complainant contends that the disputed domain name should be transferred to the Complainant because: (a) the disputed domain name (b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks any right or legitimate interest in the disputed domain name because the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and there is no indication of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain name does not resolve to an active website. The Respondent merely uses the website to which the disputed domain name resolves to display advertisements for products that compete with the Complainant’s coffee products. The Respondent solely uses the disputed domain name to create advertising revenues by abusing the goodwill and reputation associated with the Complainant’s trademark ANDRASCHKO. (c) the disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent has acquired and registered the disputed domain name in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain registration to the owner of the trademark or to competitors of the Complainant, for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The minimum offer set by the Respondent for the sale of the disputed domain name is USD 4,950. Further, the Complainant argues that because the Respondent intentionally registered a domain name, which is identical to the Complainant’s famous and widely known trademark, it shows that the Respondent knew or should have known of the registration and use of the Complainant’s trademark prior to the registration of the disputed domain name. This, the Complainant argues, demonstrates that the Respondent registered the disputed domain name in bad faith. In addition, the Complainant contends that the Respondent intentionally attempts to attract Internet users who are searching for the Complainant’s coffee products by using the disputed domain name, and that such intentional effort is for commercial gain. The Respondent places the advertisements for coffee and coffee-products on its website to which the disputed domain name resolves in order to direct visitors to links to other websites concerning competing coffee products sold by the Complainant’s competitors, and thus further evidence of the Respondent’s bad faith registration of the disputed domain name. The Complainant emphasizes that most of the advertisements, which the Respondent places on the website to which the disputed domain name resolves are exclusively in German even though the Respondent is a Korean company. This further proves that the Respondent is trying to mislead customers who are interested in the Complainant’s “Andraschko” coffee or coffee products since the Complainant’s customers are primarily based in Germany. Lastly, the Complainant states that the Respondent has made it its business model to hold and abuse domain names that are identical or confusingly similar to famous and well-known registered trademarks or company names owned by others. The Respondent owns at least 21,000 domain names according to reverse WhoIs searches, all of which confirms the Respondent’s clear pattern of abusive conduct with regard to domain names, and bad faith registration and use of them. B. Respondent The Respondent requested the language of proceedings be Korean and also requested the Panel dismiss the Complainant’s claim to transfer the disputed domain name to the Complainant on the grounds that the Respondent, as far as it knows, did not infringe the rights of the Complainant or of a third party, and that the Respondent has never sought to sell the disputed domain name to the Complainant. 6. Discussion and Findings A. Late Filing of the Response Paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the complaint. Paragraph 14(a) of the Rules is counterbalanced by paragraph 10(b) of the Rules, which requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case. The Response was filed nine days late. In all the circumstances, and also taking into account the fact the Response was filed before the appointment of the Panel, and the delay has not delayed the resolution of this proceeding – and also bearing in mind the Panel’s obligations under paragraph 10(b) of the Rules – the Panel has decided that it will accept the late filing of the Response. B. Language of the Proceeding The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the Registration Agreement, i.e., Korean, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraphs 10 and 11(a) of the Rules. In coming to this decision, the Panel has taken the following into account: 1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint and other documents into Korean; 2) The Panel is proficient in both English and Korean, capable of reviewing all the documents and materials in both languages and giving full consideration to the Parties’ respective arguments; and 3) The Complainant and the Respondent use different languages, and neither of them likely understands the language of the other party. The Complainant is located in Germany while the Respondent is from the Republic of Korea. Therefore, English would be a fair language for both Parties. In light of these circumstances, the Panel concludes that it will (1) accept the Complaint in English and the Respondent’s communications in Korean; (2) consider any relevant materials in Korean; and (3) issue a decision in English. C. Identical or Confusingly Similar This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark. The Panel finds that the Complainant has established registered rights in the trademark ANDRASCHKO and that the disputed domain name is identical to the Complainant’s ANDRASCHKO trademark. The Panel further finds that the Complainant has established registered rights in the trademark ANDRASCHKO KAFFEE MANUFAKTUR BERLIN and that the disputed domain name is confusingly similar to it, as its dominant feature (“Andraschko”) is clearly recognizable in the disputed domain name. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the use of the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182). For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. D. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden to come forward with relevant evidence demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. Here, the Panel finds that the Complainant has made out a prima facie case. The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. The Respondent has shown no actual intention to use the disputed domain name since it registered the disputed domain name in 2019. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith: (i) circumstances indicating that the respondent has registered or 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 respondent 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 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 the respondent’s website or location or of a product or service on the respondent’s website or location. The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(i) and (iv) by registering the disputed domain name in order to (1) sell the disputed domain name to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name and (2) attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark. The Panel finds the Respondent intentionally registered the disputed domain name – which is identical or confusingly similar to the Complainant’s trademarks – in bad faith for several reasons. First, the Complainant’s commencement of its business and its first use of the ANDRASCHKO trademark since 2006 far pre-date the registration date of the disputed domain name in 2019. Second, the website to which the disputed domain name resolves contains links related to the Complainant’s business and its products, as well as to the Complainant’s competitors and their products. Also, the website contains a link, which is directed to another website set up by the Respondent where the disputed domain name is offered for sale at an excessive amount of USD 4,950. Third, the Respondent’s website is available in both German and English languages, which indicates that the Respondent had knowledge of the Complainant, a German company. Finally, the Complainant’s trademark ANDRASCHKO came from the name of the founders, Elisabeth and Willy Andraschko, and it does not have any meaning in English, which is additional evidence that the Respondent knew of the Complainant and its business. These facts clearly show that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it tried to show that there was a business relationship between the disputed domain name and the Complainant. Thus, it is clear that the Respondent registered the disputed domain name in bad faith with the knowledge of the Complainant’s trademarks and business. Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks and prevented the Complainant from reflecting the mark in a corresponding domain name in order to resell the disputed domain name to the Complainant or its competitors for commercial gain. The Panel further notes from the evidence of record, that the Respondent included the link and offer to sell the disputed domain name for USD 4,950, which is significantly more than the actual cost to register the disputed domain name and confirms that the Respondent’s arguments that it has never sought to sell the disputed domain name to the Complainant is most likely false. The Panel finds that the Respondent has tried to create an association between the disputed domain name and the mark ANDRASCHKO used by the Complainant, and has tried to attract Internet users to its website for commercial gain by creating a likelihood of confusion due to such association. As the conduct described above falls squarely within paragraph 4(b)(i) and (iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 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 Andrew J. Park
Sole Panelist
Date: January 4, 2021
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