The Complainant is Luigi Lavazza S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.
The Respondent is Protection of Private Person / COFFEEBRO, LLC, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2020. On December 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 10, 2020, 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 December 29, 2021, 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 December 29, 2021. On December 28, 2020, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On December 29, 2020, the Complainant reconfirmed its request that English be the language of the proceedings referring to provided respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the Proceedings. 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 in both English and Russian, and the proceedings commenced on January 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Respondent did not submit any response. The Center appointed Taras Kyslyy as the sole panelist in this matter on February 19, 2021. 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 launched its business in 1895, and nowadays is an Italian coffee producer operating in more than 140 countries and having about 4000 employees onboard. The Complainant owns trademark registrations for LAVAZZA in numerous jurisdictions, including, for instance, International Trademark Registration No. 317174, registered on July 18, 1966, and designating inter alia the Russian Federation. The Complainant registered its official website “www.lavazza.com” on May 19, 1996 to promote its products and inform its customers on Italian espresso and on Italian culture. The Complainant also owns over 600 of domain names containing the term “Lavazza” in order to protect and promote the LAVAZZA trademark and products. The disputed domain name was registered on November 14, 2019. It used to resolve to a website featuring the Complainant’s trademark, offering for sale products branded with the Complainant's trademark, as well as third parties’ overlapping products. At the time of this decision the disputed domain name does not resolve to any active website. The Complainant had a cease and desist correspondence with the Respondent back in March-April 2020. 5. Parties’ Contentions A. Complainant The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the whole of the Complainant’s trademark. The fact that the disputed domain name differs from the Complainant’s trademark by the addition of the hyphen “-” between the words “Lavazza” and “store” and the non-distinctive element “store” does not affect the confusing similarity. The generic term “store” added to the Complainant’s trademark in the disputed domain name is particularly apt to increase the likelihood of confusion with the Complainant’s trademark and to induce the Internet users to believe that there is an association or affiliation with the Complainant and its coffee products. The Complainant’s trademark is in fact internationally well-known and coffee products branded with the trademark are famous and appreciated and it is possible also to request the delivery of any product by submitting orders on the official Complainant’s online store. The addition of the “.com” is merely instrumental and shall be disregarded for the determination of the confusing similarity. The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not licensee, authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademark. Specifically, the Respondent is not authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name. The Respondent is not commonly known by the disputed domain name as business or other organization. The Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The disputed domain name redirected by a website displaying the Complainant’s figurative trademarks and promoting the sale of LAVAZZA and third parties’ products, without providing an evident disclaimer as to the lack of affiliation with the Complainant, thus failing to pass the Oki Data Test. Furthermore, such use of the disputed domain name cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because the disputed domain name has been used since its registration to convey users to a website promoting the Respondent’s commercial activity consisting in the resale of LAVAZZA products. The disputed domain name was registered and is being used in bad faith. The Respondent could not have possibly ignored the existence of the Complainant’s trademark, confusingly similar to the disputed domain name, at the time of registration. Moreover, the fact that the Respondent has been promoting the sale of LAVAZZA products on the website at the disputed domain name, publishing also the Complainant’s figurative marks, confirms that the Respondent was fully aware of the Complainant’s trademarks and of the likelihood of association with the Complainant. Moreover, no clear and evident disclaimer has been published on the website to which the disputed domain name resolved. Such use of the disputed domain name shows that the Respondent intentionally registered, and was using, the disputed domain name to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, sponsorship, affiliation, or endorsement of the website and of the business promoted therein. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated. However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334). In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. According to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), previous UDRP panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement. The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since the Complainant and the Respondent had a chain of cease and desist correspondence in English. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint and its annexes to Russian. The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar The Panel finds that the Complainant has provided relevant evidence that it owns trademark registrations for LAVAZZA in numerous jurisdictions. According to section 1.11.1 of the the applicable generic Top-Level-Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the entirety of the Complainant’s trademark. According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that the addition of hyphen and descriptive term “store” do not prevent finding the confusing similarity in the present case. Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name. The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875). According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing complainant’s trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in Oki Data Americas, Inc. v. Asdinc, Inc.,WIPO Case No. D2001-0903 (the “Oki Data Test”), the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods at issue; (ii) the respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with trademark holder; and (iv) the respondent must not try to “corner the market” in domain names reflecting trademark. The Panel finds that the Respondent failed to satisfy at least the second and the third above requirements, and thus failed to pass the Oki Data Test. In addition the Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide. The disputed domain name incorporates the LAVAZZA trademark of the Complainant in its entirety and it is its distinctive element. Since LAVAZZA is a widely-known trademark, and the disputed domain name is associated with the website offering LAVAZZA products, the Panel finds that the Respondent must have been aware of the LAVAZZA trademark when it registered the disputed domain name, and that it chose to target the LAVAZZA trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich / Protection of Private Person, WIPO Case No. D2016-1513). Furthermore, the Respondent has no right or legitimate interests in the disputed domain name resolving to an inactive website at the time of this decision (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore,WIPO Case No. D2016-1302). The Respondent’s use of the confusingly similar disputed domain name on a website offering for sale overlapping products is neither a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use pursuant to Policy. (See, e.g., Option One Mortgage Corporation v. Option One Lending,WIPO Case No. D2004-1052). Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and famous trademark, which confirms the bad faith registration (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). According to section 3.1.4 of the WIPO Overview 3.0 , the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well-known through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the European Union and internationally. Thus, the Panel finds that the disputed domain name confusingly similar to the Complainant’s trademark was registered in bad faith. According to section 3.1 of the WIPO Overview 3.0 , bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s 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 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 on-line 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. In this regard, the Panel finds that at least the fourth of the above scenarios apply to the present case confirming the Respondent’s bad faith. Although at the time of this decision the disputed domain name resolves to inactive webpage, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain name implausible. Thus, the current passive holding of the disputed domain name does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman),WIPO Case No. DPW2017-0003). Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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 Taras Kyslyy
Sole Panelist
Date: February 24, 2021
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