The Complainant is Jacobs Douwe Egberts FR SAS, France, represented by Ploum, Netherlands.
The Respondent is Contact Privacy Inc. Customer 0162897639, Canada / Nahil Tresse, CafeGui, France.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2021. On December 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2021, 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 22, 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 amendment to the Complaint on December 22, 2021.
The Center verified that the Complaint together with the amendment to 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 December 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2022. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on January 17, 2022.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 31, 2022. 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 BackgroundThe Complainant is part of JDE Peets group companies (“the Group”), a pureplay coffee and tea group, which employed approximatively 21.000 employees all over the world in 2019 and which is known under several brands including Jacobs Coffee, Senseo, Tassimo and Maison du Café in French speaking countries.
The Complainant has registered several trademarks, including (the “MAISON DU CAFE Trademarks”):
- The International trademark MAISON DU CAFÉ, Reg. No. 602733, designating amongst others Spain, Italy, Monaco and Morocco, registered on June 23, 1993, in Class 30,
- The French trademark MAISON DU CAFÉ, Reg. No. 1406904, registered on May 6, 1987, in Class 30
- The French trademark MAISON DU CAFÉ, Reg. No. 96610942, registered on February 15, 1996, in Classes 5, 29, 32,
The French MAISON DU CAFÉ Trademarks have been assigned to another company of the Group in 2020.
The Complainant also owns the domain name
The disputed domain name
The Complainant sent a cease-and-desist letter to the Respondent on December 9, 2021, which remained unanswered.
At the time of the Panel’s decision, the disputed domain name resolves to an inactive website.
5. Parties’ Contentions A. ComplainantIn accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.
First of all, the Complainant asserts that the disputed domain name is confusingly similar to its prior trademarks, since it incorporates the most distinctive elements of the MAISON DU CAFE Trademarks, i.e., “maison” and “café”, with the descriptive element “fr”, which is an abbreviation for France and which enhances the confusion, given that the MAISON DU CAFÉ Trademarks are exploited predominantly in French speaking countries, such as France.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent only makes use of the disputed domain name for fraudulent activities, i.e., scamming customers. Moreover, the Complainant has not licensed or otherwise permitted the Respondent to use the MAISON DU CAFÉ Trademarks or to register a domain name incorporating the MAISON DU CAFÉ Trademarks.
At last, the Complainant finds that the Respondent has registered and is using the disputed domain name in bad faith, considering that:
- The MAISON DU CAFÉ Trademarks are well-known, at least in the French speaking countries, and there is a great similarity between the disputed domain name and the MAISON DU CAFÉ Trademarks,
- The disputed domain name contains French language only and the MAISON DU CAFÉ Trademark has been included at the top of the landing page of the website,
- The Respondent has used the disputed domain name for fraudulent activities and used a privacy service to mask the information in the WhoIs databases.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(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 SimilarAccording to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the domain name be identical or confusingly similar to a trademark or service mark “in which Complainant has rights”. Therefore, the Complainant can be the owner of the mark, but it could also be, for example, a licensee of the mark. It has been accepted in several prior UDRP panel decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark (See for example, Miele, Inc. v. Absolute Air Cleaners and Purifiers,WIPO Case No. D2000-0756; or Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington,WIPO Case No. D2003-0796).
In this case, the Panel finds that (i) the Complainant is the actual owner of the International MAISON DU CAFÉ Trademark (ii) another entity of the Group, to which the Complainant belongs, is the actual owner of other French MAISON DU CAFÉ Trademarks, and (iii) the Complainant exploits the MAISON DU CAFÉ Trademarks, in particular through its website under the domain name
Therefore, the Panel finds that the Complainant has rights in the MAISON DU CAFÉ Trademarks.
Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademarks and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Regarding the disputed domain name, the Panel finds that it consists of (i) the MAISON DU CAFÉ Trademarks most distinctive elements, i.e., “maison” and “café”, (ii) followed by the term “fr” which is the abbreviation for France, and (iii) the generic Top-Level Domain (“gTLD”) “.com”, which is viewed as a standard registration requirement, and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
Therefore, the Panel holds that the disputed domain name
According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
“- before any notice 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- 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.”
According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines did. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 prima facie 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 (see section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent has never been licensed to use the MAISON DU CAFÉ Trademarks, nor has been given by the Complainant permission to use the MAISON DU CAFÉ Trademarks in any manner including in domain names.
Moreover, the Panel finds that the Complainant has provided evidence that the disputed domain name is not used in the context of a bona fide offer of goods or services since:
- Before notice of the Complaint, the disputed domain name led to a website offering to sell a coffee machine for a discounted price, but which was actually a scam since customers never received the coffee machine they had ordered,
- Currently, the disputed domain name is not used in the context of a bona fide offer of goods or services since it leads to an inactive website.
Furthermore, the Panel notes that the Respondent did reply to the Complainant’s contentions.
Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Complainant has established that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithAccording to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.
Thus, paragraph 4(b) 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.”
First of all, the Panel finds that it is established that the MAISON DU CAFÉ Trademarks were registered before the registration of the disputed domain name so that there is a presumption of bad faith registration of the disputed domain name.
Then, the Panel considers that the Respondent knew the MAISON DU CAFÉ Trademarks at the time of the registration of the disputed domain name, given that the disputed domain name reproduces the MAISON DU CAFÉ Trademarks most distinctive elements and led to a website which included the MAISON DU CAFÉ Trademark at the top of the landing page.
Moreover, the Panel considers that the Complainant has provided evidence that, before the notice of the Complaint, the disputed domain name led to a scamming website and that Internet users were under impression that the Respondent was the Complainant or affiliated to the Complainant. Therefore, the Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).
7. DecisionFor 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
Christiane Féral-Schuhl
Sole Panelist
Date: February 24, 2022