ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Luigi Lavazza S.p.A. v. jiang zhuo ming Case No. D2022-5008 1. The Parties Complainant is Luigi Lavazza S.p.A., Italy, represented by Studio Barbero S.p.A., Italy. Respondent is jiang zhuo ming, China. 2. The Domain Name and Registrar The disputed domain name (the "Domain Name") is registered with eName Technology Co., Ltd. (the "Registrar"). 3. Procedural History The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 28, 2022. On December 28, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 29, 2022, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On January 11, 2023, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On January 11, 2023, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding. 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 7, 2023. page 2 The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 16, 2023. 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 Complainant is an Italian company that manufactures and sells coffee machines and related products under the LAVAZZA trademark. With sales revenues of EUR 1.4 billion in 2015, it has over 4,000 employees worldwide and operates in over 140 countries, including China, where Respondent resides. In 2020, Complainant entered into a joint venture with a Chinese partner to open a flagship store in Shanghai. Complainant has then continued to expand in China, with over 20 stores located in Beijing, Hangzhou, Guangzhou, and an upcoming opening in Shenzhen. Complainant is the owner of several trademark registrations for LAVAZZA alone or in combination with other terms and/or elements, including the following: - European Union Trademark Registration No. 000317057 for LAVAZZA word mark, registered on May 25, 1998; - International Trademark Registration No. 317174 for LAVAZZA word mark, registered on July 18, 1966; - International Trademark Registration No. 1186133 for LAVAZZA word mark, registered on July 29, 2013; - International Trademark Registration No. 1299219 for LAVAZZA word and design mark, registered on February 23, 2016; and - Chinese Trademark Registration No. 5853488 for LAVAZZA word mark, registered on November 21, 2009. Complainant has also registered over 600 domain names containing its trademark LAVAZZA including , registered on May 19, 1996 and , registered on March 17, 2003. Complainant operates its main business website "www.lavazza.com", to promote its company and coffee products and coffee machines and provide information about Italian coffee and culture. The Domain Name was registered on January 18, 2015. At the time Complainant became aware of the Domain Name, it redirected to a webpage that offered the Domain Name for sale. At the time of the filing of the Complaint, the Domain Name reverted to an inactive webpage. On July 7, 2016, Complainant's representative sent a cease-and-desist letter to Respondent, requesting Respondent to deactivate the website and transfer the Domain Name to Complainant. Respondent did not respond, and Complainant's representative sent reminders on seven separate attempts between 2016 and 2022. On December 14, 2022, another cease and desist letter was sent to Respondent via the online Registrar contact form. No response was received. Complainant then filed the present Complaint. 5. Parties' Contentions A. Complainant Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant's trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that it has trademark registrations for LAVAZZA and that Respondent registered and is using the Domain Name with the intention to confuse Internet users looking for bona fide page 3 and well-known LAVAZZA products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant's trademark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in registering and setting up the Domain Name, when Respondent clearly knew of Complainant's rights. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of the Proceeding The Rules, in paragraph 11(a), provide that 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, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. Complainant submitted its original Complaint in English. In its Complaint and email dated January 11, 2023, Complainant confirmed its request that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese. Complainant asserts that they are unable to communicate in Chinese, that the Domain Name is registered in Latin characters, that the Domain Name originally resolved to a website providing content in English and Chinese, and that Respondent secured the Domain Name in the Top-Level Domain ("TLD") ".top" which indicated Respondent's intention to target an audience of English-speaking users. Complainant also contends that any holding the proceeding in Chinese would cause undue delay, considerable expense, unfair disadvantage and burden Complainant as well as the dispensation of the current matter. Complainant also contends that Complainant does not possess any evidence demonstrating that Respondent cannot communicate in English. In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time, and costs. The Panel accepts Complainant's submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in Chinese and English of the language of the proceeding as well as notified Respondent in Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a Response. The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and costeffective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English be the language of the proceeding. page 4 6.2. Substantive Issues Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name was registered and is being used in bad faith. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that failure to respond to the complainant's contentions would not by itself mean that the complainant is deemed to have prevailed; a respondent's default is not necessarily an admission that the complainant's claims are true. Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340. A. Identical or Confusingly Similar 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 3.0, section 1.2.1. Complainant provided evidence of its rights in the LAVAZZA trademarks, as noted above. Complainant has also submitted evidence which supports that the LAVAZZA trademarks are widely known and a source identifier of Complainant's products and services. Complainant has therefore proven that it has the requisite rights in the LAVAZZA trademarks. With Complainant's rights in the LAVAZZA trademarks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the TLD in which it is registered (in this case, ".top"), is identical or confusingly similar to Complainant's trademark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. Here, the Domain Name is identical to Complainant's LAVAZZA trademark. See WIPO Overview 3.0, section 1.8. Thus, the Panel finds that Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with relevant evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its LAVAZZA trademarks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the LAVAZZA trademarks or to seek registration of any domain name incorporating the trademarks. Respondent is also not known to be associated with the LAVAZZA trademarks, and there is no evidence showing that Respondent has been commonly known by the Domain Name. page 5 In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, at the time Complainant became aware of the Domain Name, the Domain Name redirected to a webpage offering the Domain Name for sale. At the time of the filing of the Complaint, the Domain Name reverted to an inactive page. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Respondent's actions indicate that Respondent registered and is using the Domain Name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely: "(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) 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 website or location or of a product or service on your website or location." The Panel finds that Complainant has provided ample evidence to show that registration and use of the LAVAZZA trademarks long predate the registration of the Domain Name. Complainant is also well established and known. Indeed, the record shows that Complainant's LAVAZZA trademarks and related products and services are widely known and recognized. Therefore, Respondent was likely aware of the LAVAZZA trademarks when it registered the Domain Name, or knew or should have known that the Domain Name was identical to Complainant's trademarks. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007. page 6 Further, the registration of the Domain Name incorporating Complainant's LAVAZZA trademark in its entirety suggests Respondent's actual knowledge of Complainant's rights in the LAVAZZA trademarks at the time of registration of the Domain Name and its effort to opportunistically capitalize on the registration and use of the Domain Name. Moreover, at the time of Complainant became aware of the Domain Name, it diverted users to a webpage offering the Domain Name for sale. Such use of the Domain Name demonstrates that Respondent has intentionally attempted to profit in some fashion from or otherwise exploit Complainant's trademark. The current "non-use" of the Domain Name does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3. Finally, the Panel also notes the reputation of the LAVAZZA trademarks, and the failure of Respondent to submit a response to the cease and desist letter, any of the corresponding reminders and the Complaint. Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) 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 Domain Name, , be transferred to Complainant. /Kimberley Chen Nobles/ Kimberley Chen Nobles Sole Panelist Date: February 20, 2023
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