ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Koninklijke Douwe Egberts B.V. v. Anderson James Case No. D2024-4375 1. The Parties The Complainant is Koninklijke Douwe Egberts B.V., Netherlands (Kingdom of the), represented by Ploum, Netherlands (Kingdom of the). The Respondent is Anderson James, 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 October 18, 2024. On October 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2024, 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 (unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 25, 2024, 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 October 28, 2024. 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 October 29, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2024.
page 2 The Center appointed Peter Burgstaller as the sole panelist in this matter on November 27, 2024. 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 (JDE), which itself is part of JDE Peet’s, a major pure play coffee and tea company providing its coffee and tea portfolio around the world. The Complainant owns several trademark registrations containing the mark JDE, inter alia, - Brazil trademark JDE (figurative), Registration No 908920741, registered November 21, 2017; - Brazil trademark JDE COFFEE (word), Registration No 907660193, registered May 7, 2014; - Malaysia trademark JDE (figurative), Registration No 2017012952, registered March 20, 2019; - Argentina trademark JDE (figurative), Registration No 3383199, registered April 20, 2017; - United Kingdom trademark JDE (figurative), Registration No UK00801248744, registered March 30, 2016; - International trademark JDE (figurative), Registration No 1248744, registered April 16, 2015, designated for several jurisdictions around the world, inter alia United Stated of America and European Union (Annex 5 to the Complaint). Further, the Complainant has registered inter alia the domain names and to address its main business website (Annex 4 to the Complaint). The disputed domain name was registered on December 6, 2023 (Annex 1 to the Complaint). At the time of filing the Complaint the Respondent was using the disputed domain name to display multiple pay-per-click (“PPC”) advertisement links that redirected Internet users to third-party websites, including those which are in direct competition with the Complainant (Annex 7 to the Complaint). Furthermore, there is an active Mail Exchange (“MX”) records for the disputed domain name (Annex 8 to the Complaint). 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the JDE trademark is well-known and notes that the disputed domain name contains the JDE trademark in its entirety, simply adding a “c” in the descriptive term “coffee” after the JDE mark; coffee is the key product for which the JDE trademark is used and very well known for. Because of the widespread use of the Complainant’s JDE coffee and tea products, the Complainant submits that it is inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name, or that there would be any legitimate use for the disputed domain name. This especially, because the major product is coffee which is part of the disputed domain name. Further, the Complainant has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use the JDE trademark in any manner; most likely, however, the Respondent is engaged in a phishing scheme.
page 3 The Complainant also notes that the disputed domain name resolved to a website where the Respondent is using the disputed domain name to display multiple PPC advertisement links that redirect the Internet users to third-party websites, including those which are in direct competition with the Complainant. Further, the Complainant notes the Respondent’s activation of MX records for the disputed domain name. This constitutes bad faith use since the disputed domain name primarily was used for the purpose of disrupting the business of a competitor and to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s product or service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests with respect to 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 It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant submitted evidence, which incontestably and conclusively establishes rights in the mark JDE. In the present case the disputed domain name is confusingly similar to the JDE mark in which the Complainant has rights since it incorporates the JDE mark in its entirety and adds the term “ccoffee”. WIPO Overview 3.0, section 1.8. The disputed domain name is also confusingly similar to the Complainant’s JDE COFFEE mark, as the trademark remains recognizable within the disputed domain name despite the additional “c” at the beginning, which is an obvious/intentional typo/misspelling. It has long been established under UDRP decisions that a domain name which consists of a misspelling of the complainant’s mark, (here: additional “c”), does not prevent a finding of confusing similarity under the first element of the Policy because the relevant trademark remains recognizable within the disputed domain name (WIPO Overview 3.0, section 1.9). Finally, it has also long been held that generic Top-Level Domains are generally disregarded when evaluating the confusing similarity between a disputed domain name and a trademark. WIPO Overview 3.0, section 1.11.1. Based on the available record, the Panel finds the first element of the Policy has been established.
page 4 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, 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 a prima facie case 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. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, since it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the JDE trademark in any manner. The Respondent did not reply and hence has not rebutted the Complainant’s contentions. Further, the Complainant focuses on the fact that its trademark JDE is distinctive and well known in the field of coffee and tea products; moreover, the trademark JDE is registered in a variety of jurisdictions around the world and provides suitable evidence of its reputation, adding that it is inconceivable that the Respondent would not have been aware of this when registering the disputed domain name. Moreover, given the composition of the disputed domain name, containing the descriptive term “coffee” which refers to the key product of the Complainant’s business and an additional “c” to the term coffee, which seems to be an intentional an obvious typo/misspelling, coupled with the use of the disputed domain name to resolve to a website in which the Respondent provides multiple PPC advertisement links that redirected the Internet users to third-party websites, including those which are in direct competition with the Complainant, affirms the Respondent’s intention of taking unfair advantage of the inherent confusion between the disputed domain name and the Complainant as to the origin or affiliation of the website at the disputed domain name. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith As stated in many decisions rendered under the Policy both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that: - the disputed domain name was registered by the Respondent in bad faith, and - the disputed domain name is being used by the Respondent in bad faith. (i) The Complainant has established rights in the registered trademark JDE, long before the registration of the disputed domain name. Further, the trademark JDE is well known in the field of coffee and tea products and the Complainant is the owner of the domain name . The composition of the disputed domain name containing the Complainant’s trademark JDE COFFEE with a misspelling makes it inconceivable for this Panel that the Respondent has registered and used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith; the typo/misspelling in the disputed domain name does not alter this view, either. Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
page 5 (ii) The Complainant put forward evidence that the disputed domain name resolved to a website which contained PPC advertisement links. In doing so, the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy – this constitutes bad faith registration and use of the disputed domain name. The bad faith use of the disputed domain name is also supported by the fact that the disputed domain name has an active MX records, as shown in the MX records lookup, which indicates a possible use for email services. Based on the available record, the Panel finds that the Complainant has established the third element 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 be transferred to the Complainant. /Peter Burgstaller/ Peter Burgstaller Sole Panelist Date: December 7, 2024
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