Complainant is Casa del Caffè Vergnano S.p.A. of Santena, Italy, represented by Studio Legale Saglietti, Italy.
Respondent is Campo Largo B.V. of Oude-Tonge, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with SIDN through Easyhosting B.V. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2016. On July 25, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On July 27, 2016, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the "Regulations").
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 28, 2016. In accordance with the Regulations, article 7.1, the due date for Response was August 17, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 18, 2016.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on August 26, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant, founded in 1882, is an ancient Piedmont coffee-maker and asserts to be one of the major Italian and international coffee producers.
Complainant is, inter alia, holder of the International trademark CAFFÈ VERGNANO 1882, registered on April 22, 2003, registration number: 803914, for goods in class 30 (coffee), designating, among others, the European Union and the European Union trademark CAFFÈ VERGNANO 1882, registered on July 2, 2008, registration number: 006218937, for goods in class 30 (coffee, mixture of coffee, coffee extracts and artificial coffee) (hereinafter referred to as the "Trademarks"). According to Complainant, as a consequence of its lengthy, large-scale and intensive use, the Trademarks are "well-known trademarks".
"Caffè Vergnano" is also part of the trade name of Complainant, which name has been used in commerce since 1882. Complainant is also the owner of several domain names consisting of this trade name, such as , , and .
The Domain Name was registered on January 31, 2012. The Domain Name resolves to a standard parking page of the Registrar. 5. Parties' Contentions A. Complainant
Complainant bases its Complaint on the Trademarks and its trade name "Caffè Vergnano".
The Domain Name is identical or confusingly similar to the Trademarks or trade name
Complainant contends that the Domain Name is identical to the Trademarks and its trade name "Caffè Vergnano". The Domain Name wholly incorporates the Trademarks and this trade name and leads the public to believe that the Domain Name is directly connected to Complainant, since it serves to identify nothing other than Complainant, according to Complainant. No rights or legitimate interests
According to Complainant, Respondent has no rights or legitimate interests in the Domain Name. Respondent does not have any trademark, trade name or business corresponding with the Domain Name. Respondent is also otherwise unknown under the Domain Name. The Domain Name has not been used by Respondent, according to Complainant. Complainant has never licensed or otherwise authorized Respondent to use its Trademarks in any way. The Domain Name has been registered or is being used in bad faith
Complainant asserts that the Domain Name has been registered in bad faith. Complainant contends that the Domain Name does not resolve to any website of Respondent; the website connected to the Domain Name belongs to the Internet service provider Easyhosting. The Domain Name is also not used in another way by Respondent. Therefore, there is no positive action being undertaken by Respondent in relation to the Domain Name, according to Complainant. Complainant argues that previous panel decisions have established that so-called "passive-holding" of a domain name can be considered as proof of bad faith.
According to Complainant, it has never licensed or otherwise authorized Respondent to use its Trademarks in any way and Complainant has not received a reaction to its warning letters.
Complainant established that Respondent sells "authentic Italian espresso coffee" and coffee machines, labelling its products and services with the Italian-sounding surname "Barlatto", through the website connected to the domain names and . On Barlatto's website it is explicitly stated (in Dutch): "My name is Mark Breedveld owner of the Italian coffee brand Barlatto, whose registered trademark is part of Campo Largo B.V.". Hence, given the similarities between the business of Respondent and Complainant, the fact that the words "caffè Vergnano" do not have a generic meaning in Italian and given Complainant's well-known Trademarks and prior rights, Respondent must have been aware of Complainant's rights in the Trademarks, the trade name "Caffè Vergnano" and Complainant's domain names consisting of this trade name at the time of registration of the Domain Name. According to Complainant, this is suggestive of Respondent's bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
As Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact. The Panel is entitled to further inform itself by limited reference to matters of public record (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5).1
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent.
Pursuant to article 2.1 of the Regulations, Complainant's request to transfer the Domain Name must meet three cumulative conditions:
a. the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which Complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. Respondent has no rights to or legitimate interests in the Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows: A. Identical or Confusingly Similar
Complainant has based its Complaint on its Trademarks and its trade name "Caffè Vergnano". Complainant has submitted a copy of its trademark registrations demonstrating that it is the holder of the Trademarks. The Trademarks are protected under Dutch law. Complainant has also argued that it has rights to the trade name "Caffè Vergnano" since 1882. However, Complainant has insufficiently established that its trade name is protected in the Netherlands. Therefore, the Panel will review the Complaint only on the basis of the Trademarks.
It is established case law that the Top-Level Domain ".nl" may be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other hand (see Caterpillar Inc. v. H. van Zuylen Materieel,WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008).
The Domain Name consists of the same components "caffe" and "vergnano" as the Trademarks, wherein the first element is descriptive and the second element distinctive. The Domain Name only omits the year "1882" in the Trademarks. Therefore, the Domain Name is textually, visually and phonetically nearly identical to the Trademarks.
The Panel finds that the Domain Name is confusingly similar to the Trademark for purposes of the Regulations. Therefore, the first requirement of article 2.1(a) under I of the Regulations is met. B. Rights or Legitimate Interests
Complainant has fulfilled its obligation to establish prima facie that Respondent has no right to or legitimate interest in the Domain Name. As a result of its failure to submit a response, Respondent has not refuted the arguments of Complainant and shown rights to or legitimate interests in the Domain Name. The Panel could not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has a right to or legitimate interest in the Domain Name.
The Panel concludes that Complainant has met the second requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith
Considering the apparent well-known status of the Trademarks and prior rights of Complainant, the fact that Complainant has never licensed or otherwise authorized Respondent to use its Trademarks and that the words "caffè Vergnano" do not have a generic meaning, and the nature of Respondent's business, the Panel is of the opinion that Respondent was aware or should have been aware of Complainant and its Trademarks at the time of registration of the Domain Name.
Previous panels have found that the incorporation of a well-known trademark in a domain name without plausible explanation is in itself an indication of bad faith (see Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 in which the panel stated: "The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith"). In this respect, the Panel notes that Respondent has not offered any such explanation.
The specific cumulative circumstances in this case in which the Domain Name is almost identical to the Trademarks and in which Respondent has provided no evidence whatsoever of any actual or contemplated good-faith use of the Domain Name, are indicative of bad faith on the part of Respondent in its registration of the Domain Name as well (see The Coca-Cola Company v. P. Engbers,WIPO Case No. DNL2012-0037; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the above grounds, the Panel finds that the requirements of registration in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have been met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, , be transferred to Complainant.
Remco M.R. van Leeuwen
Panelist
Date: August 31, 2016
1 While the Complaint is brought under the Regulations, and not the Uniform Domain Name Dispute Resolution Policy ("UDRP"), given the similarities between the two, where applicable the Panel considers UDRP precedent relevant to the current proceeding, and will refer to it where appropriate.
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