ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Caffè Borbone S.r.l. v. Mr. Hassan Shafiian Case No. DIR2024-0011 1. The Parties The Complainant is Caffè Borbone S.r.l., Italy, represented by Società Italiana Brevetti S.p.A., Italy. The Respondent is Mr. Hassan Shafiian, Iran (Islamic Republic of). 2. The Domain Name and Registrar The disputed domain name is registered with IRNIC. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2024. On September 27, 2024, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 1, 2024, IRNIC 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 the same day, providing the registrant and contact information disclosed by IRNIC, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 4, 2024. Hard copies of the Complaint were received by the Center on October 2, 2024. The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2024. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2024. The Respondent did not submit any response. Accordingly, on November 4, 2024, the Center notified the Respondent’s default.
page 2 The Center appointed Mihaela Maravela as the sole panelist in this matter on November 6, 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 According to information in the Complaint, the Complainant is an important Italian company acting in the coffee industry. It was founded in 1996 in Naples, and it produces every day around 96 tons of processed coffee in its Italian factories. The Complainant has won various awards, including the 2019 Quality Award, given to food products (Food & Beverage), or the 2020 Business Excellence Award dedicated to companies operating in Italy. The Complainant is the holder of a number of trademarks for CAFFÈ BORBONE and BORBONE, including the International trademark No. 902614 for CAFFÈ BORBONE (figurative) registered on January 11, 2006 for classes of products and services 9, 30 and 43, and the Iranian trademark No. 1359499 for CAFFÈ BORBONE (figurative) registered on May 30, 2017 for classes 11, 30 and 43. The Complainant has registered numerous domain names for CAFFÈ BORBONE, including which it uses as its official website or . The disputed domain name was registered on December 20, 2022, and according to evidence with the Complaint, it was used to redirect to a website prominently displaying the CAFFÈ BORBONE trademark and logo of the Complainant, without displaying any disclaimer of non-affiliation with the Complainant. The disputed domain name does not resolve to an active website at the date of the decision. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name almost identically reproduces the Complainant’s trademarks, except for the last letter “e” which lacks in the disputed domain name. With respect to the second element, the Complainant submits that it has neither authorized, nor somehow given its consent to the Respondent to register and / or use the disputed domain name. Further, the Complainant argues that the Respondent chose to use the well-known trademark CAFFÈ BORBONE to divert Internet users from the Complainant’s website by capitalizing on the association of CAFFÈ BORBONE with the Complainant’s coffee products, because the website at the disputed domain name reproduced until October 12, 2023 the Complainant’s trademark without any authorization. Also, there was no indication on the website to which the disputed domain name resolved, from which a user could understand the (lack of) relationship between the Complainant and the Respondent. On the contrary, no information about the identity of the disputed domain name owner was available on the relevant website. Therefore, since the website did not accurately disclose the Respondent’s relationship with the trademark owner, the Complainant concludes that the Respondent’s website falsely suggested that it was the trademark owner, that the website was the official site of the Complainant or its goods or that the website belonged to one of its partner(s)/affiliate(s)/clients. As regards the third element, the Complainant claims that its trademarks were used and registered long before the registration of the disputed domain name and the Respondent could not have been unaware of the BORBONE and CAFFÈ BORBONE trademarks at the time of the registration of the disputed domain name, given the reputation of the Complainant and the fact that the disputed domain name almost identically incorporates the CAFFÈ BORBONE trademark. The fact that the disputed domain name resolved to a website on which there was no information about the Respondent nor
page 3 about its relationship with the Complainant (trademark owner) is a clear indication of bad faith. The Complainant submits that even if at the date of the Complaint, the disputed domain name no longer resolves to an active website, this does not prevent a finding of bad faith use and registration under the doctrine of so called “passive holding”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 in respect of the disputed domain name, and (iii) the disputed domain name has been registered or 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the mark is recognizable within the disputed domain name. The disputed domain name consists of the obvious misspelling of the CAFFÈ BORBONE trademark of the Complainant, with the removal of “e” at the end of the second word in disputed domain name. This misspelling in the disputed domain name, also referred as typosquatting, does not prevent a finding of confusing similarity, as the trademark is recognizable in the disputed domain name. Section 1.9 of the WIPO Overview 3.0. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. As established by previous panels, it is sufficient for the complainant to make a prima facie case demonstrating that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent (see section 2.1 of the WIPO Overview 3.0). In the present case, the Complainant has proved it holds rights over the trademark CAFFÈ BORBONE, and claims that the Respondent has no legitimate reason to register or acquire the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, nor does the Respondent appear to 1 Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel deems the WIPO Overview 3.0 and the UDRP decisions relevant.
page 4 engage in any legitimate noncommercial or fair use of the disputed domain name. Rather, according to unrebutted evidence with the Complaint, the website at the disputed domain name allegedly has offered for sale the Complainant’s branded products, displaying the Complainant’s trademark CAFFÈ BORBONE and logo, with no disclaimer as to the relationship or lack thereof with the Complainant. Such use does not in the circumstances of this case give rise to any rights or legitimate interests on the Respondent’s part. There is no evidence that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because the Respondent did not respond to the Complainant’s contentions. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered or Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered or is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. According to the unrebutted assertions of the Complainant, its CAFFÈ BORBONE trademark was widely used in commerce well before the registration of the disputed domain name. The disputed domain name is confusingly similar with the Complainant’s trademark and the website at the disputed domain name displayed the Complainant’s trademark and logo, as well as the words “magica emozione” in Italian, which were also found on the website of the Complainant at . Under these circumstances, the Panel considers that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name and it targeted the Complainant. Registration in bad faith is sufficient under the Policy for the third element to be established. Nevertheless, the Panel will briefly analyze the bad faith use for completeness. The disputed domain name resolved to a website that purported to sell the Complainant branded goods and displaying the Complainant’s trademark and logo. The Complainant denies extending an authorization for such use. Given the circumstances in the case the Panel considers that the Respondent must have had knowledge of the Complainant’s rights in the CAFFÈ BORBONE trademarks when it registered the disputed domain name and it has intentionally created a likelihood of confusion with the Complainant’s trademarks and website in order to attract Internet users for its own commercial gain, as envisaged by paragraph 4(b)(iv) of the Policy and/or to disrupt the business of the Complainant. Further, the Respondent has not participated in these proceedings and has failed to rebut the Complainant’s contentions or provide any evidence of actual or contemplated good-faith use. In the Panel’s view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain name. Although at the time of filing of the Complaint, the disputed domain name was inactive, considering the circumstances of this case, the Panel finds that such non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0). Based on the available record, the Panel finds the third element of the Policy has been established.
page 5 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 cancelled. /Mihaela Maravela/ Mihaela Maravela Sole Panelist Date: November 14, 2024
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