The Complainant is Luigi Lavazza S.p.A., of Italy, represented by Studio Barbero, S.p.A. Italy.
The Respondent is Ильин Алексей Павлович of Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2021. On April 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 15, 2021, the Center sent an email communication regarding the language of the proceeding in English and Ukrainian to the Parties indicating that the Registrar had confirmed that the language of the registration agreement was Ukrainian in this case. The Center invited the Parties to submit their preference as to the language of the proceeding. On April 16, 2021, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not respond. The Center verified that the Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Ukrainian, and the proceedings commenced on April 22, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was May 12, 2021. The Respondent did not submit a formal response. The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on May 21, 2021. 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 .UA Rules, paragraph 7. 4. Factual Background The Complainant is an Italian family owned coffee company that was first established in 1895 in Turin. After years of growth and international expansion, the Complainant operates now in over 140 countries and is spreading the culture and quality of Italian coffee in Italy and worldwide. The Complainant employs 4000 employees worldwide, has direct subsidiaries and a wide distribution network. The Complainant manufactures and sells coffee products under the LAVAZZA brand including a broad range of espresso blends, capsules and coffee machines traded under the marks A MODO MIO, LAVAZZA ESPRESSO POINT and LAVAZZA BLUE. The Complainant’s turnover in 2014 amounted to over 1.344 billion EUR, while in 2015 the Complainant’s revenues amounted to 1.4 billion EUR. The Complainant is also active in the promotion of its LAVAZZA brand. In 2015, the Complainant took Italian espresso onto the International Space Station, in collaboration with Argotec and the Italian Space Agency. The same year, to celebrate 120 years of its history, the Complainant took part in Expo 2015, the Universal Exposition hosted by Milan, where it presented the first LAVAZZA compostable capsule for preparing a perfect Italian espresso, respectful of the environment. The Complainant owns numerous trademark registrations for LAVAZZA trademark throughout the world including: - International Trademark Registration No. 317174 for LAVAZZA (word mark), registered on July 18, 1966, in classes 29, 30 and 31, designations include Ukraine; - International Trademark Registration No. 1186133 for LAVAZZA (word mark), registered on July 29, 2013, in classes 7 and 11, designations include Ukraine; - European Union Trademark Registration No. 000317057 for LAVAZZA (word mark), filed on July 18, 1996 and registered on May 25, 1998, in classes 21, 30 and 42; - International Trademark Registration No. 1299219 for (figurative mark), registered on February 23, 2016, in classes 11, 30 and 43. The Complainant owns the domain name In addition to Furthermore, in order to preserve its trademark rights and brand integrity the Complainant registered more than six hundred domain names containing LAVAZZA trademark. The Complainant’s website has a page devoted to Ukraine “www.lavazza.com/en/utils/all-countries/ukraine” where the Complainant lists its authorized distributors. The Respondent is a Ukrainian individual. According to the WhoIs, the disputed domain name was registered in the name of the Respondent on May 20, 2016. The website under the disputed domain name currently redirects to a domain name and a website “www.lav-shop.com.ua”. Based on the current version of the website and screenshots provided by the Complainant the website is a solo brand online store distributing LAVAZZA branded coffee. It prominently displays LAVAZZA trademarks and advertising “Ваш надежный поставщик итальянского кофе LAVAZZA” (“You trustful supplier of the Italian coffee LAVAZZA”). Prior to the filing of the dispute, the Complainant and the Respondent exchanged pre-Complaint correspondence. 5. Parties’ Contentions A. Complainant LAVAZZA trademark is an indisputably famous and well-known trademark in Italy and Europe, including in Ukraine, where the Respondent is prima facie based. The disputed domain name is confusingly similar to the Complainant’s trademark. The fact that the disputed domain name differs from the Complainant’s trademark by the addition of the non-distinctive element “shop” does not affect the confusing similarity because the element “shop” is a descriptive or generic term that does not prevent finding of confusing similarity. The country code Top-Level Domain (ccTLD) “.com.ua” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar with the LAVAZZA trademark. The Complainant has acquired rights on the LAVAZZA trademark in many jurisdictions throughout the world. The Complainant distributes branded coffee products to many countries in the world including to Ukraine. The Complainant’s trademark acquired protection significantly prior to the registration of the disputed domain name. The Complainant domain names The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademarks. Specifically, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name. The Respondent is not commonly known by the disputed domain name. The intention of the registration of the disputed domain name is to take advantage of the well-known LAVAZZA trademark. The Respondent could not be considered as a reseller involved into the “bona fide offering of goods or services” because he failed to comply with test established in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. In particular, the Respondent failed to accurately disclose the Respondent’s relationship with the Complainant. Furthermore, the wording at the website under the disputed domain name “Ваш надежный поставщик итальянского кофе LAVAZZA” (“You trustful supplier of the Italian coffee LAVAZZA”) clearly indicates that the Respondent falsely claims to be an authorized dealer of the Complainant. The Respondent registered and has been using the disputed domain name to attract the Internet users to its website for commercial gain, by causing a likelihood of confusion and association with the Complainant and its trademark LAVAZZA. The right to resell a trademark holder’s products does not imply any right to use the trademark as a basis for a domain name. The Respondent’s use of the disputed domain name could not be considered a legitimate noncommercial or fair use without intent for commercial gain, because the disputed domain name was used for resale of LAVAZZA products. The Respondent was well-aware of the Complainant’s well-known LAVAZZA brand at the time of registration of the disputed domain name and the likelihood of association with the Complainant. The Respondent registered and used the disputed domain name in bad faith. The Complainant seeks a decision that the domain name be transferred to the Complainant. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. However, on May 10, 2021 the Respondent sent to the Center an email in English where he noted that he had no intention to violate rights of the Complainant. The Respondent acknowledged that the Respondent was well aware of the LAVAZZA brand and coffee products, and aimed to promote the LAVAZZA brand in Ukraine. He is claiming that his website was receiving a lot of good feedbacks and is known in Ukraine. The Respondent also noted that he attempted to register the domain name Given the similarities between the .UA Policy and Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will refer to the UDRP precedents, and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), when relevant. A. Language of Proceeding According to paragraph 11(a) of the .UA Rules “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” In this case the Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is Ukrainian. The Panel also notes that the Respondent is located in Ukraine. The Complainant filed the Complaint in English and requested English to be the language of this proceeding indicating that the pre-Complaint correspondence between the Complainant and the Respondent was conducted in English, parts of the website corresponding to the domain name are in English, and that requiring the Complainant to translate the Complaint and all documents into Ukrainian would cause unjustified delay in resolution of this case. The Panel notes that the disputed domain name is composed of Latin characters, and that lavazzashop has no meaning in Ukrainian language. To the opposite, the disputed domain name contains the Complainant’s brand LAVAZZA combined with the English dictionary word “shop”. In previous similar cases, panels after considering the totality of the circumstances found that it would be fair to the parties not having English as their native language and one of which is not familiar with the Respondent’s native language to designate English as the language of the proceeding (see OPPO Pte. Ltd. v. Alexander Leonidovich Shirkov,WIPO Case No. DUA2019-0001). Furthermore, the Panel concludes that the Respondent has a good level of proficiency in English, based on the pre-Complaint correspondence conducted in English and the informal response provided by the Respondent in English by email of May 10, 2021. This Panel also concurs with the findings in, Facebook Inc. v. Private Registration / Denis Khakimov,WIPO Case No. DUA2019-0002, where it is noted that “while applying the provision on the language of the proceeding the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition.” The Center duly notified the Respondent in English and in Ukrainian on the request of the Complainant to use English as the language of the proceeding (being Ukrainian a language of the Registration Agreement accepted by the Respondent when registering the disputed domain name). The Respondent was also provided with an opportunity to object and request the proceeding to not be carried in English. Furthermore, the Panel notes that the Center sent the notification of the Complaint and commencement of the proceeding to the Parties in both languages (English and Ukrainian), accepting the Complaint filed in English, and giving equal opportunities to the Parties to participate in the proceeding. In addition, the Panel notes that the Respondent did not submit a formal Response, and did not use an opportunity to argue his case. The Respondent’s response on May 10, 2021 was in English and the Respondent did not object for English to be the language of the proceedings. The Center also appointed the Panel that is familiar with all three languages, English, Russian and Ukrainian, in order to treat the Parties equally in the proceeding. Therefore, the Panel concludes that each Party of the proceeding was treated fairly and was provided a fair opportunity to present its case. The Panel also finds additional translation of the filings would unfairly disadvantage and burden the Parties and delay the proceeding and adjudication of this matter. Based on the foregoing, the Panel concludes that it is not unfair for the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English. B. Identical or Confusingly Similar The Complainant has proved rights in LAVAZZA trademarks through the EU and international registrations designating Ukraine. Therefore, the Panel considers that the Complainant has satisfied the threshold requirement of having relevant trademark rights. The Panel also considers that the disputed domain name is confusingly similar to the Complainant’s LAVAZZA trademark. The disputed domain name Furthermore, the Panel notes that disputed domain name incorporates the Complainant’s trademark LAVAZZA in its entirety. Based on section 1.8 of the WIPO Overview 3.0, the Panel comes to a conclusion that LAVAZZA trademark is recognizable within the disputed domain name, and the addition of other terms (the dictionary word “shop”) does not prevent a finding of confusing similarity under the first element. The Panel finds that the dictionary word “shop” refers to online point of sale for LAVAZZA trademarked coffee products. Such addition of a dictionary word to the disputed domain name does not prevent a finding of confusing similarity under the first element. The Panel finds that according to a side-by-side comparison the disputed domain name is confusingly similar to the Complainant’s LAVAZZA trademark. In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the.UA Policy. C. Rights or Legitimate Interests According to paragraph 4(a)(ii) of the .UA Policy the Complainant has to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. However the overall burden of proof remains with the Complainant. Paragraph 4(c) of the .UA Policy provides circumstances that demonstrate the Respondent’s rights or legitimate interests to the disputed domain name, and that complainants frequently address to show that the activities of the Respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the .UA Policy), that the Respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the .UA Policy) and that the Respondent is not involved into a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the .UA Policy). The Panel finds that because the disputed domain name The Panel notes that the Respondent offers for sale on the website under the disputed domain name a variety of LAVAZZA branded coffee products, but the Respondent is not an authorized distributor of Complainant’s products in Ukraine and the website does not disclose the relationship between the Complainant and the Respondent. The website under the disputed domain name contains vague wording “Ваш надежный поставщик итальянского кофе LAVAZZA” (“You trustful supplier of the Italian coffee LAVAZZA”) that falsely suggests that the Respondent is an authorized dealer of the Complainant. The Panel comes to a conclusion, that the Respondent fails to satisfy the criteria 3 of the Oki Data Test (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). The pre-Complaint correspondence with the Respondent provided by the Complainant suggests that the Respondent was well aware that LAVAZZA is a trademark of the Complainant and that the Respondent was using the disputed domain name referring to LAVAZZA without the Complainant’s consent. Under such circumstances, the Panel concludes that the Respondent is not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the .UA Policy). According to the Registrar’s information, “Ильин Алексей Павлович” is the registrant of the disputed domain name. The Panel did not found any evidence that the Respondent is commonly known by the disputed domain name Because, the Respondent clearly aims to monetize the disputed domain name by selling products on the website, the Respondent activities does not fall under the legitimate noncommercial use (under paragraph 4(c)(iii) of the .UA Policy). Thus, the Panel finds that the Complainant has satisfied the second element of the .UA Policy, namely paragraph 4(a)(ii). D. Registered or Used in Bad Faith As the Panel established above, the Complainant’s LAVAZZA trademark is distinctive and well-known including in Ukraine. The Complainant sells its LAVAZZA branded coffee products in Ukraine through its authorized distributors and such products available all over Ukraine. The Panel notes that the Complainant’s marks for LAVAZZA were registered prior to the registration of the disputed domain name, and the Respondent, through the nature of the activities on the website under the disputed domain name was aware that such registration abuses the Complainant’s trademark rights. The Responded failed to submit a formal response or provide any evidence of a good-faith use. Moreover, the design of the website, prominent use of the Complainant’s LAVAZZA trademarks on the website and in the disputed domain name, absence of any disclaimers addressing lack of the relationship between the Complainant and the Respondent all suggests that the Respondent not only knew about the Complainant’s trademarks and official website, but intentionally was silent on the website under the disputed domain name so Internet users would believe that the website was associated, affiliated, sponsored or directly operated by the Complainant or the Complainant’s authorized distributor in Ukraine. The Panel finds that the Respondent intention has always been to use the disputed domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (see paragraph 4(b)(iv) of the .UA Policy). Therefore, the Panel concludes that the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name Oleksiy Stolyarenko
Sole Panelist
Date: June 10, 2021
Full & Egal Universal Law Academy