The Complainant is Luigi Lavazza S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.
The Respondent is Ольховский Михаил Викторович / Ol’khovskij Mikhail Viktorovich, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on August 19, 2021, 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 amendment to the Complaint on August 19, 2021.
On August 19, 2021, the Center sent an email communication regarding the language of the proceeding in both Russian and English. On August 20, 2021, the Complainant confirmed its request to proceed in English, and the Respondent did not submit any comments.
The Center verified that the Complaint together with the amendment to 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 in English and Russian the Respondent of the Complaint, and the proceedings commenced on August 30, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2021.
The Center appointed Kateryna Oliinyk as the sole panelist in this matter on October 12, 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 BackgroundThe Complainant was established in 1895 in Turin. By 1910, the company was already one of the top Italian coffee importer and roaster. The Complainant is known internationally, for example, because of worldwide marketing, R&D, and its well-known calendar. In the 2020 Global RepTrak® 100, the ranking of corporate reputation for the world’s leading companies, the Complainant occupied the 33rd position.
According to the Complaint, the Complainant’s turnover in 2014 amounted to over 1,344 billion Euro, and in 2015 the Complainant’s revenues amounted to 1,4 billion Euro.
The Complainant has the international presence and operates foreign branches in European countries, including France, Germany and Austria, and outside Europe, including those countries as the United States of America, United Kingdom, Brazil and India.
The Complainant sells broad range of espresso blends, capsules and coffee machines under the trademarks A MODO MIO, LAVAZZA ESPRESSO POINT, LAVAZZA BLUE.
With more than 4,000 employees worldwide, direct subsidiaries and a wide distribution network the Complainant operates nowadays in 140 countries.
The Complainant has registered more than six hundred domain names, including the domain names
Through its website “www.lavazza.com”, the Complainant promotes its company and coffee products, provides information about Italian espresso and the Italian culture, aiming at being a benchmark for the international markets where the company operates.
The Complainant is the holder of the registered trademark rights in the trademark LAVAZZA, which are granted under the following trademark registrations:
European Union Trademark Registration No. 000317057 for LAVAZZA (word mark) registered on May 25, 1998 in classes 21, 30 and 42;
International Trademark Registration No. 317174 for LAVAZZA (word mark), registered on July 18, 1966 in classes 29, 30, 31 with the subsequent designation of Ukraine among other countries on July 12, 2002;
International Trademark Registration No. 1186133 for LAVAZZA (word mark), registered on July 29, 2013 in classes 7 and 11 with the subsequent designation of Ukraine among other countries on February 17, 2015;
Ukrainian Trademark Registration No. 275473 for LAVAZZA (stylized), registered on May 12, 2020, in classes 11, 30 and 43.
The disputed domain name
The Complainant sent cease and desist letters to the Respondent and Hosting provider which, despite of several reminders, remained unanswered.
5. Parties’ Contentions A. ComplainantIdentical or Confusingly Similar
The Complainant contends that the disputed domain name
No rights or legitimate Interests
The Respondent has no connection with the Complainant or any of its affiliates.
The Respondent fails to meet the criteria of the Oki Data Test1.
The right to resell a trademark holder’s products does not imply any right to use a trademark as a basis for a domain name.
The use of the disputed domain name cannot be considered a legitimate noncommercial or fair use without intent for commercial gain, because the disputed domain name has been used to attract Internet users to the website promoting the commercial activity of the Respondent in the resale of the Complainant’s products branded by the trademark LAVAZZA alongside with the competitor’s products.
Registered and used in bad faith
The Complainant submits that the Respondent knew about the trademark LAVAZZA and the registered trademark rights. The Respondent intentionally registered and is using the disputed domain name to attract, for commercial gain, Internet users to its commercial website, by creating a likelihood of confusion with the Complainant’s trademark LAVAZZA as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of its business promoted therein.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingThe language of the Registration Agreement for the disputed domain names is Russian. Paragraph 11(a) of the .UA Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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 particular, it is established practice to take paragraphs 10(b) and (c) of the .UA Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.
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 disputed domain name are in English, and that requiring the Complainant to translate the Complaint and all documents into Russian would cause unjustified delay in resolution of this case.
The Center has provided both Parties with an opportunity to comment on the language of the proceedings by sending both Parties a Language of Proceeding notification, as well as other communication in both Russian and English. The Complainant has provided submissions regarding the proper language of proceedings, while the Respondent did not raise any objection or reply thereto.
The Complainant communicates in English and would be prejudiced, should it be required to translate the Complaint and participate in this proceeding in Russian. Requiring the Complainant to translate the Complaint and all documents into Russian would cause delay in contravention to Paragraph 10(c) of the .UA Rules, which requires that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.” See Michael Kors (Switzerland) International GmbH. v. Minakova Maria,WIPO Case No. DUA2020-0002 (finding that the registration agreement was in Russian, but that the proceeding should be conducted in English since “the Panel has to balance that (i.e. the language requirement that is provided for in paragraph 11(a) of the.UA Rules) against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay”).
Furthermore, the Panel establishes that English is not the native language of the Complainant. 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).
In exercising its discretion to use a language other than that of the Registration Agreement, 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. See, e.g., Facebook Inc. v. Private Registration / Denis Khakimov,WIPO Case No. DUA2019-0002.
Considering that both parties have been given fair opportunities to present their cases and the Respondent has been given an opportunity to object to the proceedings being conducted in English but has not responded, the Panel finds that in the circumstances of this case, paragraph 11 of the .UA Rules is best served by allowing the proceedings to be conducted in English in accordance with the Complainant’s request as the Complainant could suffer significant disadvantages if the proceedings are conducted in Russian.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the .UA Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the .UA Policy A. Identical or Confusingly SimilarOwnership of a nationally or regionally registered trademark serves as a prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. The Complainant submitted evidence that the trademark LAVAZZA has been registered in various jurisdictions. Thus, the Panel finds that the Complainant’s rights in the trademark LAVAZZA have been established pursuant to the first element of the .UA Policy. See, e.g., Fonbet Corp. v. Геннадія П. Пастушенка,WIPO Case No. DUA2020-0010.
The disputed domain name is comprised of the trademark LAVAZZA and the term “store” combined with the country code Top-Level Domain (“ccTLD”) “.com.ua”.
Thus, the Panel finds that the disputed domain name incorporates the Complainant’s trademark LAVAZZA entirely.
In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the .UA Policy standing. See, e.g., Facebook Inc. v. Private Registration / Denis Khakimov,WIPO Case No. DUA2019-0002.
The Panel finds that the Complainant’s trademark LAVAZZA is clearly recognizable within the disputed domain name. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Once the ccTLD is ignored as a standard registration requirement, the addition of the term “store” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark LAVAZZA in which the Complainant has rights.
The first element of paragraph 4(a) of the .UA Policy is therefore satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the .UA Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. 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 evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the .UA Policy.
Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its trademark LAVAZZA. Thus, no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed.
Based on the case records, the Panel established that the Respondent has not been commonly known by or associated with the disputed domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name, which could demonstrate right or legitimate interest of the Respondent.
Furthermore, the nature of the disputed domain name, including additional terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant.
The disputed domain name resolves to a website promoting the sale of the coffee products under the trademark LAVAZZA and coffee products of the Complainant’s competitors, without providing an evident disclaimer as to the lack of affiliation with the Complainant.
Instead, the following statement appears on the website to which the disputed domain name resolves: “official distributor of the premium Italian coffee”, while the identity of the distributor is not identifiable onto the website.
Thus, the Panel finds that in the present case the Oki Data test is relevant. This test derives from the well-known decision of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
Relying on the Oki Data decision, many panels have recognized that resellers and distributors using a domain name containing a trademark to undertake sales related to the complainant’s goods may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. The elements of the Oki Data test are as follows:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
In the Panel’s view, the use of the disputed domain name by the Respondent in this case does not constitute either bona fide use or a legitimate noncommercial or fair use of the disputed domain name, as it is clearly used to target the Complainant and trade off the goodwill of the trademark LAVAZZA.
Here, the Respondent made misrepresentation on the website publishing a statement that may imply affiliation and/or ties with the Complainant, hiding its identity in the WhoIs data and omitting full information about the service operator on the website.
Furthermore, the website at the disputed domain name is selling coffee products from the Complainant’s competitors.
Thus, the Panel establishes that at lease elements (ii) and (iii) of the Oki Data test are not met in the present case.
The Panel notes the following important discussion in respect of element (iii) of the Oki Data test:
“The Panel’s assessment of the cited authorities in respect of this criterion make it clear that the predominant concern is deceptiveness in the subject website, in the sense of conduct likely to mislead Internet users as to some relationship between the website operator and the trademark owner. Conversely, if the absence of such a relationship is obvious from the website, even if not expressly stated, so that no reasonable person could be misled in the required way, this should be sufficient to absolve the website operator.” Karen Millen Fashions Limited v. Danny Cullen,WIPO Case No. D2011-1134.
On balance, the Panel finds that the Respondent does not meet the Oki Data test.
Furthermore, by not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. Under such circumstances the Panel draws adverse inferences from this failure, where appropriate, in accordance with the .UA Rules, paragraph 14(b).
Therefore, it is clear that the Respondent registered and has been using the disputed domain name in order to attempt to attract Internet users to its website for commercial gain, by causing a likelihood of confusion and association with the Complainant and its trademark LAVAZZA. See, e.g., LuigiLavazzaS.p.A. v. ИльинАлексейПавлович,WIPO Case No. DUA2021-0006.
The second element of paragraph 4(a) of the .UA Policy is therefore satisfied.
C. Registered or Used in Bad FaithThe .UA Policy requires a complainant to establish that the disputed domain name was registered or is being used in bad faith. The .UA Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the .UA Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [respondent’s] website or location”.
The Panel finds that the Respondent was aware of the LAVAZZA mark when it registered the disputed domain name:
- the Complainant’s trademark LAVAZZA is well known;
- it appears the Respondent is selling the Complainant’s products on the website under the disputed domain name;
- the trademark LAVAZZA has been in use and has got the trademark protection through various registrations well before registration of the disputed domain name;
- the Complainant sent the cease and desist letter to the Respondent.
These facts show bad faith registration of the disputed domain name.
Bad faith use is shown from the Respondent’s activities to attract, for commercial gain, Internet users to the Respondent’s commercial website, by creating a likelihood of confusion with the Complainant’s trademark LAVAZZA as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of its business promoted therein.
Additionally, failure to respond to a cease and desist letter or other communications, as well as the Respondent’s failure to take part in the present .UA proceedings constitutes further evidences of bad faith.
The third element of paragraph 4(a) of the .UA Policy is therefore satisfied.
7. DecisionFor 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
Kateryna Oliinyk
Sole Panelist
Date: October 26, 2021
1 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.