WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luigi Lavazza S.p.A. v. Satoshi Shimoshita
Case No. D2011-1299
1. The Parties
The Complainant is Luigi Lavazza S.p.A. of Torino, Italy, represented by Studio Barbero, Italy.
The Respondent is Satoshi Shimoshita of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <lavazza.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2011. On July 29, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On July 29, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2011.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 29, 2011. 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 operates under the brand LAVAZZA and is one of the most famous Italian coffee importer and roaster, as well coffee shop retailer.
The Complainant was first established in 1895 in Turin and today operates in over 90 countries, with thousands of employees worldwide and a wide distribution network.
The trademark LAVAZZA was registered by the Complainant in several countries and regions, including Japan.
The Complainant also registered numerous domain names containing the trademark LAVAZZA.
The disputed domain name was registered by the Respondent on October 23, 2004.
The Complainant's authorized representatives sent a cease and desist letter to the Respondent on September 15, 2010 via registered mail and email, requesting the Respondent to inactivate the website immediately and to transfer the disputed domain name. As the Respondent did not provide any response to the Complainant’s authorized representative, reminders were sent on October 07, 2010 and on March 23, 2011.
The Panel accessed the website displayed at the disputed domain name on September 12, 2011 and there was a pay-per-click page with several sponsored links for coffee products and retailers.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is identical to trademarks in which the Complainant has rights. Furthermore, the word “lavazza” is not descriptive and directly relates to the Complainant's activities and business. The addition of a generic top-level domain name extension such as “.net” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark.
(ii) The Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. The Complainant’s trademarks are highly distinctive for coffee products and services and well-known worldwide. Therefore, the Respondent is intentionally profiting from the Complainant’s famous trademarks. The use of the domain name as a pay-per-click parking page can not be considered a legitimate non-commercial or fair use of the disputed domain name. The Respondent is not a licensee or an authorized agent of the Complainant, and was not authorized to use the Complainant’s trademark LAVAZZA. The Respondent is not commonly known by the disputed domain name as an individual, business or other organization and "lavazza" is not the family name of the Respondent. Also the Respondent did not reply to the cease and desist letters sent by the authorized representatives of the Complainant. Satisfying the burden of proving the Respondent’s lack of rights or legitimate interests on the domain name is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly, it is sufficient that the Complainant shows a prima facie evidence in order to shift the burden of proof on the Respondent.
(iii) The Complainant’s trademark is widely known. Thus the Respondent could not have possibly ignored the existence of the Complainant's brand when he registered the disputed domain name. The disputed domain name is currently redirected to a web page where Internet users can find sponsored links to various web sites. As a result, also the Respondent earns commission whenever an Internet user visits the website and clicks on one of the sponsored link. Such a conduct indicates the Respondent’s bad faith. The Respondent was considered acting in bad faith in several other UDRP panel decisions. Among others, the Respondent has registered the domain name <pollypocketgames>, confusingly similar to the registered and well known trademark POLLY POCKET. The Respondent uses those domain names - as well the disputed one - in connection with parking pages with commercial links, diverting consumers to gain revenues from the pay-per-click system. A failure to respond to a cease and desist letter can also be evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “lavazza” is a term directly connected with the Complainant’s activities in the coffee business.
Annexes 3.1 to 3.9 to the Complaint demonstrate registrations of LAVAZZA trademarks in several countries and regions (including Japan) since at least 1966.
The trademark LAVAZZA is wholly encompassed within the disputed domain name. The addition of a generic top-level domain name extension ””.net” is irrelevant when determining whether a disputed domain name is confusingly similar to a registered trademark.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is displayed at the disputed domain name basically hosts pay-per-click links to competitor’s websites.
The Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The registration of the disputed domain name was made well after the Complainant’s trademark registrations and without the Complainant’s authorization.
Furthermore, when the disputed domain name was registered the Complainant’s trademark LAVAZZA was already well known in the coffee business worldwide. Therefore, it is not feasible that the Respondent could has been unaware of the Complainant’s reputation and business.
Also, the disputed domain name is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) obtains click-through revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promote products offered by competitors.
In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474, and also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
This conclusion is emphasized by the Respondent's non-collaborative behavior in this case and when received the cease-and-desist letters, as well its track record as a respondent in previous UDRP cases.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lavazza.net> be transferred to the Complainant.
Dated: September 12, 2011