WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Luigi Lavazza S.p.A. v. Noori net
Case No. D2012-0466
1. The Parties
The Complainant is Luigi Lavazza S.p.A. of Turin, Italy, represented by Studio Barbero of Italy.
The Respondent is Noori net of Gyeongju-si, Gyeongsangbuk-do, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <lavazzaamodomio.com> (the “Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. dba DomainCA.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2012. On March 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 9, 2012, 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.
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”).
On March 9, 2012, the Center notified the parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On the same day, the Complainant confirmed its request in the Complaint that English be the language of the proceeding. The Respondent did not submit any request for the language of the proceeding.
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 March 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2012.
The Center appointed Jung Wook Cho as the sole panelist in this matter on April 13, 2012. 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 mark LAVAZZA and is a widely-known Italian manufacturer of coffee products. The Complainant was first established in 1895 in Turin, Italy, and today operates in over 90 countries with more than 4,000 employees worldwide. The Complainant has registered the trademarks LAVAZZA and LAVAZZA A MODO MIO in several countries and regions, including in the Republic of Korea (“Korea”). The Complainant has also registered hundreds of domain names containing its trademarks LAVAZZA and LAVAZZA A MODO MIO.
The Disputed Domain Name was registered by the Respondent on May 21, 2010. According to the evidence submitted by the Complainant, the website under the Disputed Domain Name (“Respondent’s Website”) resolves to a pay-per-click page with sponsored links for third party websites.
In an email communication dated November 2, 2010, a web agency, under the direction of the Complainant, asked the Respondent whether it would be interested in transferring the Disputed Domain Name to the web agency and, if so, at what price the Respondent would agree to the transfer. On November 3, 2010, the Respondent responded via email that it would transfer the Disputed Domain Name in exchange for EUR 5,000. On the same day, the Complainant instructed the web agency to reject the Respondent’s offer. On January 25, 2011, the Complainant, through its legal representative, sent a cease and desist letter to the Respondent via email and registered mail, demanding, among other things, immediate transfer of the Disputed Domain Name to the Complainant. Because the Respondent did not respond to the Complainant’s cease and desist letter, on April 5, 2011, the Complainant sent a subsequent reminder, to which the Respondent again did not respond.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark LAVAZZA A MODO MIO. Furthermore, the word “lavazzaamodomio” is not descriptive and directly relates to the Complainant’s activities and business.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not a licensee or an authorized agent of the Complainant, and was not otherwise authorized to use the Complainant’s trademark LAVAZZA A MODO MIO. In addition, the Respondent is not commonly known by the Disputed Domain Name as an individual, business or other organization. Hence, the mere use of a domain name as a pay-per-click parking page cannot be considered a legitimate noncommercial or fair use of the Disputed Domain Name.
(iii) The Respondent registered and uses the Disputed Domain Name in bad faith. Due to the fame of the trademark LAVAZZA A MODO MIO and the communications through which the Complainant requested the transfer of the Disputed Domain Name, the Respondent knew of the Complainant’s rights in the trademark LAVAZZA A MODO MIO when it registered the Disputed Domain Name. Furthermore, the links to the various commercial web pages on the Respondent’s Website have the purpose of generating revenue through redirecting the Internet user to the respective commercial web page.
The Respondent did not reply to the Complainant’s contentions. Accordingly, and based on paragraph 14(b) of the Rules, the Panel shall draw such inferences from this default of the Respondent as it considers appropriate.
6. Discussion and Findings
6.1 Language of the Proceeding
In accordance with paragraph 11(a) of the Rules, the panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules. In adopting 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. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432.
In this case, the language of the Registration Agreement is Korean, and both the Respondent and the Registrar are located in Korea. However, the Panel notes that the Registration Agreement is also published in English on the Registrar’s website. Also, when the Complainant sent an email in English requesting the transfer of the Disputed Domain Name, the Respondent replied in English and did not request that the dialogue be held in any other language, which appears to demonstrate the Respondent’s ability to communicate in English.
Furthermore, the Complainant in its Complaint formally requested that the language of the proceeding be English, to which the Respondent failed to comment on or object despite the Center’s invitation to do so. In light of above circumstances, and considering the expenses to be incurred and possibility of delay in the proceeding in the event translations are required, the Panel hereby determines under paragraph 11(a) of the Rules that the appropriate language of the proceeding is English.
6.2 Analysis of the Complaint
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(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 and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name encompasses the Complainant’s trademark LAVAZZA A MODO MIO in its entirety. Previous UDRP panels have held that identity or confusing similarity may be sufficiently established if “a domain name wholly incorporates a complainant’s registered mark” (see Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 and Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 with further references). The Panel follows this finding.
Therefore, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy illustrates the circumstances which, if demonstrated, may establish a respondent’s rights or legitimate interests in a domain name, which include the following:
(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 none of the above circumstances are present in this case.
Here, the Panel finds that the Respondent does not use and has not made preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. The only relevant contents of the Respondent’s Website are lists of pay-per-click links that diverts the Internet traffic to third party commercial web pages in order to generate revenues. Furthermore, the Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear that the Respondent is commonly known by the Disputed Domain Name.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
Regarding the registration and the use of the Disputed Domain Name in bad faith according to paragraph 4(a)(iii) of the Policy, the Panel considers the following.
The Respondent’s registration of the Disputed Domain Name in 2010 was made well after the Complainant’s registration of its trademark LAVAZZA A MODO MIO in 2007 in various countries including Korea where the Respondent is located, and after the Complainant had already expended considerable advertising costs and made significant sales of its LAVAZZA-branded products worldwide. Moreover, the Complainant operates its international official website under the domain name <lavazzamodomio.com>, which is very similar to the Disputed Domain Name. The Complainant also operates another official website “www.lavazza.com” which has a section dedicated to Korea containing information on the exclusive importers in Korea as well as links to local websites dedicated to the Korean consumers, such as “www.lavazzakorea.com” and “www.lavazzablue.co.kr”. Therefore, the Panel finds that the Respondent must have known of the Complainant’s trademark LAVAZZA A MODO MIO at the time of its registration of the Disputed Domain Name. Following the Respondent’s registration, the Complainant demanded several times by email and letter that the Disputed Domain Name be transferred to the Complainant. In light of the foregoing, the Panel is satisfied that the Respondent must have known of the Complainant, its products and its trademarks prior to and after the registration of the Disputed Domain Name, and that the Respondent registered the Disputed Domain Name in bad faith (see Dr. Ing. h.c. F. Porsche AG, supra, where the UDRP panel comes to the same conclusion).
Additionally, the Disputed Domain Name in this case is being used as a pay-per-click page, displaying sponsored links for third party websites. Thus, the Respondent is exploiting the fame of the Complainant’s trademark in order to generate income. This creates a likelihood of confusion with the Complainant’s trademark and deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant. In this regard, the Panel refers to, and adopts, the UDRP decisions which have considered this type of use of a domain name sufficient to demonstrate “bad faith” (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).
Finally, the Panel’s finding of bad faith is buttressed by the Respondent’s non-cooperative behavior in response to the Complainant’s cease-and-desist letters, and also by the fact that the Respondent requested the payment of EUR 5,000 in exchange for its transfer of the Disputed Domain Name, which far exceeds the reasonable out-of-pocket expenses directly related to the Disputed Domain Name.
Accordingly, the Panel finds 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 concludes that the Disputed Domain Name <lavazzaamodomio.com> shall be transferred to the Complainant.
Jung Wook Cho
Dated: April 26, 2012