WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Novadelta - Comércio e Indústria de Cafés S.A. v. Jose Valle, Orion Notebooks
Case No. D2015-0971
1. The Parties
Complainant is Novadelta - Comércio e Indústria de Cafés S.A. of Lisbon, Portugal, represented by Studio Turini, Italy.
Respondent is Jose Valle, Orion Notebooks, of Madrid, Spain.
2. The Domain Names and Registrar
The disputed domain names <cafesdelta.com> and <deltacafes.com> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2015. On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 3, 2015.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on July 16, 2015. 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
Complainant is a company with legal domicile in Lisbon, Portugal, that is active in the coffee industry.
Complainant has provided evidence that it is the owner of numerous registered trademarks relating to the designation “Delta Cafés”, including the following, all of which predate the registration of the disputed domain names:
- Word/device mark DELTA CAFÉS, Office for Harmonization in the Internal Market (OHIM), Registration No.: 005838347, Registration Date: May 5, 2008, Status: Active;
- Word mark DELTA – O CAFÉ DOS CAFÉS, Office for Harmonization in the Internal Market (OHIM), Registration No.: 009518598, Registration Date: June 3, 2011, Status: Active;
- Word/device mark DELTA CAFÉS ORO, Oficina Española de Patentes y Marcas (OEPM), Registration No.: M2358607, Registration Date: January 14, 2002, Status: Active.
Moreover, Complainant has evidenced to be the owner of the domain name <delta-cafes.com>, which was created on October 28, 2002 and which redirects to Complainant’s official website at “www.delta-cafes.com” in order to promote Complainant’s business and products.
The disputed domain name <deltacafes.com> was created on April 20, 2011; the disputed domain name <cafesdelta.com> was created on November 28, 2012. At some point before the filing of this Complaint, the disputed domain names were offered on the Internet for sale for a price of more than EUR 4,000, which is evidenced, inter alia, by two printouts from the website “www.123dominios.com” as well as by two emails from Respondent dated July 15, 2014 and July 18, 2014, accepting to receive “offers about these domains”.
Complainant requests that the disputed domain names be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to have been founded already in 1961 and claims to be an award winning and well-known company in the coffee industry, especially in the Iberian countries.
Complainant suggests that the disputed domain names are highly similar to Complainant’s DELTA CAFÉS trademark as they are both composed of the verbal elements thereof (whether or not in the correct order).
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Respondent is not commonly known thereby and (2) Respondent was not authorized, licensed or otherwise allowed by Complainant to use the DELTA CAFÉS brand nor to apply for any domain name incorporating said trademark under any circumstances.
Finally, Complainant asserts that the disputed domain names were registered and are being used in bad faith by Respondent since (1) the DELTA CAFÉS trademark has become a very famous trademark in the coffee industry since the 1960’s which is why it is hard to believe that Respondent was not aware of the existence of the DELTA CAFÉS trademark and reputation before registering the disputed domain names, (2) it would have been sufficient to type the words “DELTA” and “CAFÉS” into a search engine to realize that DELTA CAFÉS is a famous trademark owned by Complainant and, therefore, to find out about Complainant’s rights therein and (3) Respondent offered the disputed domain names for sale on the Internet for valuable consideration in excess of the registration costs.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names <cafesdelta.com> and <deltacafes.com> are at least confusingly similar to the DELTA CAFÉS trademark in which Complainant has shown to have rights.
The disputed domain names incorporate the designation “Delta Cafés” in its entirety. Such designation forms the predominant part of the majority of Complainant’s registered DELTA CAFÉS trademarks, whether they are pure word or combined word/device marks. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696). The mere fact that the disputed domain name <cafesdelta.com> is a combination of the two word elements “delta” as well as “cafés” in the reversed order does not change the finding of a similarity with Complainant’s DELTA CAFÉS trademark as these two word elements are still clearly recognizable therein (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2).
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain names in connection with a bona fide offering of goods or services nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent make a legitimate, noncommercial or fair use thereof.
Respondent has not been authorized to use Complainant’s DELTA CAFÉS trademark, neither as a domain name nor in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names.
Finally, Respondent so far has neither made use of the disputed domain names for a bona fide offering of goods or services nor for a legitimate, noncommercial or fair use. On the contrary, Respondent apparently offered the disputed domain names for sale on the Internet, which is, inter alia, evidenced by two emails sent by a “Jose” under Respondent’s registered e-mail address on July 15, 2014 as well as on July 18, 2014, accepting to receive “offers about these domains”.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on June 12, 2015, nor did he come forward with any other reasonable explanation that might have thrown a different light on Respondent’s possible rights or legitimate interest in the disputed domain names.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
Complainant contends, and Respondent has not challenged this contention, that Complainant’s DELTA CAFÉS trademark is well-known especially in the Iberian coffee industry and has meanwhile become a well-known trademark since its introduction onto the coffee market already in the 1960’s. The Panel, furthermore, agrees with Complainant’s argumentation that entering the designations “delta” as well as “cafés” into a search engine, it would have been easy to reveal that the DELTA CAFÉS trademark is owned by an international coffee company. Against this background, it is indeed difficult to believe that Respondent was unaware of the DELTA CAFÉS trademark at the time of registering the disputed domain names. Moreover, Complainant has evidenced that Respondent apparently offered the disputed domain names for sale on the Internet for a price of more than EUR 4,000, which clearly exceeds the usual domain name registration costs. Accordingly, the Panel is convinced that Respondent registered the disputed domain names for the purpose of selling them e.g., to Complainant (the owner of the DELTA CAFÉS trademark) for valuable consideration in excess of the documented out-off-pocket costs directly related to the disputed domain names. Such circumstances serve as evidence of the registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) under 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 disputed domain names <cafesdelta.com> and <deltacafes.com> be transferred to Complainant.
Stephanie G. Hartung
Date: July 28, 2015