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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke Douwe Egberts B.V. v. WhoisGuard Protected / WhoisGuard, Inc / Robert Lucian

Case No. D2015-1967

1. The Parties

The Complainant is Koninklijke Douwe Egberts B.V. of Utrecht, Netherlands, represented by Ploum Lodder Princen advocaten en notarissen, Netherlands.

The Respondent is WhoisGuard Protected / WhoisGuard, Inc of Panama / Robert Lucian of Bucharest, Romania, self-represented.

2. The Domain Name and Registrar

The disputed domain name <demasterblenders1753.xyz> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2015. On November 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 November 9, 2015 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 amended Complaint on November 10, 2015.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. The Response was filed with the Center on November 30, 2015.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on December 9, 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

The Complainant has submitted evidence that it is the owner of the following trademark registrations for D.E MASTER BLENDERS 1753:

- Benelux trademark D.E MASTER BLENDERS 1753, with registration number 0916380 (registered on March 14, 2012).

- Benelux trademark D.E MASTER BLENDERS 1753, with registration number 0916357 (registered on March 14, 2012).

- Community trademark (CTM) D.E MASTER BLENDERS 1753, with registration number 010724904 (registered on September 25, 2012).

- Community trademark (CTM) D.E MASTER BLENDERS 1753, with registration number 010461697 (registered on April 30, 2012).

- International trademark registration (IR) D.E MASTER BLENDERS 1753, with registration number 1130206 (registered on March 13, 2012).

- International trademark registration (IR) D.E MASTER BLENDERS 1753, with registration number 1167280 (registered on October 31, 2012).

The disputed domain name <demasterblenders1753.xyz> was registered on August 13, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant, founded in 1753, is an international coffee and tea company with headquarters in the Netherlands. The Complainant processes and trades coffee, tea and other groceries. The Complainant has almost 7,500 employees. The brand DOUWE EGBERTS is more than 260 years old and has been used for over 100 years on coffee packaging. In 2012 the Complainant became an independent Dutch company, trading under the name D.E Master Blenders 1753 N.V.. The Complainant is the owner of a number of trademark registrations for D.E MASTER BLENDERS 1753. The letters “D.E.” stands for DOUWE EGBERTS. The Complainant’s official website is “www.demasterblenders1753.com”. The Complainant’s trademark is a well-known brand in the Benelux as well in many other countries in the world.

The Complainant noticed that the disputed domain name was redirected to the website “www.3dnano.xyz” where the disputed domain name was offered for sale.

On August 31, 2015, the Complainant’s legal representative sent a cease and desist letter to the Respondent. On September 6, 2015, while the Respondent acknowledged that the disputed domain name had been for sale, the Respondent informed the Complainant that this was no longer the case. The Respondent removed the disputed domain name from his list of domain names for sale.

The disputed domain name is identical or at a minimum confusingly similar to the D.E MASTER BLENDERS 1753 trademark, as it incorporates the Complainant’s trademark in its entirety. The addition of the generic Top-Level Domain (“gTLD”) “.xyz” does not diminish the confusing similarity between the disputed domain name and the trademark. The gTLD “.xyz” has no particular distinctive meaning of its own.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. Before any notice of the dispute, the disputed domain name was redirected to the website “www.3dnano.xyz”. It was very clear that the Respondent offered the disputed domain name for sale and Internet users were invited to send an email to the Respondent. Therefore, it is clear that the disputed domain name was registered for the sole purpose to sell it.

The Complainant ascertained that the Respondent changed the website connected to the disputed domain name several times after receiving the Complainant’s letter. After receiving the letter, the Respondent informed the Complainant that the disputed domain name was no longer for sale. Instead of offering the disputed domain name for sale, the Respondent used the disputed domain name as a parking and/or landing page featuring pay-per-click links. The Respondent then used the disputed domain name with intent to attract visitors to the Respondent’s website for commercial gain. Currently, the disputed domain name resolves to an inactive website.

The Respondent did not deny that the content behind the disputed domain name was changed to a parking page and that the disputed domain name is currently inactive. The Respondent stated that the disputed domain name was not used for commercial purposes, as the Respondent claimed that he is a hobbyist who collects domain names.

However, the fact is that the Respondent was offering the disputed domain name for sale before any notice of the dispute and that the disputed domain name then was used as a commercial parking page. The disputed domain name is currently resolving to an inactive website. Therefore, it is clear that the Respondent has never used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent is not named or known as D.E. MASTER BLENDERS 1753 and does not own a relevant trademark registration. It is also clear that no license or authorization has been given by the Complainant to the Respondent to use the D.E MASTER BLENDERS 1753 trademark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. As said, the Respondent is not making a noncommercial use of the disputed domain name.

Moreover, there is also no fair use of the disputed domain name, as there is no reason to use the D.E MASTER BLENDERS 1753 trademark.

It is not reasonable to believe that the Respondent accidentally made up the words D.E MASTERBLENDERS 1753 by himself and registered the disputed domain name without any knowledge of the Complainant and/or the D.E MASTERBLENDERS 1753 trademark. Therefore, the Complainant is convinced that the Respondent registered the disputed domain name in bad faith.

By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Respondent has registered the disputed domain name primarily for the purpose of selling it. This has been acknowledged by the Respondent in his email of September 6, 2015. The Respondent wrote: “I have acknowledged your observations and therefore I canceled with immediate effect this domain from the list of sale, thus it is not used for commercial/trade purposes that could achieve your interests in terms of trade mark protection.”

After receiving the Complainant’s letter, the Respondent changed the content of the website behind the disputed domain name to a commercial parking page. Therefore, the Respondent used the disputed domain name in a different way, but still with the intention to attract, for commercial gain, Internet users to the disputed domain name, by creating confusion with the Complainant’s trademark respectively, as to the source or sponsorship, affiliation or endorsement of the Respondent’s website.

The Respondent is ultimately responsible for the use of the disputed domain name. The fact that a registrar has provided a parking page and that the sponsored links displayed are served automatically by a third party does not absolve the Respondent from liability. Furthermore, it is irrelevant whether or not the Respondent is in fact making any direct commercial gain from the parking page. Previous panels have held that paragraph 4(b)(iv) of the Policy does not require the owner of the domain name to be the entity that commercially gains from the diversion.

B. Respondent

The Respondent registered a number of domain names, including the disputed domain name, in August 2015. On September 7, 2015, the Respondent asked the Registrar to remove the connection between the website “www.3dnano.xyz” and all of his domain names.

The Respondent has difficulties understanding the Complainant’s interest in the disputed domain name as there are numerous “demasterblenders1753” domain names in various TLDs listed as available or for sale. If the Respondent would cancel the disputed domain name, the Respondent could then register the same domain name again in another TLD. If the Complainant really wanted to protect its trademark, it could have reserved the phrase in all TLDs so that consumers cannot register these domain names. As long as a domain name is available without any restriction it is legal to register it. The Complainant should have found a way to notify consumers that if they register available domain names, it can lead to a trademark conflict. Many companies register domain names in different TLDs to avoid complications. Domain names that include trademarks like PEPSI, SHELL, VISA, etc. are not available for registration because they already belong to their respective trademark owners. The Complainant should prove that it has taken all the possible measures to protect its trademark. The above proves the Complainant has no interest in protecting its trademark D.E MASTERBLENDERS 1753.

The Respondent registered the disputed domain name 590 days after the TLD “.xyz” launch date. Thus, the Complainant had a very long time to protect its interests but chose not to. The Respondent itself does not represent any threat to the Complainant’s interests but there could be other persons that could present a bad-faith type of behavior.

Because the Respondent has no commercial interest, it is obvious that the Respondent has not requested any license or authorization from the Complainant to use the Complainant’s trademark. The Respondent intends to keep the disputed domain name within a private collection that cannot be sold. The Respondent has no intention of using the disputed domain name in a commercial manner or in any way that endangers the Complainant’s reputation. The Respondent does not intend to use the disputed domain name in any way.

The disputed domain name was put on the sales list by mistake because it is not a popular trademark. As soon as the Respondent was notified by the Complainant, the disputed domain name was removed from the sales list. The disputed domain name was directed to the parking site for two days while the Respondent looked into the matter.

The Respondent does not agree with the Complainant that it is not reasonable to believe that the Respondent accidentally made up the disputed domain name without any knowledge of the trademark D.E MASTERBLENDERS 1753.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark D.E MASTERBLENDERS 1753. The disputed domain name <demasterblenders1753.xyz> incorporates the Complainant’s trademark in its entirety except for the non-distinctive punctuation mark between the letters “d” and “e”. Due to technical restrictions, a punctuation mark cannot be used in a domain name other than to separate a Second-Level Domain from either a TLD or a subdomain.

Having the above in mind, the Panel concludes that the disputed domain name <demasterblenders1753.xyz> is identical to the Complainant’s trademark D.E MASTERBLENDERS 1753 and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has used or 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 prior to any notice of the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or

(iii) that it is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has declared that it is not commonly known by the disputed domain name or any similar name. The Respondent has also declared that it has no license or consent from the Complainant to use the Complainant’s trademark D.E MASTERBLENDERS 1753 in connection with the disputed domain name, which is identical to the Complainant’s trademark.

The Complainant has submitted evidence indicating that the disputed domain name has been offered for sale to the public. After having received the Complainant’s cease and desist letter, the Respondent redirected the disputed domain name to a commercial parking page containing sponsored advertisements. After this, the disputed domain name was redirected to an inactive website. Although the Respondent has claimed that the disputed domain name was offered for sale by mistake, there is no evidence in the case that indicates that the Respondent, prior to any notice of the dispute, used or made preparations to use the disputed domain in connection with a bona fide offering of goods or services.

After having carefully examined the parties’ submissions, it is the Panel’s conclusion that there is no evidence indicating that the Respondent makes a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that successfully refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Complainant’s trademark registration D.E MASTERBLENDERS 1753 predates the registration of the disputed domain name, which is confusingly similar to the trademark. As described above, the submitted evidence indicates that the Respondent, before any notice of the dispute, offered the disputed domain name for sale. Furthermore, the submitted evidence indicates that after the Respondent received the Complainant’s cease and desist letter, the disputed domain name was redirected to a commercial parking site with sponsored links. After this, the disputed domain name was redirected to an inactive website. The Respondent has claimed that it is not responsible for the commercial content on the parking page. As described in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a domain name registrant is normally responsible for content appearing on a website at its domain name, even if the registrant is not exercising direct control over the content.

Although the Respondent maintains that it is reasonable to believe that the Respondent accidently came up with the phrase D.E MASTERBLENDERS 1753 and registered the disputed domain name without any knowledge of the Complainant’s trademark, the Panel agrees with the Complainant that the Respondent knew or must have had knowledge of the Complainant’s trademark when registering the disputed domain name.

It has been argued by the Respondent that since the Complainant has not registered the trademark in all available TLDs, the Complainant has no genuine interest in protecting the trademark and anyone is free to register a corresponding phrase as a domain name. This is nonsense.

Thus, the evidence in the case before the Panel indicates that the disputed domain name has, for a period of time before any notice of the dispute, intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith.

7. Decision

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 name, <demasterblenders1753.xyz>, be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: December 17, 2015

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