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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Casa del Caffè Vergnano S.p.A. v. Shumer Studio, Igor Petrov

Case No. D2017-0886

1. The Parties

Complainant is Casa del Caffè Vergnano S.p.A. of Santena, Italy, represented by Studio Legale Saglietti, Italy.

Respondent is Shumer Studio, Igor Petrov of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <vergnano1882.com> is registered with Ascio Technologies Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2017. On May 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2017, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 31, 2018.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 12, 2017. 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 organized under the laws of Italy that is active in the coffee industry running numerous own label coffee shops all around the world.

Complainant has provided evidence that it is the registered owner of the following trademarks relating to the designation "CAFFÈ VERGNANO 1882" with protection, inter alia, in Ukraine:

- Word-/device mark CAFFÈ VERGNANO 1882, International Trade Mark, Registration No.: 803914, Registration Date: April 22, 2003, Status: Active;

- Word-/device mark CAFFÈ VERGNANO 1882, International Trade Mark, Registration No.: 1186967, Registration Date: October 9, 2013, Status: Active.

Moreover, Complainant evidentially owns several domain names relating to its trademarks, inter alia, <caffevergnano.com>, <caffevergnano.net>, <caffevergnano.org> as well as <caffevergnano.us>.

Respondent, a resident of Russia, registered the disputed domain name on November 13, 2016. Complainant has provided evidence that at some point before the filing of this Complaint, the disputed domain name resolved to a website at "www.vergnano1882.com" which was a complete reproduction of Complainant's original website at "www.caffevergnano.com", set up in the Russian language and promoting Respondent as the "official representative in Ukraine" of Complainant's coffee products. Complainant sent warning letters to Respondent on January 25, 2017 as well as on February 21, 2017, however, there is no record of any further response from Respondent.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties' Contentions

A. Complainant

Complainant contends that its company was established under the name of "Casa del Caffè Vergnano" already in 1882 and that it is one of the major Italian and international coffee producers with a sales volume in the last five years of almost EUR 300,000,000.-. Complainant claims to have a long established reputation all over Europe and Asia, including in Russia and Ukraine.

Complainant submits that the disputed domain name is identical with Complainant's CAFFÈ VERGNANO 1882 trademark as it incorporates the latter in its entirety. Moreover, Complainant asserts that Respondent has never had rights or legitimate interests with respect to the disputed domain name since (1) Complainant never had any personal or professional relationship with Respondent and has never authorized Respondent to make use of Complainant's trademarks nor to register and/or use the disputed domain name whatsoever, (2) Respondent apparently does not have any trademark rights or any other rights corresponding to the disputed domain name and (3) Respondent presents himself as the "official representative" of Complainant's products in Ukraine which he is not.

Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the disputed domain name redirects to a website which is a complete reproduction of Complainant's original website at "www.caffevergnano.com", set up in the Russian language, (2) Respondent presents himself as the "official representative in Ukraine" of Complainant's coffee products, which he is not, (3) Complainant sent warning letters to Respondent on January 25, 2017 as well as on February 21, 2017, to which Respondent did not reply.

B. Respondent

Respondent did not reply to the 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 name is 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 name; and

(iii) That the disputed domain name has been registered and is 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(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel may decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent's failure to submit a Response.

As a general remark, the Panel did not explicitly need to decide upon Complainant's request that the language of this proceeding be English, since this request corresponds anyhow to the English language of the disputed domain name's registration agreement, as confirmed by the Registrar on May 5, 2017.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <vergnano1882.com> is confusingly similar to the CAFFÈ VERGNANO 1882 trademark in which Complainant has rights.

The disputed domain name includes the Italian family name "Vergnano" and the year 1882, which are both also reflected in Complainant's CAFFÈ VERGNANO 1882 trademark. It is well accepted among UDRP panels and has meanwhile become a consensus view that the confusing similarity test under the first element of the UDRP is primarily a standing requirement and typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7). Here, the disputed domain name includes two out of three of the word components reflected in Complainant's trademark which is why the Panel has no difficulty in finding that Complainant's trademark in fact is easily recognizable within the disputed domain name.

Therefore, Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant's undisputed contentions, that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent has not been authorized to use Complainant's CAFFÈ VERGNANO 1882 trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademarks rights associated with the name "Caffè Vergnano 1882" whatsoever. Finally, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent apparently uses or at least has used the disputed domain name at some point before the filing of this Complaint for a website at "www.vergnano1882.com", set up in the Russian language and promoting Respondent as the "official representative in Ukraine" of Complainant's coffee products, which he apparently is not. While UDRP panels generally recognize that resellers using a domain name containing the complainant's trademark to undertake sales related to the complainant's goods or services may be making a bona fide offering of goods or services and, thus, have a legitimate interest in such domain name, the site under the disputed domain name still must accurately and prominently disclose the registrant's relationship with the trademark holder (see WIPO Overview 3.0, section 2.8). Here, Respondent is claiming a position, namely to be the official representative of Complainant in Ukraine, which apparently is not the case, thus the site under the disputed domain name is not accurately disclosing the non-existing business relationship between the Parties to this case.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name. Having done so, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating such rights or legitimate interests (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.

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 name was registered and is being used by Respondent in bad faith.

The use of the disputed domain name, which is confusingly similar to Complainant's CAFFÈ VERGNANO 1882 trademark, to resolve to a website at "www.vergnano1882.com", which is a complete reproduction of Complainant's original website at "www.caffevergnano.com", set up in the Russian language and presenting Respondent as the "official representative in Ukraine" of Complainant's coffee products, which he is not, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website by creating a likelihood of confusion with Complainant's CAFFÈ VERGNANO 1882 trademark as to the source, sponsorship, affiliation or endorsement of Respondent's website. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

In connection with this finding, it also carries weight in the eyes of the Panel that Respondent apparently provided false WhoIs contact information, since the delivery of the written notice of the Complaint sent to Respondent via courier on May 10, 2017, failed due to an apparent invalid postal address. This fact at least throws a light on Respondent's behavior which supports the conclusion of registration and use of the disputed domain name in bad faith.

Therefore, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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 <vergnano1882.com> be transferred to Complainant.

Stephanie G. Hartung
Sole Panelist
Date: June 19, 2017

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