WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jacobs Douwe Egberts DE GmbH v. MyWhoisProtect Support Service,
Case No. D2018-0740
1. The Parties
The Complainant is Jacobs Douwe Egberts DE GmbH of Bremen, Germany, represented by Ploum, Netherlands.
The Respondent is MyWhoisProtect Support Service of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <jacobs-ua.coffee> ("Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 3, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 6, 2018, 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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2018.
The Center appointed Olga Zalomiy as the sole panelist in this matter on May 16, 2018. 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 is a part of the Jacobs Douwe Egberts group of companies, which is an international coffee and tea company headquartered in the Netherlands. The Complainant is the owner of a large number of trademark registrations consisting of or including the world element JACOBS. Among others, the Complainant owns the following trademark registrations:
- Benelux trademark JACOBS, registration number 104848 (1959)
- German trademark JACOBS, registration number 1000927 (1980)
- German trademark JACOBS, registration number 39504413 (1996)
- International trademark JACOBS, registration number 548961A, designating Ukraine and other countries (1990).
The Complainant owns and operates websites at numerous domain names, such as <jacobs.de> and <jacobsdouweegberts.com>.
The Respondent registered the Domain Name on May 19, 2016. The Respondent is using the Domain Name for a website that offers for sale Complainant's coffee JACOBS in Ukraine.
5. Parties' Contentions
The Complainant claims that the brand JACOBS is one of the billion dollar coffee brands in the Jacobs Douwe Egberts brand portfolio. The Complainant asserts that the JACOBS brand traces its beginnings to 1895 in Germany. The Complainant maintains that JACOBS is a famous brand in many countries. The Complainant also claims that its been the owner of a large number of trademark registrations consisting of or including the word element "jacobs".
The Complainant asserts that the Domain Name comprises the JACOBS trademark, the geographical term "UA", which stands for Ukraine, and the generic Top-Level Domain ("gTLD") ".coffee", which describes the Complainant's products. The Complainant contends that the Domain Name is confusingly similar to the JABOBS trademark, because the trademark constitutes the dominant element of the Domain Name. The Complainant argues that the combination of the JACOBS trademark with the gTLD ".coffee" enhances the confusion because coffee is the key product for which the JACOBS trademark is used.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Respondent is not using the Domain Name in connection with bona fide offering of goods or services. The Complainant contends that the Respondent is using the Domain Name as an unauthorized reseller of the Complainant's goods. However, the Complainant argues that the Respondent failed so-called "Oki-Data" test by failing to display a disclaimer disclosing the lack of any relationship between the Respondent and the Complainant and by cornering markets in domain names. Further, the Complainant alleges that it is not clear whether the Respondent in fact offers for sale the genuine Complainant's coffee.
The Complainant argues that the Respondent's use of the Domain Name cannot constitute fair use because the Domain Name, which consists of the JACOBS trademark plus the geographical term/abbreviation 'UA', effectively impersonates or suggests sponsorship or endorsement by the Complainant. The Complainant alleges that the Respondent is not commonly known by the Domain Name and that the Complainant neither licensed or authorized the Respondent to use its trademark in the Domain Name.
The Complainant contends that the Respondent has registered and is using the Domain Name in bad faith. The Complainant alleges that the Respondent registered the Domain Name in bad faith because at the time of the Domain Name registration the Respondent was aware of the Complainant's trademark. The Complainant claims that the Respondent is offering for sale purported Complainant's JACOBS coffee on the website associated with the Domain Name, thus making such knowledge apparent. The Complainant argues that the Respondent's registration of the Domain Name including the Complainant's well-known mark demonstrates bad faith of the Respondent. The Complainant contends that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location. The Complainant alleges that the Respondent is disrupting the Complainant's business.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(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
To prove this element, the Complainant is required to establish that the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
Pursuant to section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case". The Complainant has established its rights in the JACOBS trademarks by submitting copies of the registered JACOBS trademarks.
It is well established that "[w]here a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."1
Here, the Domain Name consists of the Complainant's JACOBS trademark, a hyphen, a geographic country code "ua" and generic gTLD suffix ".coffee". A side-by-side comparison of the Domain Name and the Complainant's trademark shows that the Domain Name incorporates the Complainant's trademark in its entirety and the JACOBS trademark is easily recognizable in the Domain Name. As a result, the addition of the letters "ua", which stands for "Ukraine" and the hyphen, do not prevent finding of confusing similarity. The addition of the gTLD ".coffee" is disregarded under the confusing similarity test. Moreover, the addition of the geographic country code "ua" to the Complainant's trademark in combination with the gTLD ".coffee", the main product for which the Complainant's mark is registered, does not dispel the confusing similarity for purposes of the Policy. Therefore, the Domain Name is identical or confusingly similar to the JACOBS trademark.
Thus, the Complainant proved the first element of the UDRP.
B. Rights or Legitimate Interests
To prove the second UDRP element, the Complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the Respondent.
Pursuant to paragraph 4(c) of the UDRP, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to 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, even if he has acquired no trademark or service mark rights; 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 or service mark at issue.
None of such circumstances is present here. The Complainant alleges that it has never been given permission to the Respondent to use the Complainant's JACOBS trademark in domain names, or for any other purpose. Therefore, the Respondent is using the Complainant's trademark without an authorization. While previous UDRP panels have recognized that resellers using domain names containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain names in some situations2, this is not the case here.
The Domain Name directs to a website offering for sale purported JACOBS coffee. Generally, unauthorized resellers might have legitimate interests in a domain name containing complainant's trademark if their activities comply with the following cumulative requirements:
"(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and
(iv) the respondent must not try to "corner the market" in domain names that reflect the trademark."3
Here, the Domain Name comprising the Complainant's trademark and a geographic indication ".ua" creates an impression of affiliation with the Complainant.4 Further, the Respondent's website does not disclose lack of any relationship between the Respondent and the Complainant. The "Home" page of the Respondent's website displays heading "Кофе JACOBS Украина", which means "Coffee JACOBS Ukraine" in Russian. The heading directs users to a website page, which provides information about history of the JACOBS brand and about its popularity today. The page also contains a statement in Russian, which translates to English as follows:
"Offers for sale of the original products of the JACOBS factory in Ukraine are beneficial for wholesale and retail customers. Ukraine is by no means the last among suppliers of quality products, and we are pleased to present assortment of original coffee in the online store JACOBS MONARCH."
Finally, the "www.jacobs-us.coffee" website positions itself as the "official online store". Taken together, all of the abovementioned factors create an impression that the Respondent's website belongs to an authorized reseller of the Complainant's products in Ukraine of the Complainant's goods purportedly manufactured in Ukraine. Use of the Domain Name "will not be considered "fair if it falsely suggests affiliation with the trademark owner."5
The Respondent is also not commonly known by a name corresponding to the Domain Name. The Respondent's use of a WhoIs privacy service may indicate that the Respondent specifically did not want to reveal the name by which it is commonly known. See, L'Oréal SA v. PrivacyProtect.org/ WangShanShan, WIPO Case No. D2014-0295 ("there is no evidence that the Respondent, who is moreover hiding behind a privacy shield, has been commonly known by the Domain Name.")
The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent. Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
Because the Respondent has failed to rebut the Complainant's case, the Panel holds that the second element of the UDRP has been proven.
C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith.
The Panel finds that the Respondent registered the Domain Name in bad faith as at the time of the Domain Name registration he was aware of the Complainant and its JACOBS trademark and registered the Domain Name without consent from the Complainant, to confuse and mislead visitors to his website. Previous UDRP panels found that "the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith." Here, the Respondent registered the Domain Name comprising of the Complainant's widely-known trademark JACOBS and the geographic indication ".ua" together with the gTLD "coffee", which describes the Complainant's goods. Such registration shows Respondent's knowledge of the Complainant's mark and creates a presumption of bad faith.
The bad faith also can be found where a respondent, by registering and using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See UDRP, paragraph 4(b)(iv). The evidence on file shows that the Domain Name directs to the website, which offers for sale purported JACOBS coffee, provides information about the history of the Complainant's brand and claims to be an "official online store" of the "JACOBS factory" in Ukraine. It is likely that Internet users may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Panel also finds that the Respondent's use of a privacy service to register the Domain Name supports finding of bad faith registration and use. While use of the privacy service by itself is not illegitimate6, it is an indication of bad faith where "the respondent is operating a commercial and trademark-abusive website"7. Here, the Respondent registered the Domain Name, which directs to a purported "official online store" of the "JACOBS factory" using a privacy service to disrupt the Complainant's business and to misleadingly divert the Complainant's customers.
All these factors cumulatively produce an overwhelming inference of bad faith registration and use. The Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the UDRP.
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, <jacobs-ua.coffee> be transferred to the Complainant.
Date: May 30, 2018