WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Douwe Egberts B.V. v. James H. Park
Case No. D2018-2795
1. The Parties
The Complainant is Koninklijke Douwe Egberts B.V. of Amsterdam, Netherlands, represented by Ploum, Netherlands.
The Respondent is James H. Park of Gimhae-Shi, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <jdecofee.com> (“Disputed Domain Name”) is registered with DropCatch.com 873 LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2018. On December 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 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 December 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on January 8, 2019. 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 part of Jacobs Douwe Egberts, which was formed in 2015. Jacobs Douwe Egberts is an international coffee and tea company, headquartered in the Netherlands that processes and trades coffee, tea, and other foods since the year 1753.
The brand JDE is an abbreviation of the name Jacobs Douwe Egberts. JDE traces its beginnings to 1895 in Germany. That was when 26-year-old Johan Jacobs opened a specialty coffee shop in Bremen.
The Complainant’s trademarks is famous in many countries worldwide and the sign JDE is for the Complainant’s customers synonymous with quality products. JDE coffee is now sold throughout Europe and the Middle East and in numerous countries including Brazil, Germany, Austria, Latvia, Lithuania, Poland, Romania, and Ukraine.
The Complainant is the owner of numerous trademark registrations throughout the world, including several European countries and Brazil, consisting of or including the word element JDE, including, among others:
- Benelux trademark JDE, registration No. 0970216, registered in 2015,
- International trademark registration JDE, registration No. 1248744, registered in 2015 designating inter alia Australia, European Union and the United States of America.
Moreover, the Complainant owns and operates websites at numerous domain names incorporating the JDE and the JACOBS DOUWE EGBERTS trademark, for instance <jdecoffee.com> and <jacobsdouweegberts.com>.
The Disputed Domain Name <jdecofee.com> was registered on June 4, 2017. The website to which the Disputed Domain Name resolves is a parking page which has links to other websites.
According to the evidence submitted by the Complainant, the Disputed Domain Name is for sale according to the legend available in the website: ”KOOP DIT DOMEIN De Domeinnaam jdecofee.com is to koop!” which means, “Buy this domain. Thedomain name jdecofee.com is for sale!”
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant alleges that the Disputed Domain Name is confusingly similar to the Complainant´s trademark, as it incorporates the JDE trademark in its entirety with the addition of the descriptive term “cofee”, which is obviously an intentional misspelling of the word coffee.
Thus, the dominant element of the Disputed Domain Name is the Complaint’s JDE trademark. Moreover, the addition of the descriptive term “cofee” enhances the confusion because of the fact that coffee is the key product for which the Complainant’s trademark is used.
In view of the foregoing, there is a high risk that the average Internet user believes that there is a real connection between the Disputed Domain Name and the Complainant’s goods and services.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Furthermore, the Respondent is not using the Disputed Domain Name with a bona fide offering of goods or services and is not known by the Disputed Domain Name.
Moreover, the Disputed Domain Name resolves to a parking page featuring pay-per-click links.
The Complainant has not authorized in any way the Respondent to use the JDE trademark. Moreover, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
Registration and use in bad faith
The Complainant alleges that the Respondent has registered and is using the Disputed Domain Name in bad faith.
The Complainant states that it is impossible that the Respondent accidentally made up the words “JDEcofee” himself and registered the Disputed Domain Name without any knowledge of the Complainant’s company and its trademark. Thus, it can be assumed that the Respondent registered the Disputed Domain Name in bad faith.
The Complainant alleges that 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.
Furthermore, the Complainant’s submitted that the Respondent has registered the Disputed Domain Name for the purpose of selling it. This can be demonstrated not only in the website of the Disputed Domain Name, but also by the fact that on November 3, 2018 the Respondent wrote an email to the Complainant stating:
“Thank you for your email. This domain is 24000SD. If you agree within 5 days, I will send you about the transfer process. Thank you. Owner”.
Therefore, the Complainant states that the Respondent has registered the Disputed Domain Name for the purpose of disrupting the business of the Complainant. By registering the Disputed Domain Name, the Respondent is preventing the Complainant from using the Disputed Domain Name and dislocating and disrupting the Complainant’s activities and business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 Panel finds that the Complainant has established its trademarks rights in JDE as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
Based on the evidence submitted, the Panel considers that the Disputed Domain Name is confusingly similar to the Complainant’s trademark JDE. The Complainant’s trademark is clearly recognizable within the Disputed Domain Name. The Panel has no difficulty in finding that the Disputed Domain Name is confusingly similar to the trademark JDE, as the addition of the term “cofee” does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Moreover, the misspelling is also hardly noticeable and results in a very minor modification of the Complainant’s trademark and domain name <jdecoffee.com>.
In addition, it is the view of the Panel that this is a clear example of typo-squatting. As section 1.9 of the WIPO Overview 3.0 states:
“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
(…) Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers”.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
I. Before any notice to you of the dispute, your use of, 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. You (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
III. You are 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name.
The Respondent, because of its default, has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, he had the opportunity to demonstrate his rights or legitimate interests, but he did not reply to the Complainant’s contention.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The fact that the Disputed Domain Name is identical to the Complainant’s trademark, with the mere addition of the term “cofee”, which is a common misspell of the word “coffee” (which is connected to the Complainant’s products), establishes that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name.
The Complainant has also produced evidence that the website linked to the Disputed Domain Name is a parking page featuring pay-per-clicks links. On the homepage of the website Internet users are invited to click on a button with the legend in dutch: “KOOP DIT DOMEIN” which means “buy this domain”. Moreover, the Complainant produced evidence that the Respondent wrote an email to the Complainant’s representative on November 2018, stating the following: “Thank you for this email. This Domain is 2400USD. If you agree within 5 days, I will send you about the transfer process. Thank you. Owner”.
Accordingly, the Panel finds that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, who is the owner of the trademark JDE, or to a competitor of the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name, according the paragraph 4 (b)(i) of the Policy.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
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 <jdecofee.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: January 10, 2019