ADMINISTRATIVE PANEL DECISION

Caffitaly System S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Organization: Winsomgroup, Robert Hills

Case No. D2018-2804

1. The Parties

Complainant is Caffitaly System S.p.A. of Gaggio Montano (Bologna), of Italy, represented by Ruffini Ponchiroli e Associati S.r.l., Italy.

Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Organization: Winsomgroup, Robert Hills, New York, New York, United States of America (“USA”).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2018. On December 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 2018, 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 Complainant on December 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 13, 2018

The Center verified that the Complaint together with the amendment to 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 December 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2019.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on January 21, 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

Complainant, Caffitaly System S.p.A., is an Italian Joint Stock Company operating in the field of coffee and coffee machines.

Complainant has provided evidence that it owns several trademarks consisting of or comprising the term CAFFITALY, registered in many countries, including:

- International trademark CAFFITALY, No. 1243780, registered on December 22, 2014, covering goods in classes 11, 21 and 30, and designating, inter alia, the USA.

- European Union trademark CAFFITALY, No. 013586698, registered on May 29, 2015, and covering goods in classes 11, 21 and 30.

- Italian trademark CAFFITALY, No. 1662800, registered on January 5, 2016, and covering goods in classes 11, 21 and 30.

- International semi-figurative trademark CAFFITALY SYSTEM, No. 928273, registered on May 3, 2006, covering goods in classes 07, 11, 20 and 30, and designating, inter alia, the USA.

Complainant has provided evidence that it is the owner of the domain name <caffitaly.com> and that it uses it as a commercial website, as well as for its employee email accounts. All of its company email addresses are structured as such: <name.surname@caffitaly.com>.

The disputed domain name was registered on September 18, 2018. On the very same day, the disputed domain name was used to create several email accounts, which were then used to contact one of Complainant’s clients. The email addresses of these fraudulent emails accounts were structured as such: <name.surname@caffitialy.com>. The names and surnames of these fraudulent email accounts are names and surnames of Complainant’s actual employees.

On December 5, 2018, the disputed domain name was resolving to a parking page with commercial links. The disputed domain name <caffitialy.com> is now inactive.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established.

Addressing the requirements of paragraph 4(a)(i) of the Policy, Complainant claims that the disputed domain name is confusingly similar to its trademarks CAFFITALY and CAFFITALY SYSTEM, because the term “caffitaly” is almost identically reproduced in the disputed domain name <caffitialy.com>. Complainant asserts that the misspelling of its trademark CAFFITALY by the disputed domain name is deliberate. The slight difference of the letter “i” after the “t” in the disputed domain name is not enough to distinguish it from Complainant’s marks and domain name. As a result, Complainant argues that the disputed domain name is confusingly similar to its trademarks and the disputed domain name.

With respect to paragraph 4(a)(ii) of the Policy, Complainant states that Respondent does not have any rights or legitimate interests in the disputed domain name. In this regard, Complainant claims that Respondent was never authorized to use or to register the disputed domain name. Complainant also affirms that Respondent has never been commonly known under the disputed domain name, and, in any case, that Complainant’s trademarks registrations substantially predate September 18, 2018, date of Respondent’s registration of the disputed domain name.

Complainant argues further that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name as it resolves to a parking page with Pay-Per-Click (PPC) links. It can thus be reasonably assumed that the disputed domain name is used for commercial purposes. UDRP panels have regularly held that using a domain name for illegal activity - such as fraud - can never give rights or legitimate interests to a respondent. Complainant provided evidence that Respondent used the disputed domain name to create fraudulent email accounts, which were then used to commit fraud by sending phishing e-mails to one of Complainant’s clients.

With respect to paragraph 4(a)(iii) of the Policy, Complainant claims that the disputed domain name was registered and used in bad faith. Complainant states that the disputed domain name was registered on September 19, 2018, and that a fraud attempt using email addresses linked to the disputed domain name occurred on the same day. Complainant further states that using a domain name for illegitimate activities is evidence of bad faith. Complainant also argues, while using a privacy service is not in itself an indication of bad faith, the manner in which such service is used can constitute a factor indicating bad faith, and that, since Respondent’s modus operandi was fraudulent, it is clear that both the registration and use of the disputed domain name were in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules provides that “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraphs 10(b) and 10(d) of the Rules provide that: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

The Panel acknowledges that Respondent’s failure to respond to Complaint does not automatically result in a decision in favor of Complainant. Complainant must establish each of the three elements required by paragraph 4(a) of the Policy, which requires that, to obtain the transfer of a disputed domain name, Complainant must still prove its assertions in regard of the following three elements:

(i) the disputed domain name is identical or confusingly similar to the trademarks in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and

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

In line with previous UDRP decisions, it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name to shift the burden of production of evidence to Respondent (see, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

Having considered the Complaint, the Policy and applicable principles of law, the Panel’s findings on each of the above-cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant to establish relevant trademark rights. In the present case, Complainant has provided evidence that it owns registered trademark rights in CAFFITALY and CAFFITALY SYSTEM in connection with goods, including coffee machines and food products. The Panel is therefore satisfied that Complainant has established relevant trademark rights.

The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain name is identical or confusingly similar to Complainant’s trademarks.

Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) states that “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.” Such a misspelling can be constituted by “the addition or interspersion of other terms or numbers”, according to item (vi) of the above-mentioned paragraph.

The Panel has no difficulty finding that the disputed domain name <caffitialy.com> is confusingly similar to Complainant’s trademark CAFFITALY and is also confusingly similar to Complainant’s domain name <caffitaly.com>. The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is met.

The disputed domain name <caffitialy.com> only differs from Complainant’s trademarks CAFFITALY and Complainant’s domain name <caffitaly.com> by the addition of the letter “i” after the “t” of the disputed domain name.

In the view of the Panel, this slight difference indicates clearly that this is a case of “typosquatting”. Both the Domain Name and Complainant’s trademark CAFFITALY are thus confusingly similar as their aural and visual differences are only minor. Numerous UDRP panels have found similarities in the case of a deliberate misspelling of a trademark (“typo-squatting”), which merely added, deleted, substituted, or reversed the order of letters in a mark (see, inter alia, Arcelormittal (SA) v. Vera Widjaja, WIPO Case No. D2018-1087; Accenture Global Services Limited v. Name Redacted, WIPO Case No. D2018-0777; Andrey Ternovskiy dba Chatroulette v. AM F, WIPO Case No. D2017-1008; Express Scripts, Inc. v. Kal Kuchora, WIPO Case No. D2005-1164).

In light of section 1.9 of the WIPO Overview 3.0, the Panel finds that the similarity with Complainant’s trademarks CAFFITALY and the disputed domain name is sufficient to establish that the disputed domain name is confusingly similar to Complainant’s marks, within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires Complainant to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy sets out the following non-exhaustive list of circumstances that a respondent may rely on to demonstrate rights or legitimate interests in a domain name, including but not limited to the following:

“(i) before any notice to [respondent] of the dispute, [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) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent have] acquired no trade mark or service mark rights; or

(iii) [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 trade mark or service mark at issue.”

According to Complainant, Respondent used the disputed domain name to host a parked page comprising PPC links. Applying paragraph 4(c), UDRP panels have found that using a domain name confusingly similar to a complainant’s trademark to host a parked page comprising PPC links is not a bona fide offering of goods. Using the confusingly similar domain name misleads Internet users as to the origin of the website and therefore Respondent’s use of the disputed domain name is not a bona fide offering of goods.

Regarding paragraph 4(c)(ii), there is no evidence on record suggesting that Respondent has been commonly known by the disputed domain name.

Finally, UDRP panels have held under section 2.13.1 of WIPO Overview 3.0 that using a domain name for illegal activity (e.g.,phishing, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. Complainant has shown that the disputed domain name was used for illegal and fraudulent activities by Respondent, to the detriment of Complainant which excludes, a finding of Respondent having any rights or legitimate interests in the disputed domain name.

Complainant has shown to the satisfaction of the Panel that Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that Respondent has registered and used the disputed domain name in bad faith.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:

“(i) circumstances indicating that [respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) [respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or

(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark 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.”

Complainant provided evidence that the disputed domain name <caffitialy.com> was used to create fraudulent email addresses, which were then used the very same day the disputed domain name was registered to commit fraud, in an attempt to have one of Complainant’s clients transfer money into a foreign bank account. In accordance with section 3.1.4 of WIPO Overview 3.0, the use of a domain name for fraudulent activities is considered evidence of bad faith.

The Panel accepts the evidence provided by Complainant in this regard and finds that the disputed domain name <caffitialy.com> 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, <caffitialy.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: January 29, 2019