WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Douwe Egberts B.V. v. WhoisGuard Protected, WhoisGuard, Inc. / argy hery
Case No. D2019-0916
1. The Parties
The Complainant is Koninklijke Douwe Egberts B.V. of Amsterdam, Netherlands, represented by Ploum, Netherlands.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / argy hery of Arizona, South Africa.
2. The Domain Name and Registrar
The disputed domain name <jdecoffee-nl.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2019 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 April 24, 2019.
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 April 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.
The Center appointed Dawn Osborne as the sole panelist in this matter on May 22, 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 the owner of the trade mark JDE registered, inter alia, in Benelux for coffee related goods and services.
The Domain Name registered in 2019 has been used for pay per click links and to send fraudulent e-mails falsely in the name of one of the officers of the Complainant.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is part of Jacobs Douwe Egberts. Jacobs Douwe Egberts was formed in 2015 merging D.E. Master Blenders 1753 and the coffee division of Mondelez International. Jacobs Douwe Egberts is an international coffee and tea company, headquartered in The Netherlands that processes and trades in coffee, tea, and other foods since 1753.
The Complainant is the owner of the trade mark JDE registered, inter alia, in Benelux on April 22, 2015, registration number 970216, for coffee related goods and services.
The Domain Name is confusingly similar to the Complainant’s JDE mark containing it in its entirety and adding only the descriptive term “coffee”, the letters “.nl” indicating the Netherlands where the Complainant is based, a hyphen and the generic Top-Level domain (gTLD) “.com”.
The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and has not been authorised by the Complainant. The Domain Name has been used in a phishing e-mail scam in which the Respondent falsely pretended to be the Chief Financial Officer (CFO) of the Complainant and the Domain Name has also been used for pay per click links. These uses can never be bona fide offering of goods or services or legitimate non commercial fair use.
The Domain Name registration and use is in bad faith. Phishing per se is evidence of bad faith. The Respondent is causing confusion on the Internet for fraudulent purposes. The Domain Name has also been used for pay per click links diverting consumers on the Internet for commercial gain. The Respondent also used a privacy service and did not reply to a cease and desist from the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant’s JDE mark (registered, inter alia, in Benelux since 2015 for coffee related goods and services), the generic word “coffee”, the abbreviation “nl” indicating the Netherlands, a hyphen and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds generic terms or abbreviations indicating a geographical area to a Complainant’s mark. The addition of punctuation marks such as hyphens or a gTLD is also not sufficient to prevent a finding of confusing similarity pursuant to Policy 4(a)(i). Accordingly the Panel agrees that the addition of the generic term “coffee”, the abbreviation “nl” indicating the Netherlands, a hyphen and the gTLD “.com” to the Complainant’s mark will not prevent the Domain Name from being confusingly similar to the Complainant’s trade mark pursuant to the Policy.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint or a cease and desist letter from the Complainant and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The Domain Name has been used in a fraudulent e-mail scheme. Further, the Domain Name has also been used for pay per click links to sites offering third party goods and services. These uses are not a bona fide offering of goods and services or a non commercial legitimate or fair use.
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
The use made of the Domain Name in relation to an e-mail scam is deceptive and fraudulent, especially as the name of one of the real Complainant’s employees has been falsely used. Phishing and impersonating a complainant by use of a complainant’s mark in a fraudulent e-mail scam is disruptive to the Complainant’s business and evinces bad faith registration and use pursuant to paragraph4(b)(iii)of the Policy.
The use by the Respondent of the name of one of the Complainant’s officers shows that the Respondent was aware of the Complainant and its business and rights.
The Domain Name has also been used for pay per click links to point to third party commercial web sites that have no connection with the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of a web site or goods and services offered on it under paragraph 4(b)(iv) of the Policy.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under sections 4(b)(iv) and 4 (b)(iii).
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, <jdecoffee-nl.com>, be transferred to the Complainant.
Date: May 22, 2019