WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caffitaly System S.p.A. v. Contact Privacy Inc. Customer 1245381045 / Bdownum
Case No. D2019-2333
1. The Parties
Complainant is Caffitaly System S.p.A., Italy, represented by Ruffini Ponchiroli e Associati S.r.l, Italy.
Respondent is Contact Privacy Inc. Customer 1245381045, Canada / Bdownum, United States of America, (“United States”).
2. The Domain Name and Registrar
The disputed domain name <cafffitaly.com> (Domain Name) is registered with Google LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2019. On September 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 25, 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 Complainant on September 26, 2019, 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 October 1, 2019.
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 October 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on October 24, 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
Per Complaint, Complainant is an Italian company active in the field of coffee and coffee machines.
Complainant owns trademark registrations throughout the world for the word CAFFITALY, including:
- International trademark registration No. 1243780 for CAFFITALY (word), registered on December 22, 2014, with priority from December 18, 2014, designating inter alia United States, for goods in international classes 11, 21 and 30;
- International trademark registration No. 928273 for CAFFITALY SYSTEM (figurative), registered on May 3, 2006, with priority from February 3, 2006, designating, inter alia, United States for goods in international class 7, 11, 20 and 30; and
- European Union trademark registration No. 013586698 for CAFFITALY (word), registered on May 29, 2015, for goods in international classes 11, 21 and 30.
Moreover, Complainant maintains the domain name <caffitaly.com>, which it uses to form its email address.
The Domain Name <cafffitaly.com> was registered on September 2, 2019, and was used to create an email address for sending fraudulent emails impersonating an employee of Complainant. The Domain Name does not resolve to an active website.
5. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use of the CAFFITALY mark.
The Panel finds that the Domain Name <cafffitaly.com> is confusingly similar to the CAFFITALY trademark of Complainant.
The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the letter “f” does not avoid a finding of confusing similarity (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft, WIPO Case No. D2013-0904). Furthermore, such addition is an obvious or intentional misspelling of Complainant’s trademark CAFFITALY which further supports the finding of confusing similarity to such trademark (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison, on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name <cafffitaly.com> is confusingly similar to the CAFFITALY trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (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 [Respondent] 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 mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
Complainant demonstrated that Respondent used the Domain Name for the purpose of sending fraudulent emails to customers of Complainant impersonating a current employee of Complainant for the only purpose of scam. The use of the Domain Name for an illegal activity such as constructing an email composition containing the Domain Name for deceiving purposes cannot confer rights or legitimate interests on Respondent (L’Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(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 Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with 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.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the CAFFITALY mark had been used and registered before the Domain Name was registered by Respondent, and considering the nature of the Domain Name, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).
Furthermore, the Domain Name incorporates in whole Complainant’s mark plus the additional letter “f”. The Domain Name therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Name. This further indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry.
Lastly, it is apparent that Respondent was aware of Complainant and Complainant’s mark CAFFITALY when registering the Domain Name. As Complainant demonstrated, Respondent used the Domain Name, a few days after the day it was registered, to create an email address and send fraudulent emails to Complainant’s customers (Arla Foods Amba v. Michael Guthrie, M. Guthrie Building Solutions, WIPO Case No. D2016-2213).
As regards bad faith use, Complainant demonstrated that the Domain Name was used to create an email address similar to a real email address of an employee of Complainant and send emails to customers of Complainant, impersonating such employee and inviting the customers, inter alia, to make payments or provide information on the manner and/or time of payments. The first email was sent on September 4, 2019, namely two days after the Domain Name registration. The other two emails were sent on September 17 and 18, 2019, and requested the recipient to make an outstanding payment to a bank account in the United Kingdom, indicated in a document attached to the latter email reproducing Complainant’s letterhead, which per Complainant was not a bank account of Complainant. The purpose of these emails was to trick their recipients into believing that they were dealing with Complainant and, thus, making the requested payments. Use of a domain name for purposes other than to host a website may also constitute bad faith. Such purposes include sending deceptive emails, phishing or identity theft (WIPO Overview 3.0, section 3.4). This pattern can be used in support of bad faith registration and use (Yahoo! Inc. v. Aman Anand, Ravi Singh, Sunil Singh, Whois Privacy Corp., Domains By Proxy, LLC, WIPO Case No. D2016-0461; Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc. / GREYHAT SERVICES, WIPO Case No. D2016-0385 and WIPO Overview 3.0, sections 3.3 and 3.4). The concealment of the Domain Name holder’s identity through use of a privacy shield is also taken into account by the Panel.
As Complainant further demonstrated, Complainant’s IT technicians found suspicious access to the email account of an employee. Access to this account had been done from two IP addresses related to Virtual Private Network (VPN) services usually used, per Complainant, for hiding real IP address, located in the United States. Furthermore, as Complainant demonstrated, Complainant’s IT technicians noticed that on September 19, 2019, a few hours following the change of the account password of that employee, three “user login failures” were recorded.
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.
Complainant has established Policy, paragraph 4(a)(iii).
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 <cafffitaly.com> be transferred to the Complainant.
Date: November 7, 2019