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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke Douwe Egberts B.V. v. Contact Privacy Inc. Customer 1245817071 / Max Santos

Case No. D2019-3163

1. The Parties

The Complainant is Koninklijke Douwe Egberts B.V., Netherlands, represented by Ploum, Netherlands.

The Respondent is Contact Privacy Inc. Customer 1245817071, Canada / Max Santos, United States of America.

2. The Domain Name and Registrar

The disputed domain name <jdecoffiee.com> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2019. On December 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2019, 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 the Complainant on December 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 December 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 December 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2020.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on January 21, 2020. 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 a number of trademark registrations for the trademarks JDE in many countries around the world such as Brazilian Trade Mark JDE COFFEE registered May 7, 2014.

The domain name <jdecoffiee.com> was registered on November 5, 2019.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark in its entirety together with the term “coffiee”, which is the descriptive term “coffee” with an “i” that does not alter the reading of the word “coffee”. The dominant part of the disputed domain name is the Complainant’s trademark. The use of the term “coffiee” reinforces the impression that a link exists between the Complainant and the disputed domain name given that the Complainant’s key product is coffee. The Complainant owns the trademark JDE COFFEE and the disputed domain name only adds the letter “i” to “coffee”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has made an illegal act of impersonating an employee of the Complainant. Also, the disputed domain name does not resolve to any active website. The Respondent is not commonly known by the disputed domain name.

The Respondent is not affiliated with the Complainant nor has it obtained authorization from the Complainant to use its trademarks.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant’s trademark given that it impersonated an employee of the Complainant. The Respondent is attempting to attract Internet users by creating confusion in order to obtain a commercial gain. The Respondent is engaged in a phishing activity. Additionally, the Respondent did not answer the cease-and-desist letter sent by the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademarks JDE in many jurisdictions. The Panel is satisfied that the Complainant has established its ownership of the trademarks JDE. The disputed domain name comprises the Complainant’s trademark JDE combined with the word “coffiee”, which is simply a misspelling of the generic term “coffee”. Adding the word “coffiee” does not prevent a finding of confusing similarity with the trademark of the Complainant. See section 1.8 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” The generic Top-Level Domain (“gTLD”) “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademarks as part of the disputed domain name.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In particular, the Panel notes that the disputed domain name resolves to an inactive website and more importantly that the Respondent has made a phishing attempt. The Panel does not find this to be a bona fide offering of goods and services within the meaning of the Policy.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The element of bad faith is evidenced by the fact that the Respondent tried to obtain money from the Complainant by pretending that it is an employee. The Respondent was fully aware of the Complainant and its trademarks and has registered and used the disputed domain name comprising the Complainant’s mark with the aim of attracting commercial gain through phishing. In the case of the disputed domain name the word “coffiee” reinforces the confusion with the Complainant’s trademarks given that it relates to the industry of the Complainant. Furthermore, the word “coffiee” reinforces the likelihood of confusion with the Complainant’s trademarks given that it relates to the industry of the Complainant.

Furthermore, the Respondent did not reply to the cease-and-desist letter of the Complainant and such conduct is considered as demonstrating bad faith.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <jdecoffiee.com> be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: January 21, 2020

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