WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Koninklijke Douwe Egberts B.V. v. Contact Privacy Inc. Customer 1245524842 / Danielle Hicks

Case No. D2019-3165

1. The Parties

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

The Respondent is Contact Privacy Inc. Customer 1245524842, Canada / Danielle Hicks, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <jdiecoffee.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 January 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 20, 2020.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 27, 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 Jacobs Douwe Egberts is an international coffee and tea company, headquartered in the Netherlands.

JDE is an abbreviation of Jacobs Douwe Egberts and is one of the Complainant’s main coffee brands.

The Complainant owns numerous JDE trademarks, such as the Benelux registration number 0970216, of December 16, 2014, and the International trademark registration number 1248744, of April 16, 2015, designating inter alia Australia, European Union and the United States. The Complainant has also filed applications for the term “JDE Coffee”, such as the Brazilian trademark application number 907660193, of May 7, 2014.

In addition, the Complainant also owns domain names reflecting its trademark JDE, including <jdecoffee.com>.

The Respondent registered the disputed domain name <jdiecoffee.com> on September 24, 2019.

The Panel accessed the disputed domain name on January 8, 2020, at which time the disputed domain name did not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain incorporates the JDE trademark entirely, including a misspelling and adds only the descriptive term “coffee”. According to section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), 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. Therefore, the addition of the letter “I” in the first part of the disputed domain name <jdiecoffee.com>, which is clearly an intentional misspelling of the trademark JDE, does not alter the finding of confusing similarity between the disputed domain name and the JDE trademark. In addition, the combination of the JDE trademark with the descriptive term “coffee” even enhances the confusion, since coffee is the key product for which the JDE trademark is used and very well known for. Therefore, there is sufficient risk that the average Internet user believes that there is a real and actual connection between the disputed domain name and the Complainant and/or its goods and services. Since the word “coffee” is purely descriptive, the dominant element of the disputed domain name is the element “jdie”, which is nearly identical to the JDE trademark and also recognizable as such. Moreover, the Complainant is also the trademark owner for the trademark JDE COFFEE. Therefore, the disputed domain name is at least confusingly similar to this specific trademark, since the disputed domain name only adds the letter “I” - which is clearly an intentional misspelling - to this specific trademark.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not as an individual, business or other organization commonly known by the disputed domain name. There is obviously no connection between the Respondent and the Complainant. The Complainant did not authorize the Respondent to use the JDE trademarks in any way whatsoever. The Respondent did not make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is clearly not making a legitimate noncommercial or fair use of the disputed domain name. The fact that the disputed domain name does not resolve to any active websites and does not appear to have a working IP address associated to it does not create rights or legitimate interests in the disputed domain name on behalf of the Respondent. Since the website behind the disputed domain name is inactive, the Respondent does not have any rights or legitimate interests in the disputed domain name.

- The disputed domain name was registered and is being used in bad faith. The Complainant refers to what has been brought forward in relation to the clear lack of rights and legitimate interests of the Respondent. Due to the fact that the JDE trademark is well known and the great similarities between the JDE trademark and the disputed domain name, the Respondent must have been aware of the JDE trademark when the Respondent registered the disputed domain name. Above that, it is hard to believe that one would register a domain name and choose the letters “j”',”d” and “e” without knowing the JDE trademark. That would be too much of a coincidence. Especially, when we take into account that coffee is placed just behind these letters. The only reasonable explanation of the addition of the letter “i” to the well known JDE trademark would be to create confusion amongst the public.

Furthermore, the disputed domain name was registered in 2019, approximately four years after the Complainant merged and registered many trademarks related to the merger. Additionally, the Complainant’s company was founded in 1753 and has registered many JDE trademarks since which has been established. The Respondent thus registered the disputed domain name with full awareness of the JDE trademark as well as the goodwill associated with it. It is highly plausible that the Respondent will create a website behind the disputed domain name in order to attract Internet users to the website, by creating a likelihood of confusion with the JDE trademark as to the source, sponsorship, affiliation or endorsement on the upcoming website behind the disputed domain name. Moreover, given the similarities between the disputed domain name and the JDE trademark, there is a great risk that the main purpose for registering the disputed domain name is that it will be used for fraudulent activities by the Respondent. The Respondent’s registration of the disputed domain name shows the Respondent’s intent to rely on a risk of confusion with the Complainant’s activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and website associated with it. Evidently, such use of the disputed domain name cannot be qualified as a bona fide offering of services (and/or goods).

In addition, the use of a privacy service to mask the information in the WhoIs databases is an indication of bad faith. It is also very clear that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the JDE trademark in a corresponding domain name. Finally, the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. Given the above and the background of this matter, it is clear that the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The 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

Although the Complainant has not proven current registrations for the term *JDE Coffee”, Annex 5 to the Complaint shows that the Complainant owns numerous trademark registrations for JDE, since 2015.

The disputed domain name differs from the Complainant’s trademark JDE by the addition of the letter “i”, of the descriptive word “coffee” and of the generic Top-Level Domain (“gTLD”) extension “.com”.

It is already well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

Also, previous UDRP decisions have repeatedly found that the mere addition of descriptive terms to a trademark in a domain name does not avoid a finding of confusing similarity (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050). In the present case, considering that the Complainant’s brand is used in connection with its coffeeproducts, the addition of the said word affirms the confusing similarity.

Finally, in this context, the Panel concludes that the misspelling of the Complainant’s trademark (“jdie” instead of “jde”) characterizes what is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors eventually made by Internet users seeking the complainant’s commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the 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 trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has not indicated any reason to justify why it has chosen the specific term “jdiecoffee” to compose the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Complainant has not licensed or authorized the use of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

When the disputed domain name was registered by the Respondent (in September 2019), the trademark JDE was already directly connected to the Complainant’s coffee products.

Therefore, the Panel concludes that it would not be feasible to consider that the Respondent, at the time of the registration of the disputed domain name, could not have been aware of the Complainant’s trademark, and that the adoption of the peculiar expression “jdiecoffee” could be a mere coincidence. Especially considering the adoption of the descriptive word “coffee”, which informs the exact product commercialized by the Complainant under the JDE trademark, as well as considering that the Complainant owns the previous domain name <jdecoffee.com> and had already filed an application in Brazil for the term “JDE Coffee”.

Currently no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances that the Respondent is

(a) not presently using the disputed domain name;

(b) not indicating any intention to use it; and

(c) not at least providing justifications for the registration of a domain name containing a variation of a third-party trademark together with the description of its respective product, certainly cannot be used in benefit of the Respondent in the present case.

Such circumstances, associated with

(d) the use of a privacy service; and

(e) the lack of any plausible interpretation for the adoption of the term “jdiecoffee” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <jdiecoffee.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: February 10, 2020