WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Koninklijke Douwe Egberts B.V. v. Domain Admin, Whoisprotection.cc / Company fd, RenGuangBin RenGuangBin
Case No. D2020-0635
1. The Parties
The Complainant is Koninklijke Douwe Egberts B.V., Netherlands, represented by Ploum., Netherlands.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia / Company fd, RenGuangBin RenGuangBin, China.
2. The Domain Name and Registrar
The disputed domain name <jdqcoffee.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2020. On March 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2020, 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 March 25, 2020 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 amendment to the Complaint on March 25, 2020.
On March 25, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on March 25, 2020. The Respondent did not comment on the language of the proceeding.
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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on March 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2020.
The Center appointed Douglas Clark as the sole panelist in this matter on May 5, 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, Koninklijke Douwe Egberts B.V is part of Jacobs Douwe Egberts. Jacobs Douwe Egberts was formed in 2015 by merging D.E Master Blenders, which 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’s coffee and tea portfolio is available in over 100 countries around the world.
Jacobs Douwe Egberts is abbreviated to JDE. The JDE trademark is used as an umbrella brand in relation to the Complainant’s coffee and tea portfolio. The Complainant is the owner of various trademarks consisting of or including the element “jde” worldwide, including the Benelux trademark No. 0970216 registered on April 22, 2015 in classes 5, 7, 11, 16, 21, 29, 30, 32, 35 and 43; and International trademark No. 1248744 registered on April 16, 2015 which, inter alia, designates China in classes 7, 11, 21, 29, 30, 32 and 43. The Complainant has also filed a trademark application for JDE COFFEE in Brazil, Brazilian trademark No. 907660193 in class 5 (which does not cover coffee).
The Complainant owns and operates websites at numerous domain names incorporating the JDE and the JACOBS DOUWE EGBERTS brand, e.g. <jdecoffee.com> and <jacobsdouweegberts.com>.
The Respondent is the registrant of the disputed domain name <jdqcoffee.com>.
The disputed domain name was registered on November 28, 2019 and does not at the date of this decision resolve to an active webpage. According to the evidence provided by the Complainant, a screenshot of the website under the disputed domain name was attached to an email of January 14, 2020 from the Complainant to the Registrar. It appears that the website under the disputed domain name previously resolved to a page that has links to various apps for mobile phones. The Complainant does not rely on this screenshot in the body of its Complaint.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name <jdqcoffee.com> is confusingly similar to the JDE trademark because it incorporates almost the entire JDE trademark, including a very obvious misspelling and the descriptive term “coffee”.
The Complainant asserts that the replacement of the letter “e” to the letter “q” in the first part of the domain name “jdq”, 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.
The Complainant contends that 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. 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.
The Complainant claims that since the word “coffee” is purely descriptive, the dominant element of the disputed domain name is the element “jdq”, which is confusingly similar to the Complainant’s JDE mark.
The Complainant further contends that the disputed domain name is confusingly similar to its Brazilian trademark application for JDE COFFEE on the basis the disputed domain name only replaces the letter “e” with a “q”.
No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant claims that the Respondent is not as an individual, business or other organization commonly known by the disputed domain name. There is no connection between the Respondent and the Complainant, and the Complainant did not authorize the Respondent to use the JDE trademarks in any way.
The Complainant asserts that the Respondent did not make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. As of March 10, 2020, the Respondent is clearly not making a legitimate noncommercial or fair use of the disputed domain name, since the disputed domain name does not resolve to an active webpage.
Registered and used in bad faith
The Complainant contends that the Respondent has registered the disputed domain name and is using it in bad faith.
Based on the fact that the JDE Trademark is well-known in the whole world, there are great similarities between the JDE Trademark and the disputed domain name and the disputed domain name was registered approximately four years after the Complainant merged and registered many trademarks related to the merger, the Complainant asserts that the Respondent must have been aware of the JDE Trademark when the Respondent registered the disputed domain name.
The Complainant claims that 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.
The Complainant contends that the use of a privacy service to mask the information in the WhoIs databases is an indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The Language of the Registration Agreement is Chinese.
The Complainant requested the language of the proceeding be in English on the grounds that (i) the Complainant assumed that the Registration Agreement is in English because upon searching for the Registration Agreement, the Complainant only found an English Registration Agreement and the Respondent was hiding his personal information; (ii) the disputed domain name entirely incorporates (albeit with a deliberate misspelling) a well-known brand which consists solely of Latin characters: JDE COFFEE. This shows that the Respondent is familiar with the brand that is not of Chinese origin, which proves a level of comfort with the English language. There is sufficient evidence showing that the Respondent can understand the language of the Complaint; (iii) to proceed with these proceedings in Chinese would cause unwarranted delay. The Complainant is based in the Netherlands and does not have any knowledge of Chinese. Proceeding in Chinese would mean that the Complainant would have to retain the services of a translator, which would cause undue delay. To proceed with these proceedings in Chinese would cause potential unfairness. The costs of translating the Complaint would be higher than the overall costs of this administrative proceeding, placing a high, unfair, financial burden on the Complainant. Therefore, given these circumstances, requiring the Complainant to translate the Complaint would cause unfairness as a result of the Respondent’s actions.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Panel would have accepted a Response in Chinese, but none was filed. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel finds the disputed domain name <jdqcoffee.com> is only a slight misspelling (i.e. the replacement of the letter “e” to the letter “q”) of the Complainant’s JDE mark, followed by the term “coffee”. The generic Top-Level Domain “.com” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.11.1.
It is accepted by UDRP panels that the addition to the complainant’s trademarks of words or terms that describe or refer to part of the complainant’s business in the disputed domain name does not affect the similarity of the domain name from the registered trademark under the first element of the Policy. (WIPO Overview 3.0, section 1.8). In view of the Complainant’s business nature, the inclusion of a term “coffee” does not affect the similarity of the disputed domain name from the Complainant’s JDE trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name.
The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Further, the Respondent is not commonly known by the disputed domain name. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
The Panel is satisfied that the Respondent must have known the Complainant’s JDE trademark and its use in relation to coffee when it registered the disputed domain name. JDE is not an obvious name for a coffee brand and the registration of domain name with only one character difference for the same product as sold by the Complainant under the JDE brand suggests strongly that the Respondent is engaged in typosquatting. The Panel also notes that the Complainant owns and operates the domain name <jdecoffee.com>.
The disputed domain name did for some time resolve to a page advertising mobile phone apps, suggesting disputed domain name was being used to attract consumers to the page.
In any event, the fact that the disputed domain name does not currently resolve to an active page does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. (WIPO Overview 3.0, section 3.3). See also Telstra Corporative Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003.
Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s JDE trademark and has used the disputed domain name in bad faith.
For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <jdqcoffee.com> be transferred to the Complainant.
Date: May 13, 2020