WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caffè Borbone S.r.l. v. Claudio Schiavo, Schiavo Enterprises LLC

Case No. D2021-0746

1. The Parties

Complainant is Caffè Borbone S.r.l., Italy, represented by Società Italiana Brevetti S.p.A., Italy.

Respondent is Claudio Schiavo, Schiavo Enterprises LLC, United States of America.

2. The Domain Names and Registrar

The disputed domain names <borbonecoffee.com>, <borbonecoffeeusa.com>, <coffeeborbone.com>, and <coffeeborboneusa.com> (collectively referred to as the “Domain Names”) are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2021 in relation to the <borbonecoffee.com> and <coffeeborbone.com> disputed domain names. On March 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the <borbonecoffee.com> and <coffeeborbone.com> disputed domain names. On March 13, 2021, the Registrar transmitted by email to the Center its verification confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on March 24, 2021 adding the <borbonecoffeeusa.com> and <coffeeborboneusa.com> disputed domain names to the proceeding. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the <borbonecoffeeusa.com> and <coffeeborboneusa.com> disputed domain names. On March 26, 2021, the Registrar transmitted by email to the Center its verification confirming that the Respondent is listed as the registrant and providing the contact details.

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 March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent sent various email communications to the Center between April 2 and Aril 7, 2021. On April 21, 2021, the Center informed the Parties that it would proceed to appoint a panel. The Respondent sent two additional communications on April 21 and April 30, 2021.

The Center appointed Marina Perraki as the sole panelist in this matter on May 11, 2021. 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 one of the most important Italian companies in the coffee industry active since 1997. It produces every day around 96 tons of processed coffee in its Italian factories. Complainant’s products, namely capsules, coffee beans and ground coffee are distributed internationally. Complainant maintains its main website at “www.caffeborbone.it”.

Apart from its company name, Caffè Borbone S.r.l., Complainant owns trademark registrations for CAFFÈ BORBONE and BORBONE including:

- Italian Trademark Registration no. 302000900814890, CAFÉ BORBONE (fig.), filed on January 19, 2000 and registered on June 9, 2003, for goods and services in International classes 9, 30, and 42;

- European Union Trademark Registration no. 15670532, BORBONE (fig.), filed on July 18, 2016 and registered on November 23, 2016, for goods and services in International classes 7, 11, 21, 30, 35, 37, 40, and 43; and

- International Trademark Registration no. 1359499, CAFÉ BORBONE (fig.), registered on May 30, 2017 for goods and services in International classes 11, 30, and 43.

Complainant owns domain name registrations containing the trademark CAFFÈ BORBONE including <caffeborbone.it> and <caffeborbone.com>.

The Domain Names were registered as follows: <borbonecoffee.com>, <borbonecoffeeusa.com>, and <coffeeborboneusa.com> were registered on June 10, 2019 and <coffeeborbone.com> was registered on September 5, 2020.

Per Complaint, all Domain Names, at least on September 14, 2020, redirected to the website “www.kenya-caffe.myshopify.com” on which different kinds of coffee products, capsules, coffee machines and similar products, were being offered for sale and advertised under the mark “LoRe Caffè”, which per Complaint is an Italian coffee producer and Complainant’s competitor.

Furthermore, per Complainant, the Domain Names <borbonecoffee.com> and <coffeeborbone.com> used to lead to a website showing Respondent’s name details and a picture.

Currently the Domain Names <borbonecoffee.com> and <coffeeborboneusa.com> lead to inactive websites. The Domain Name <coffeeborbone.com> leads to a parking page, which contains sponsored/advertising links in the field of coffee products, capsules, coffee machines. The Domain Name <borbonecoffeeusa.com> redirects to the website “www.kenya-caffe.myshopify.com”. As Complainant demonstrated, the LinkedIn profile of Respondent shows pictures of coffee machines and the domain name <ucaffeusa.com>, which redirects to the same website “www.kenya-caffe.myshopify.com”.

On March 31, 2021, Complainant sent an email to Respondent exploring an amicable settlement.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Names.

B. Respondent

Respondent sent a few email communications to the Center. On April 2, 2021, Respondent sent an email to the Center stating that Respondent is “Coffee Distributor for Borbone USA for About 10 Years”, that “Acquired those Name Fair and Square” and that “Borbone Italia Decided to sale the company this is the reason we do not sale and promote their products any longer, we have no problem to release those names to Them for a Fair price, since we lost to many years to help them to buildup the business in USA”.

On April 7, 2021, Respondent sent an email communication to the Center where it was stated that Respondent does not wish to “give up” the Domain Names.

On April 21, 2021, Respondent sent an email communication to the Center stating “Thank you www.ucaffeusa.com Your Referrals Are Greatly Appreciated”.

On April 30, 2021, Respondent sent an email communication to the Center where it was stated inter alia “in order to settle this we need to be recomposited for the 9 Years that we worked with the Borbone Caffe USA and the price for those Names is $ 15.000”.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Names:

(i) the Domain Names are 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 Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the CAFFÈ BORBONE and BORBONE marks.

The Panel finds that the Domain Names are confusingly similar with the CAFFÈ BORBONE and BORBONE trademarks of Complainant.

The Domain Names incorporate 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 words “coffee” (English for Caffè) and/or “usa”, as the case may be, in the Domain Names does not prevent a finding of confusing similarity as the BORBONE mark remains clearly recognizable (WIPO Overview 3.0 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is also 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).

The Panel finds that the Domain Names are confusingly similar to the CAFFÈ BORBONE and BORBONE trademarks 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 Names, among other circumstances, by showing any of the following elements:

(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.

On the contrary, the Domain Names used to redirect to a website apparently linked to Respondent offering for sale competing products and, as the case may be, to a website with pay-per-click (“PPC”) links of competing products.

A respondent’s use of a complainant’s mark to redirect users to a competing site would not support a claim to rights or legitimate interests (WIPO Overview 3.0, section 2.5.3).

Furthermore, the Panel finds that it is not unlikely that Respondent received PPC fees from the linked websites that were listed at the Domain Names’ websites and used the Domain Names for its own commercial gain . The use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with complainant’s trademark (Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; WIPO Overview 3.0 , section 2.9).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

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 Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names 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 Names; or

(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Names, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Names, 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 Names in bad faith. Because the CAFFÈ BORBONE and BORBONE marks had been used and registered at the time of the Domain Names registrations by Respondent, the Panel finds that Respondent had Complainant’s marks in mind when registering the Domain Names (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; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). In fact, in its April 2, 2021 communication to the Center, Respondent admits its knowledge of Complainant’s trademark.

Furthermore, Respondent could have conducted a trademark search and would have found Complainant’s prior registrations in respect of the CAFFÈ BORBONE and BORBONE marks (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

The Domain Names were therefore operated by intentionally, for commercial gain, creating a likelihood of confusion with Complainant’s trademarks and business as to the source, sponsorship, affiliation or endorsement of the websites they resolved to, within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).

As regards bad faith use, one of the Domain Names redirects to a website displaying links to third party websites, which suggests that, presumably, Respondent received PPC fees from the linked websites that were listed thereon. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5).

As regards bad faith use, as Complainant demonstrated, earlier all the Domain Names and currently two of them redirect to a website apparently related to Respondent, offering competing goods. This also supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark (WIPO Overview 3.0, section 3.1.4).

The current non use of two of the Domain Names does not change the Panel’s findings above.

Lastly, two of the Domain Names, namely <borbonecoffeeusa.com> and <coffeeborboneusa.com>, were registered with a privacy shield service to hide the registrant’s identity. Respondent’s concealment of the Domain Names’ holder’s identity through use of a privacy shield constitutes further indication of bad faith (Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Names, <borbonecoffee.com>, <borbonecoffeeusa.com>, <coffeeborbone.com>, and <coffeeborboneusa.com>, be transferred to the Complainant.

Marina Perraki
Sole Panelist
Date: May 25, 2021