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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. Oleg Kinzyabulatov, Private Person

Case No. D2021-0999

1. The Parties

The Complainant is Luigi Lavazza S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.

The Respondent is Oleg Kinzyabulatov, Private Person, the Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <lavazza.vip> is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2021, 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 April 6, 2021 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 April 6, 2021

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 of the Complaint, and the proceedings commenced on April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021.

The Center appointed Ganna Prokhorova as the sole panelist in this matter on May 19, 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

The Complainant launched its business in 1895, and nowadays is an Italian coffee producer operating in more than 140 countries and having about 4000 employees onboard. The Complainant owns trademark registrations for LAVAZZA in numerous jurisdictions, including, for instance, International Trademark Registration No. 317174, registered on July 18, 1966, and designating inter alia the Russian Federation.

In order to proactively protect the trademark and market the LAVAZZA products also on the Internet, the Complainant registered more than 600 domain names containing its trademark LAVAZZA, including <lavazza.com>, registered on May 19, 1996, and <lavazza.ru>, registered on March 27, 2000.

The disputed domain name was registered on April 14, 2020. It used to resolve to a website featuring the Complainant’s trademark, offering for sale products branded with the Complainant’s trademark. At the time of this decision the disputed domain name does not resolve to any active website.

The Complainant through its representatives contacted the Respondent and received a response on possibility to transfer the disputed domain name for EUR 10,000. In light of the outcome of such preliminarily contacts and the amount well in excess of the out-of-pocket costs requested for the transfer of the disputed domain name, the Complainant sent a cease-and-desist letter with further reminders to the Respondent back in September-December 2020, requesting it to immediately deactivate the website published in correspondence of <lavazza.vip> and transfer it to Complainant. No formal response was received from the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the mark LAVAZZA by virtue of use and registrations. LAVAZZA is a famous and well-known brand in many countries worldwide and the name LAVAZZA is for the Complainant’s customers synonymous with quality products.

The Complainant submits that the disputed domain name is identical or confusingly similar to the Complainant’s rights in the LAVAZZA marks. The addition of the suffix “.com” is merely instrumental and shall be disregarded for the determination of the confusing similarity.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant adds that there is no evidence of the Respondent’s use or preparations to use the disputed domain name for a bona fide offering of goods or services, or that the Respondent is commonly known by the disputed domain name, or that it has any legitimate noncommercial or fair use of the disputed domain name.

The Complainant alleges that the disputed domain name was registered and/or is being used in bad faith.

The Complainant seeks a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

To succeed, in a UDRP complaint, complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(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.

The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. See Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.

A. Identical or Confusingly Similar

According to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.

The Complainant has demonstrated ownership of its LAVAZZA trademarks in multiple jurisdictions. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the LAVAZZA mark.

As stated in section 1.7 of the WIPO Overview 3.0, “The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

The Panel has duly taken into account that the disputed domain name incorporates the whole of Complainant’s LAVAZZA word trademark without any alteration, which might distinguish the disputed domain name from the trademark. Moreover, as indicated in section 1.11.1 of the WIPO Overview 3.0, “the applicable generic Top-Level Domain (“gTLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Therefore, the addition of the TLD “.vip” to the Complainant’s trademark in the disputed domain name is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. See e.g., Ageas SA/NV v. Tri Nguy\u1ec5n [Tri Nguyễn], WIPO Case No.

D2020-1632 (“The addition of a gTLD such as “.online”, “.vip”, or “.xyz” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark”) and ZipRecruiter Inc. v. Grace Phillips, WIPO Case No. D2020-0308.

Therefore, the Panel considers the requirements of the first element of paragraph 4(a)(i) of the Policy to be satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

It is well established that, as it is put in the WIPO Overview 3.0, section 2.1, while the overall burden of proof in the proceedings is on the complainant, 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. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Complainant contends that the Respondent is not a licensee, authorized agent of the Complainant or in any other way authorized to use Complainant’s trademarks. Specifically, the Respondent is not an authorized reseller of the Complainant and has not been authorized to register and use the disputed domain name. The Respondent even as an unauthorized reseller of the Complainant’s products, does not have a legitimate interest, as the disputed domain name was resolving to a website offering for sale purported LAVAZZA products without publishing any clear and evident disclaimer as to the lack of affiliation with the Complainant. See section 2.8 of the WIPO Overview 3.0.

Furthermore, there are no evidence in the case file demonstrating that Respondent might be commonly known by a name corresponding to the disputed domain name as an individual, business, or other organization.

The Respondent, however, has failed to file a response to prove its rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.

In addition, the disputed domain name is identical to the trademark LAVAZZA adding the TLD “.vip”, which creates an impression of an association with the Complainant. Bearing in mind, the sign “Lavazza” encompassed in the disputed domain name corresponds to the surname of the Complainant’s founder and family and has no meaning in foreign languages, and, thus, it is obviously connected to the Complainant (see Gianni Versace S.r.l. v. Xiulin Wang aka Wangxiulin, WIPO Case No. D2020-0539), the Panel finds that the disputed domain name identical to the Complainant’s trademark carries a high risk of implied affiliation to the Complainant (see section 2.5.1 of the WIPO Overview 3.0).

Furthermore, the Respondent’s intention to sell the disputed domain name for more than its out-of-pocket costs to the legitimate trademark owner further demonstrates that it has no rights or legitimate interests in the disputed domain name.

As final element within the frame of rights or legitimate interests, the Respondent did not reply to the

cease-and-desist letter and subsequent reminders sent by the authorised representative of the Complainant. As stated in The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218 “By operation of a common sense evidentiary principle, the Panel finds that the Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations”.

For all of the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Therefore, the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy it should be established that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include, particularly: “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name;” and “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The LAVAZZA mark is distinctive and famous, and, as such, should be afforded a wide scope of protection, particularly in view of the ubiquitous nature of the brand being widely publicized globally and constantly featured throughout the Internet (as demonstrated by the heavy advertising presence worldwide). Therefore, the Panel agrees that that the Respondent knew or should have known of the existence of the Complainant, and thus the Panel decides that the disputed domain name was registered in bad faith after the Complainant’s registration of its trademarks LAVAZZA in various countries including the Russian Federation where the Respondent is located, and after the Complainant had already expended considerable advertising costs and made significant sales of its LAVAZZA-branded products worldwide

As is seen from the case file, the disputed domain name has been pointed to a website featuring the LAVAZZA trademark and offering for sale purported LAVAZZA products, without publishing any clear and evident disclaimer as to the lack of affiliation with the Complainant. Therefore, the Panel finds that such a use of the disputed domain name shows that the Respondent intentionally registered and used <lavazza.vip> to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s well-known trademark as to the source, sponsorship, affiliation, or endorsement of its website and its business promoted therein. The Panel accepts that the Complainant is correct in asserting that this activity falls within the scope of paragraph 4(b)(iv) of the Policy and that these are circumstances that provide evidence of bad faith registration and use.

Furthermore, a request for at least EUR 10,000 for handing over the disputed domain name is to be considered well in excess of the out-of-pocket costs directly related to the disputed domain name as evidenced in several cases, such as Osram Sylvania, Inc. v. iLighting Solutions Inc., WIPO Case No. D2008-0003 (“The amount for which Respondent seeks to sell each of the domain names at issue, 10,000 Euros, is clearly in excess of any costs to acquire those domain names. Given that the trademark SYLVANIA is a widely known mark, the Panel believes that the only motivation for Respondent to acquire the domain names was to sell the domain names to Complainant or to one of its competitors”). See also i.e. Harvey World Travel Limited v. GamCo, WIPO Case No. D2003-1023, Alta Berkeley Venture Partners v. AltaMart, WIPO Case No. D2004-0286, L’oreal v. Domain Park Limited, WIPO Case No. D2008-0072, Volkswagen AG v. Whois privacy services, provided by DomainProtect LLC / Mikchail Petrov, WIPO Case No. D2013-1237. Therefore, the Panel deems also paragraph 4(b)(i) of the Policy applicable to the present case, since the Respondent registered the disputed domain name with the purpose of selling it to the trademark owner for valuable considerations in excess of the out-of-pocket costs.

In light of the above facts and reasons, the Panel therefore determines that the disputed domain name was registered and is being used in bad faith, and that the Complainant has satisfied the condition set out in 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 <lavazza.vip> be transferred to the Complainant.

Ganna Prokhorova
Sole Panelist
Date: June 2, 2021

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