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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. Privacy Administrator, Anonymize, Inc.

Case No. D2021-1149

1. The Parties

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

The Respondent is Privacy Administrator, Anonymize, Inc., United States of America.

2. The Domain Name(s) and Registrar(s)

The disputed domain names <capsulelavazzafirma.com>, <cialdelavazza.com>, <compatibililavazzafirma.com> are registered with Epik, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2021. On April 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 14, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 7, 2021.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on May 18, 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 the Rules, paragraph 7.

4. Factual Background

The Complainant is an Italian company specialized in coffee import and roast founded in 1927.

The Complainant is one of the top 50 European brands in terms of visibility and reputation. With more than 4000 employees worldwide, direct subsidiaries and a wide distribution network, the Complainant today operates in over 140 countries worldwide.

For the needs and purposes of its activities, the Complainant is the owner of numerous trademarks (thereafter the “LAVAZZA trademarks”) such as:

- the European Union word Trade Mark registration LAVAZZA n°000317057, registered on May 25, 1998, for goods and services in classes 21, 30 and 42;

- the International word Trademark registration LAVAZZA n°317174, registered on July 18, 1966, for goods and services in classes 29, 30 and 31;

- the International word Trademark registration LAVAZZA n°1186133, registered on July 29, 2013, for goods and services in classes 7 and 11;

- the International semi-figurative Trademark registration LAVAZZA n°1299219, registered on February 23, 2016, for goods and services in classes 11, 30 and 43;

- the International semi-figurative Trademark registration LAVAZZA FIRMA n°1116692, registered on March 16, 2012, for goods and services in classes 7, 11 and 30.

The Complainant also registered more than 600 domain names incorporating the LAVAZZA trademark, amongst which:

- <lavazza.com>, registered on May 19, 1996;

- <lavazza.us>, registered on April 25, 2002.

The disputed domain names <compatibililavazzafirma.com> and <capsulelavazzafirma.com> were registered by the Respondent on February 7, 2018, and the disputed domain name <cialdelavazza.com> was registered by the Respondent on July 10, 2018.

At the time the Complainant became aware of their existence, each of the disputed domain names pointed to a parking page including pay-per-click (“PPC”) links mainly related to coffee products.

At the time of filing the complaint as well as at the time of the present decision, each of the disputed domain names points to a page proposing Internet users to request information or submit offers for the purchase of these disputed domain names.

The Panel is requested to transfer the disputed domain names to the Complainant.

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant stands that the disputed domain names are identical or confusingly similar to its LAVAZZA trademarks, since they incorporate the whole Complainant’s trademark LAVAZZA, and more precisely, concerning two of them, the LAVAZZA FIRMA trademark.

The Complainant considers that the fact the disputed domain names differ from the LAVAZZA trademark by the addition of the non-distinctive elements “compatibili”, “capsule” and “cialde” and, concerning two of them, “firma”, which refers to the model of one of the Complainant’s coffee machines, does not affect this confusing similarity.

The Complainant also insists on the fact that the generic terms added to the LAVAZZA trademark are particularly likely to increase the likelihood of confusion with the Complainant’s trademarks and to induce Interne users to believe that there is an association or affiliation between the disputed domain names and the Complainant.

Furthermore, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain names, since the Respondent is not a licensee, an authorized agent of the Complainant nor in any other way authorized to use the Complainant’s trademarks.

Moreover, the Complainant underlines that it is not in possession of, nor aware of the existence of any evidence demonstrating that the Respondent might be commonly known by a name corresponding to the disputed domain names as an individual, business or any other organization.

At last, the Complainant argues that the Respondent has registered and is using the disputed domain names in bad faith, arguing that the Respondent could not have possibly ignored the existence of the Complainant’s trademark at the time of their registration, given that the Complainant uses the LAVAZZA sign since 1895 and considering the worldwide reputation of the LAVAZZA trademarks.

The Complainant also indicates that the disputed domain names previously pointed to pages where Internet users could find several sponsored links related to coffee products, including links referring to the Complainant and its competitors, and leading users to other commercial websites promoting the Complainant’s competitors’ products, such conduct indicating the Respondent’s bad faith in use of the disputed domain names.

The Complainant adds that the current redirection of the disputed domain names to pages where they are offered for sale clearly demonstrates the Respondent’s intention to derive profits from the sale of the disputed domain names.

The Complainant further states that the Respondent appears to have engaged in a pattern of bad faith registrations since it registered at least five domain names encompassing the LAVAZZA trademark without the Complainant’s authorization.

The Complainant finally highlights that the Respondent failed to respond to the Complainant’s cease and desists letters and used a privacy protection service.

B. Respondent

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

6. Discussion and Findings

A. General remarks

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the 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.

B. Consolidation of the complaint

According to the Rules, paragraph 10(e), the Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. At the same time, paragraph 3(c) of these Rules states that the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

The Complainant requests for consolidation even though the disputed domain names were registered via the use of a privacy protection service and therefore maybe in the name of purportedly different underlying registrants.

Considering that, as highlighted by the Complainant, the disputed domain names were registered via the same Registrar, using the same privacy protection service, that two of them were registered on the same day, that the same domain name servers are associated with the disputed domain names, that each of them wholly incorporates the Complainant’s trademark with the addition of an Italian descriptive term and the same generic Top-Level Domain (“gTLD”) “.com”, and that the disputed domain names have been used for the same purposes, the Panel considers that the criteria for consolidation scenario are met (see section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel therefore decides to consolidate the present domain name disputes.

C. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights on the LAVAZZA trademarks, including the LAVAZZA FIRMA trademark.

Then, the Panel notices that each of the disputed domain names is composed of the exact reproduction of the LAVAZZA trademark and more precisely, concerning two of them, of the LAVAZZA FIRMA trademark, to which have been added (i) either the term “compatibili”, the term “capsule” or the term “cialde”, that respectively mean “compatible”, “capsules” and “pods” in Italian, and (ii) the gTLD “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the 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 domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP (see section 1.7 of the WIPO Overview 3.0).

The Panel considers that the exact reproduction in the disputed domain names of the entire LAVAZZA trademark, and more precisely, concerning two of them, of the whole LAVAZZA FIRMA trademark, makes the disputed domain names confusingly similar to the LAVAZZA trademarks, the addition of either the word “compatibili”, the word “capsule” or the word “cialde” not preventing a finding of confusing similarity.

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain names are confusingly similar to the Complainant’s trademarks.

D. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain names.

These circumstances are:

- before any notice of the dispute, the 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

- the respondent (as an individual, business, or other organization) has been commonly known by the domain names, even if the respondent has acquired no trademark or service mark rights; or

- the 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain names in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, 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 prima facie 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 (see section 2.1 of the WIPO Overview 3.0).

According to the Panel, the Complainant has shown a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, since the Respondent has not been licensed by the Complainant or authorized in any way to use the LAVAZZA trademarks.

In addition, none of the circumstances set forth in paragraph 4(c) of the Policy appear to be met in this case.

However, the Respondent did not reply to the Complainant’s contentions.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain names.

E. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain names have been registered and are being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names 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 the respondent’s documented out-of-pocket costs directly related to the domain names; or

(ii) the 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 name, provided that the respondent has engaged in a pattern of such conduct; or

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

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

First of all, the Panel finds that it is established that the Complainant’s trademarks were used and registered long before the registration of the disputed domain names, and that the Respondent could not have been unaware of the LAVAZZA trademarks at the time of the registration of the disputed domain names, given the worldwide reputation of the Complainant and the fact that each of the disputed domain names wholly incorporates the LAVAZZA trademark, and even more precisely, concerning two of the disputed domain names, the LAVAZZA FIRMA trademark.

The addition of either the word “compatibili”, the word “capsule” or the word “cialde” to the LAVAZZA or even LAVAZZA FIRMA trademarks is insufficient for avoiding Internet user confusion. On the contrary, the use of the terms “capsule” and “cialde” in particular emphasize the likelihood of confusion, given that these are the Italian terms for respectively “capsules” and “pods”, that are directly linked to the Complainant’s activities.

Then, the Panel finds that the fact the disputed domain names previously redirected to PPC pages including sponsored links related to coffee products, some of them referring to the Complainant and its competitors and leading Internet users to other commercial websites promoting the Complainant’s competitors’ products, demonstrates the Respondent’s use of the disputed domain names in bad faith since the Respondent takes advantage of the Complainant’s reputation to generate money.

Likewise, the fact that the disputed domain names currently point to pages through which the disputed domain names are offered for sale clearly shows the Respondent’s fraudulent intent to earn profits using the Complainant’s worldwide-known trademarks.

The Panel finally notes that the Respondent seems to have engaged in a pattern of bad faith registrations by registering the disputed domain names encompassing the LAVAZZA trademark without the Complainant’s authorization, and that the Respondent never answered the cease-and-desist letters that were sent by the Complainant regarding the disputed domain names.

In view of all these circumstances, the Panel considers that the Respondent has registered and is using the disputed domain names to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks, and for the purpose of selling the disputed domain names for valuable consideration.

Therefore, the Panel finds that the Respondent has registered and is using the disputed domain names in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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 names <compatibililavazzafirma.com>, <capsulelavazzafirma.com> and <cialdelavazza.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: June 1, 2021

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