WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. James H Park, JIN-1

Case No. D2021-1829

1. The Parties

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

Respondent is James H Park, JIN-1, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <lavazzafirma.com> (the “Domain Name”) is registered with DropCatch.com 729 LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also, on June 10, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2021.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 21, 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

Complainant was established in 1895 in Turin. By 1910, the company was already the top Italian coffee importer and roaster. With more than 4,000 employees worldwide, direct subsidiaries and a wide distribution network, Complainant today operates in over 140 countries including the Republic of Korea, where Respondent is based. Complainant is known internationally, for example, because of worldwide marketing, TV advertisements, and its well-known calendar.

Examples of sales volumes of Complainant’s LAVAZZA brand products in the market are: EUR 962 million in 2008; and EUR 942 million in 2009. Complainant’s sales in the Republic of Korea, where Respondent is reportedly based, amounted to over EUR 2.5 million in 2010, over EUR 2.9 million in 2015, and over EUR 2 million in 2018.

Complainant owns several trademark registrations for the LAVAZZA Mark (or “the Mark”) alone or in combination with other descriptive terms and/or figurative elements, including the following for the word mark: European Union Trademark Registration No. 000317057 for LAVAZZA (word mark) registered on May 25, 1998; International Trademark Registration No. 317174 for LAVAZZA (word mark), registered on July 18, 1966; and International Trademark Registration No. 1186133 for LAVAZZA (word mark), registered on July 29, 2013 (designating among other countries the Republic of Korea). Complainant also owns International Trademark Registration No. 1116692 for the figurative mark LAVAZZA FIRMA, registered on March 16, 2012 (the “LAVAZZA FIRMA Mark”) (collectively, “the Marks”). Complainant manufactures and sells coffee, which encompasses a broad range of espresso blends, capsules, and coffee machines, which it sells under its marks including the LAVAZZA Mark and the LAVAZZA FIRMA Mark.

Respondent registered the Domain Name on December 11, 2017. Since registering it, Respondent has been redirecting the Domain Name to a website (“Respondent’s website”) where Internet users can find many sponsored links to various commercial websites, mainly related to coffee products, including: CAFFÈ ESPRESSO CAPSULE; CAFFE ESPRESSO COFFEE; CAPSULE CAFFÈ; CAFFÈ CAPSULE; COFFEE CAPSULE; CIALDE CAFFÈ; COFFEE FRESHLY ROASTED; CAFFÈ; and CAPSULE. By clicking on the pay-per-click links available on the home page of Respondent’s website, Internet users are redirected to internal pages of the website displaying additional sponsored links related to third-party online stores selling products of Complainant’s competitors, such as CAFFE’ BORBONE and L’OR Espresso coffee products.

Moreover, via the link “Buy this domain” published on the home page of Respondent’s website, users are redirected to an internal page of the “www.sedo.com” website, where the Domain Name is offered for sale. It was previously offered for sale at EUR 3,900 while, at the time this Complaint was drafted, it was offered for sale for EUR 900 (“The owner of lavazzafirma.com is offering it for sale for an asking price of 900 EUR!”).

Complainant initially instructed a web agency to contact Respondent to ascertain its real intentions for the Domain Name. On November 12, 2018, the web agency sent an email to the email address indicated in the public WhoIs records, indicating that the Domain Name was of interest for a project to be submitted to Complainant and requesting Respondent to indicate whether it would have been able to transfer the Domain Name. On the same date, the web agency received a response from Respondent, which requested EUR 3,900 for transferring the Domain Name.

On December 28, 2018, Complainant then instructed its representative to send a cease and desist letter to Respondent with reminders on January 9, 2019, December 5, 2019, and December 17, 2020. On December 18, 2020, Complainant’s representative received a message from Respondent requesting EUR 900 to transfer the Domain Name to Complainant. Complainant’s representative promptly replied to such communication, reiterating its arguments from the cease and desist letter and requesting transfer of the Domain Name to Complainant free of charge, but Respondent refused to comply. This proceeding followed.

5. Parties’ Contentions

A. Complainant

The Domain Name is confusingly similar to the LAVAZZA and LAVAZZA FIRMA Marks which Complainant owns. The Domain Name reproduces Complainant’s LAVAZZA Mark in its entirety, with the addition of the term “firma” (meaning “signature” in Italian), which is insufficient to eliminate confusing similarity with the LAVAZZA Mark. The Domain Name also entirely reproduces the text element of Complainant’s LAVAZZA FIRMA Mark.

Respondent is not a licensee, authorized agent of Complainant or in any other way authorized to use the LAVAZZA and LAVAZZA FIRMA Marks. Complainant does not have any evidence demonstrating that Respondent, whose name is James H Park, JIN-1, might be commonly known by a name corresponding to the Domain Name as an individual, business, or other organization. Respondent has not provided Complainant with any evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services before or after any notice of the dispute herein.

This is because the Domain Name has been redirected to a webpage displaying several sponsored links, which generate revenues, via the pay-per-click system, to Respondent. In addition, many of the sponsored links published on Respondent’s website are related to coffee products and redirect users to websites promoting products of Complainant’s competitors. Furthermore, such use does not constitute a legitimate noncommercial or fair use of the Domain Name without intent of commercial gain.

Moreover, Respondent’s offer to sell the Domain Name for amounts exceeding the out-of-pocket costs (EUR 3,900 and EUR 900) clearly shows that Respondent had no intention to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.

In light of Complainant’s use of the LAVAZZA Mark since as early as 1895, the amount of advertising and sales of Complainant’s products in Europe and worldwide, including in Respondent’s country, Respondent could not have possibly ignored the existence of Complainant’s well-known LAVAZZA Mark at the time he registered the Domain Name. Considering the distinctiveness and reputation of the LAVAZZA Mark and considering the identity of the Domain Name with Complainant’s LAVAZZA FIRMA coffee machines, Respondent clearly acted in opportunistic bad faith, since it obviously registered the Domain Name with full knowledge of Complainant and its Marks for the purpose of taking commercial advantage of them. With regard to bad faith use, the Domain Name has resolved since its registration to a web page where Internet users can find a number of sponsored links to various commercial websites, including websites related to coffee products and promoting also products of Complainant’s competitors. As a result, Respondent may earn a commission whenever an Internet user visits the website and clicks on one of the sponsored links. Such conduct indicates Respondent’s bad faith. Moreover, Respondent’s redirection of the Domain Name to a website displaying links to goods which compete with those sold under the Marks demonstrates a deliberate effort to trade off the goodwill associated with those Marks and divert traffic from Complainant’s website.

Furthermore, the Domain Name was offered for sale for EUR 3,900 and, at present, is listed for sale for EUR 900 on Sedo.com. Respondent’s asking prices are to be considered well in excess of the out-of-pocket costs directly related to the Domain Name. Thus, it appears that Respondent registered the Domain Name with the purpose of selling it, in all likelihood to the legitimate trademark owner, for valuable considerations in excess of the out-of-pocket costs. Moreover, besides the Domain Name, Respondent has registered numerous other domain names consisting of third-parties’ well-known trademarks: James H Park was, in fact, involved in at least 14 prior WIPO cases, all concluded with decisions rendered in favor of complainants, and he is listed as registrant of at least four additional domain names consisting of third-parties’ distinctive signs, namely <uberpromocode.com>, <iferrari.com>, <kobelco-parts.com>, and <nutellabar.com>.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is uncontroverted that Complainant has established rights in the LAVAZZA and LAVAZZA FIRMA Marks based on long-standing use as well as the aforementioned trademark registrations for them.

Furthermore, the Domain Name <lavazzafirma.com is identical to Complainant’s LAVAZZA FIRMA Mark because it incorporates that mark in its entirety. The Domain Name is confusingly similar to the LAVAZZA Mark because it incorporates that Mark in its entirety and adds the term “firma”, which does not prevent a finding of confusingly similarity. In this case, using the term “Firma”, a term that is part of one of Complainant’s registered marks and which Complainant has been using in its business for a long time, support the Panel’s findings under the third element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well settled that the addition of the generic Top-Level Domain, here “.com”, is not significant in determining whether a domain name is identical or confusingly similar to a trademark. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

It is uncontroverted that Respondent is not a licensee or authorized agent of Complainant or in any other way authorized to use the Marks. Also, Complainant is not in possession of, nor aware of the existence of, any evidence demonstrating that Respondent, whose name is James H Park, JIN-1 according to the Whois records, might be commonly known by a name corresponding to the Domain Name as an individual, business, or other organization. Furthermore, the Domain Name has been redirected to a webpage displaying several sponsored links, which generate revenues, via pay-per-click links, to the Domain Name holder. Many of the sponsored links published on Respondent’s website are related to coffee products and redirect users to websites promoting products of Complainant’s competitors. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name without intent of commercial gain. Similarly, the fact that the Domain Name is identical to one of the Complainant’s Marks carries a high risk of implied affiliation that cannot confer rights or legitimate interests.

Moreover, Respondent’s offer for sale of the Domain Name for amounts exceeding the out-of-pocket costs (EUR 3,900 and 900) shows that Respondent had no intention to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.

Where, as here, Complainant has raised a prima facie presumption of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered and has been using a Domain Name that is confusingly similar to the LAVAZZA and LAVAZZA FIRMA Marks. When Respondent registered the Domain Name in December 2017, Complainant had been using the Marks for many years worldwide. Given Complainant’s widespread and long-standing use of the Marks worldwide, the Panel finds it is highly unlikely Respondent was unaware of the Marks when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the facts that:
(1) Respondent has not shown that he has any rights or legitimate interests in the Domain Name; (2) Respondent registered a Domain Name that is exactly the same as Complainant’s registered LAVAZZA FIRMA Mark; and (3) Respondent is using a confusingly similar domain name on a website that is selling goods that compete with those sold by Complainant. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.

The Panel concludes that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Advance Magazine Publishers Inc. v. Red Wagon Films, WIPO Case No. D2006-0893. Further, the Panel finds that the sponsored links for businesses in the same field or providing overlapping services as those of Complainant’s are an indication of bad faith. Even if the users who access Respondent’s website may conclude that it is not what they were originally looking for, Respondent has already succeeded in its purpose of using Complainants’ Marks to attract users for commercial gain. See Red Bull GmbH v. Unasi Management Inc., WIPO Case No. D2005-0304.

Furthermore, as indicated above, the Domain Name was offered for sale for EUR 3,900 and, at present, is listed for sale for EUR 900 Euro on Sedo.com. Respondent’s asking prices are to be considered well in excess of the out-of-pocket costs directly related to the Domain Name, and, thus, evidence Respondent’s desire to gain monetarily from the Domain Name.

The Panel therefore holds that Complainant has established element (iii) above.

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 Name, <lavazzafirma.com>, be transferred to Complainant.

/Harrie R. Samaras/
Harrie R. Samaras
Sole Panelist
Date: October 5, 2021