WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cafédirect plc v. Mr. Dan Lundh

Case No. D2011-0359

1. The Parties

The Complainant is Cafédirect plc of London, United Kingdom of Great Britain and Northern Ireland represented by DLA Piper UK LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mr. Dan Lundh of Helsingborg, Sweden, represented by Groth & Co KB, Sweden.

2. The Domain Name and Registrar

The disputed domain name <cafedirekt.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 24, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 24, 2011, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2011. The Center received an informal email communication on March 14, 201. The Respondent requested an extension for filing the Response on March 16 and 18, 2011 which was not granted by the Center. The Response was filed with the Center on March 21, 2011.

The Complainant filed a Supplementary Filing on March 21, 2011.

The Center appointed John Swinson as the sole panelist in this matter on March 25, 2011. 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 is Cafédirect plc, a public limited company which is registered in the United Kingdom with registration number SC141496. It was founded in 1989 by several company’s in response to the global collapse of coffee prices and is involved in the sale of coffee, tea, hot chocolate, cocoa, chocolate and confectionary.

The Complainant is the owner of the following trade mark registrations:

United Kingdom Registered Trade Mark 2280279 for CAFÉDIRECT registered September 10, 2001;

European Community Registered Trade Mark 004735593 for CAFÉDIRECT registered November 22, 2005; and

United Kingdom Registered Trade Mark 2534083 for CAFÉDIRECT registered December 10, 2009.

The disputed domain name was registered on September 29, 2008 by the Respondent. On November 10, 2008, the Respondent established the company, 1982 Café Direkt Kb with Swedish Company registration No. 969731-1166. The Respondent is also director of Café Direkt Limited which is registered in the United Kingdom with registration number 07040393. These companies are suppliers of coffee.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions and arguments:

Identical or Confusingly Similar

The Complainant owns United Kingdom and Community trade mark registrations for CAFÉDIRECT (“the Trade Marks”). The Complainant has used each of its Trade Marks continuously since registration. The Complainant first began trading using the name “Cafédirect” in 1989. As a result of the Complainant’s extensive use of its name, “Cafédirect”, the Complainant has developed substantial goodwill and reputation in relation to the sale of tea, coffee, hot chocolate, cocoa, chocolate and confectionary. Specifically, the Complainant is very prominent in the market due to advertising and other initiatives that have garnered media attention.

The disputed domain name incorporates words which are confusingly similar to the Complainant’s Trade Marks. They are phonetically identical and only one letter different to the Complainant’s Trade Marks. Therefore, taken as a whole, the disputed domain name is sufficiently similar to the Complainant’s Trade Marks and thus is likely to mislead consumers.

Rights or Legitimate Interests

The Respondent is engaged in illegitimate commercial activities. The Complainant has common law and registered trade marks and was operating well before the Respondent and has the right to prevent others from infringing its Trade Marks. The Respondent’s use of “cafédirekt” in the disputed domain name constitutes an infringement of the Complainant’s Trade Marks. Further, the Respondent’s use of the term “cafédirekt” in the disputed domain name is likely to mislead consumers into believing that there is an association between the disputed domain name and the Complainant and this constitutes passing off.

Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Registered and Used in Bad Faith

The Respondent is engaged in illegitimate commercial activities. Further, the Respondent offers low quality products through its business and the disputed domain name that are harmful to the Complainant’s brand.

The Respondent did not reply to letters sent by the Complainant in relation to the Respondent’s use of the disputed domain name. The Complainant contends that this is evidence that the Respondent is not using the disputed domain name: for the bona fide offering of goods and services; or for legitimate commercial or fair use; or without intent for commercial gain by intentionally misleading consumers into believing that there is a connection between the Respondent’s goods and services and those of the Complainant.

Further, the Respondent replaced its website with a holding page following receipt of a letter from the Complainant’s legal representatives and this is indicative of bad faith.

The Respondent also appears to be trading in bad faith by using the name of another large multinational coffee company.

The Complainant also claims that the Respondent’s actions are indicative of its intent to tarnish the Complainant’s Trade Marks, goods and services.

Therefore, the Complainant claims that the Respondent registered and used the disputed domain name for the primary purpose of: disrupting the business of the Complainant; and/or creating a likelihood of confusion with the Complainant’s name with the intention of attempting to attract customers for commercial gain; and/or creating the impression that the Respondent’s website was in some way sponsored by, or otherwise affiliated with the Complainant.

Therefore, the Complainant requests that the disputed domain name be transferred to the Complainant.

Supplementary Filing

By way of email on March 21, 2011 the Complainant submitted that given the Respondent filed its Response late, it should not be considered by the Panel and that in the event the Panel does consider the late Response, that the Complainant be given the opportunity to file a Reply.

B. Respondent

The Respondent makes the following submissions and arguments:

Identical or Confusingly Similar

The term “café” is a generic term commonly used for describing a place where coffee is sold and/or consumed. The term “direct” is a generic word connoting a sense of immediacy or referring to something as being instantaneous. The Swedish word “direkt” has an analogous meaning.

Further, the Complainant’s Trade Marks contain graphical elements that are not incorporated into the disputed domain name and as such, the disputed domain name is visually, very different to the Complainant’s Trade Marks.

Finally, one of the Complainant’s Trade Marks was registered subsequent to the disputed domain name being registered.

Rights or Legitimate Interests

The Respondent registered the disputed domain name shortly before registering the company name, 1982 Café Direkt KB. The fact that the disputed domain name was registered prior to the company name is not uncommon. Due to the scarcity of free domain names, desired domain names are often registered before any other intellectual property right.

The Respondent did not change the content of the website following a letter from the Complainant. The Respondent has temporarily closed down the website to which the disputed domain name resolves due to the fact that the Respondent did not have the available resources to update and maintain the web shop in a satisfactory manner. The Respondent’s business is still active and the Respondent is using the disputed domain name for email while the web shop is currently undergoing redesign. The Respondent is making a legitimate fair use of the disputed domain name, without intent for commercial gain by diverting consumers and misleading them or tarnishing the Complainant’s Trade Marks.

The Respondent owns a valid, registered Swedish company name and the disputed domain name incorporates the key term of this name. The Respondent’s company registration provides exclusivity for the name in the region of Scania in Sweden.

Given the meaning and association of the word “direkt” in the Swedish language, it is not uncommon to use the word “direkt” as part of a company name. When searching the Swedish company database, it shows that 16,939 Swedish companies currently use the term “direkt” in their company name.

The disputed domain name contains two generic, descriptive terms. When searching “cafe” and “direkt” on Google, 4.9 million results are returned. This is evidence that the terms are commonly used all over the world and not solely by the Complainant. When the Respondent searched these terms, almost all results on the first two pages related to the Respondent’s business. No results on the first page were related to the Complainant’s business or Trade Marks. When the Respondent searched the term “cafédirekt” on Google, 58,300 results were returned and all results on the first page related to the business of the Respondent and none related to the Complainant. Therefore, the Respondent is well known in Sweden by the disputed domain name, despite the absence of any trade marks.

Therefore, the Respondent has rights and legitimate interests in the disputed domain name.

Registered and Used in Bad Faith

The Respondent did not register the disputed domain name in bad faith. At the time of registration the Respondent had no knowledge of the Complainant’s business or Trade Marks.

The term “café” and the Swedish term “direkt” are generic terms commonly used by the public and the many companies involved in the sale of coffee. The Respondent has not attempted to attract Internet users to the Respondent’s site for commercial gain by creating a likelihood of confusion with the Complainant’s Trade Marks.

Also, since the Respondent had no knowledge of the Complainant’s business at the time of registering the disputed domain name, the disputed domain name cannot have been registered for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant for profit. Neither has the Respondent registered the disputed domain name primarily to disrupt the Complainant’s business, nor in order to prevent the Complainant reflecting its marks in a corresponding domain name.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(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 onus of proving these elements is on the Complainant.

A. Procedural Issues

The Respondent filed its Response late. The Complainant filed a Supplementary Filing on March 21, 2011 submitting that the Respondent’s late Response should not be considered by the Panel and that in the event the Panel does consider the late Response, that the Complainant be given the opportunity to file a Reply.

The Respondent presented no evidence setting out exceptional circumstances why its late filing should be considered.

Despite the Respondent’s late filing, the Panel will consider the Response in order to properly assess the merits of this case. As it turns out, doing so does not change the ultimate outcome.

There is no express provision under the Policy or Rules for a supplemental filing and if the Complainant had wished to submit a supplemental filing it may have, however it would have then been at the discretion of the Panel to decide whether it was appropriate to accept and consider the supplemental filing.

B. Identical or Confusingly Similar

The Complainant is the owner of two United Kingdom registered trade marks and one European Community trade mark for the word CAFÉDIRECT and CAFÉDIRECT. United Kingdom Registered Trade Mark 2280279 and European Community Registered Trade Mark 004735593 were registered prior to the disputed domain name being registered.

Further, the Complainant has put forward extensive evidence to suggest that it has common law rights in the term “cafédirect”. In order to establish common law trade mark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123 is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trade mark, nature and extent of advertising and media recognition. The Panel finds that the Complainant does have common law trade mark rights in the term “cafédirect” (at least in United Kingdom) given its extensive and comprehensive use of the term over a lengthy period of time and its apparently rigorous advertising and media campaigns.

For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.

The disputed domain name contains the word “cafédirekt” and as such is confusingly similar to the Complainant’s Trade Marks. There is one letter difference between the Complaint’s Trade Marks and the essential term in the disputed domain name. These words are phonetically identical and the slight difference does nothing to alleviate the confusion that will be caused to the public.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Trade Marks and as such, paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Paragraph 4(c)(i) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, before any notice to it of the dispute.

The Respondent appears to be using the disputed domain name to offer goods competitive with Complainant’s and to operate a business by the name “Cafédirekt”. However, after careful consideration of all the evidence submitted, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name for the purpose of the Policy as the evidence demonstrates that the Respondent’s motivation for selecting the business name and disputed domain name most likely was to trade off the Complainant’s Trade Marks, reputation, good will and to confuse and mislead customers and prospective staff members, thereby acquiring a commercial gain. The Panel does not accept that the Respondent had no knowledge of the Complainant given the Complainant’s reputation.

Merely establishing a business name and registering a domain name to trade off another’s reputation, especially where the Respondent is offering goods and services in competition to the Complainant, does not suffice to establish a right or legitimate interest safe harbor for the purpose of the Policy. Madonna Ciccone p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 is instructive on this issue. In that case, it was found that use is not legitimate if no reasonable explanation for the selection of the domain name can be proffered. Even if the domain name and business name have an ordinary meaning or are generic, where it cannot be shown that the name was selected for these reasons, but for intentionally attracting customers for commercial gain by creating a likelihood of confusion, this cannot be a bona fide offering of goods and services. As stated in that case, “[t]o conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”.

The Panel notes that the Complainant has made extensive submissions regarding the Respondent’s “illegitimate commercial activities”, however this is not relevant to the consideration of whether the Respondent has any rights or legitimate interests in the disputed domain name, and has not been considered here.

Further, the Complainant has submitted that the Respondent has infringed its Trade Marks and is engaged in the tort of passing off. Again, it is not for the Panel to decide such matters. However, and as discussed further below, the Panel is satisfied that the Respondent has registered and is using the domain name in bad faith to, in effect, trade off the reputation of Complainant’s Trade Marks, and that such actions are inconsistent with the Respondent holding recognized rights or legitimate interests under the Policy.

As such, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.

Paragraph 4(b)(iv) of the Policy provides that bad faith registration and use will be made out where the respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the respondent’s website or product or service on the website.

Here, the Panel finds that the disputed domain name has been used and registered in bad faith by the Respondent. Again, considerations of illegitimate commercial activities (not related to the disputed domain name or associated website) as demonstrated by the Complainant are not relevant on this issue and have not been considered by the Panel.

The Panel does find that the Complainant’s Trade Marks are sufficiently well known that the Respondent most likely, purposefully registered the disputed domain name and established its business for the purposes of attracting customer’s by creating a likelihood of confusion in their minds with the Complainant’s Trade Marks. The Panel refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and finds here, as there, that “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trademarks”. See also, F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No. D2010-0307.

The fact that the Respondent is operating a business very similar to that of the Complainant is further evidence of this. Moreover, it appears that the Respondent has engaged in infringing conduct in relation to a third party coffee brand, again supporting such a finding.

Further, while failure to respond to the Complainant’s communications does not constitute bad faith in and of itself, it may be indicative of bad faith on the part of the Respondent. See Advance Magazine Publishers Inc. v. Moniker Privacy Services, Registrant, Registrant info@fashionid.com / Registrant , WIPO Case No. D2009-0801.

Therefore, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating confusion as to the affiliation between the Complainant’s Trade Marks and the Respondent’s website. See e. g, Anheuser-Busch Incorporated v. Gilinda Rogers A/K/A Gilinda Granger, WIPO Case No. D2001-0134; Novartis AG v. Alexander Kravtsov, WIPO Case No. D2010-1157.

It is worth noting that a necessary corollary of such a conclusion is that the Respondent cannot be said to be utilizing the disputed domain name in connection with a bona fide offering of services.

Finally, the Complainant submitted that the Respondent also registered the disputed domain name for the purpose of disrupting its business. The Panel does not find that there is sufficient evidence to support this allegation.

In conclusion, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <cafedirekt.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: April 5, 2011