WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. Flying Stingrays Ltd

Case No. D2012-1391

1. The Parties

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

The Respondent is Flying Stingrays Ltd of Schaffenhausen, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <lavazzaespressopoint.com> is registered with DNC Holdings, Inc. (referred to below as “disputed domain name”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2012. On July 9, 2012, the Center transmitted by email to DNC Holdings, Inc. a request for registrar verification in connection with the disputed domain name. On July 9, 2012, DNC Holdings, Inc 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 July 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2012.

The Center appointed Christian Schalk as the sole panelist in this matter on August 10, 2012. 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules. The language of the proceedings is English.

4. Factual Background

The Complainant, founded in 1895, is a major Italian coffee producer. With more than 4,000 employees worldwide, several subisidiaries and a wide distribution network, it operates today in more than 90 countries. Worldwide sales amounted in 2009 up to EUR 942 million.

In 1989, the Complainant created the first closed espresso system for offices and small communities under the name “Lavazza Espresso Point”. In such a system, the coffee, packed in cartridges or capsules, as well as the corresponding coffee machines are provided by the Complainant. In this context, the Complainant has sold annually 1.5 billion cartridges, 2 billions capsules and over 2 million machines worldwide.

The Complainant has a strong presence in the media through marketing campaigns and through its Lavazza Calendar.

Among others, the Complainant holds the following trademark rights:

- International Trademark registration No. 317174 for the wordmark LAVAZZA, registration date July 18, 1966, covering goods and services in Int. Classes 29, 30 and 31;

- International Trademark registration No. 450754 for the wordmark LAVAZZA, registration date March 10, 1980, covering goods and services in Int. Class 21;

- International Trademark registration No. 644146 for the wordmark LAVAZZA, registration date October 23, 1995, covering goods and services in Int. Class 42;

- International Trademark registration No. 553848 for the wordmark LAVAZZA ESPRESSO POINT, registration date May 3, 1990, covering goods and services in Int. Classes 11 and 21;

- International Trademark registration No. 915267 for the wordmark LAVAZZA ESPRESSO POINT, registration date January 25, 2007, covering goods and services in Int. Classes 9, 11 and 30.

The Complainant owns also several hundreds of domain names containing the term “Lavazza” in order to link them with its website where the Complainant promotes its products and informs its customers on Italian espresso and on Italian culture. Also the terms “espressopoint” and “lavazzaespressopoint” are registered as domain names under many generic Top-Level Domains (gTLDs) and country code Top-Level Domains (ccTLDs) such as <espressopoint.com> and <lavazzaespressopoint.ch> for the purpose of promoting the Complainant’s closed espresso system.

The Respondent registered the disputed domain name on November 8, 2005. The disputed domain name is linked with a website where it is written like a headline on the top of this website. Below, there is a list of links in the central part of the website such as “Cerchi fornitori Caffee”, “Ricambi macchine Lavazza” where Internet users are redirected to third commercial websites offering the Complainant’s products for sale.

In the middle of this list there is the following link:

“Nespresso®

Scopri is segreto delle capsule Nespresso®: uniche e inimiatbile.

www.Nespresso.com”

(Translation: Discover the secret of the Nespresso® capsule: unique and inimitably)

Internet users clicking on this link are apparently directed to the official website of the Nespresso brand. Since closed espresso systems are used in our days in many offices, company restaurants and coffee bars, it is a well-known fact that Nespresso is a major competitor of the Complainant.

On the rights side of this website, further links are displayed, such as “Machine lavazza blue”, “Capsules Lavazza point”, “Dosette Lavazza Blue” and “Lavazza espresso” which are redirected to other pay-per-click pages containing links related to coffee, coffee capsules and machines. Internet users are either directed to the official website of the Complainant or to third commercial websites offering the Complainant’s products.

On July 22, 2011, the Complainant through its legal representative, sent a cease and desist letter to the holder of the disputed domain name requesting to inactivate the website to which the disputed domain name resolves and to transfer it to the Complainant. However, the Respondent did not provide any response neither to this letter nor to the reminders sent to it on September 2, 2011 and on March 1, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is identical to or entirely contains trademarks in which the Complainant has rights. The Complainant argues in this context, that the word “Lavazza” is not descriptive and that in the light of the distinctiveness of the Complainant’s trademarks and of the use the Respondent was and is making of the same trademark on its corresponding website, it is apparent that the Respondent chose the disputed domain name in bad faith to profit from the reputation of the Complainant.

The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use of the disputed domain name in connection with a bona fide offering of goods and services before any notice of the dispute. The Complainant argues that given the high distinctiveness of its trademarks for coffee and coffee machines, the Respondent is intentionally profiting from the Complainant’s well-known character of its trademarks.

The Complainant believes also that the use of the disputed domain name via a redirection to a website where online services of third parties are advertised and sponsored links are published, cannot be considered as a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain, also in view of the fact that the Respondent and/or the concerned Registrar are gaining income from the click-through commissions on the sponsored links.

The Complainant contends also that the Respondent is not commonly known by the disputed domain name as an individual, business or other organization and that the term “Lavazza” is not a family name of the Respondent. Furthermore, the Complainant contends that the Respondent is also neither a licensee nor an authorized agent of the Complainant nor in any other way authorized to use the Complainant’s trademarks LAVAZZA and LAVAZZA ESPRESSP POINT. In this context, the Complainant cites Pharmacia & Upjohn Company v. Moreonlone, WIPO Case No. D2000-0134 and N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387 in order to support its arguments.

Moreover, the Complainant alleges the disputed domain name was registered and is being used in bad faith. In this context, the Complainant asserts that in the light of its use of the trademark LAVAZZA since as early as 1895 and of the trademark LAVAZZA ESPRESSO POINT since 1989, the Respondent could not have ignored the existence of the trademark registrations identical to the disputed domain name when it was registered by the Respondent. The Respondent concludes therefore, that the Respondent was aware of the Complainant or should have known of the existence of the Complainant. In this context, the Complainant cites The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran, WIPO Case No. D2002-0770; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 and Luigi Lavazza S.p.A. v. Satoshi Shimoshita, WIPO Case No. D2011-1299 to support its arguments.

The Complainant argues also that the Respondent uses the disputed domain name in bad faith since it is redirected to web pages where Internet users can find a number of sponsored links to various websites and that the Respondent, as a result, earns commission whenever Internet users visit the Respondent’s website and click on one of the sponsored links. To support this argument, the Complainant cites a number of Panel decisions, for instance, Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610; Procter & Gamble Company v. Names2000.com, WIPO Case No. D2010-0357 and Luigi Lavazza S.p.A. v. Satoshi Shimoshita, WIPO Case No. D2011-1299.

Furthermore, the Complainant claims that an additional indication for bad faith is that the Respondent used a WhoIs protection service for the registration of the disputed domain name, which per se does not constitute a bad faith use, but is at least an indication as to the intentions of a domain name holder. The Complainant refers in this context to Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 and Express Scripts Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302.

The Complainant believes also that the Respondent’s failure to respond to a cease and desist letter can be evidenced of bad faith and cites Societe des Produits Nestle SA v. Deleting domain, Umbeke Membe, WIPO Case No. D2008-0738 and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743 to support this argument.

B. Respondent

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

6. Discussion and Findings

The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, the disputed domain name can be transferred only where the Complainant has proven that each of the following three elements is present:

(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.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in LAVAZZA and LAVAZZA ESPRESSO POINT. The disputed domain name fully contains the term “Lavazza Espresso Point” and therefore, it is identical to the latter trademark.

The “com” gTLD suffix in the disputed domain name does not affect the determination that the disputed domain name is identical to the LAVAZZA ESPRESSO POINT mark in which the Complainant has trademark rights (see also: Compagnie Générale des Etablissements Michelin v. Trending, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein).

For all these reasons the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds also that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:

The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.

The Respondent has also not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the disputed domain name. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g.Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554) by directing the disputed domain name to its own website where it provides a number of sponsored links, which relate also to competitor products to those offered by the Complainant in addition to a number of sponsored links related to products such as coffee and espresso machines. The Panel believes that the only reason why the Respondent registered and used the disputed domain name was to redirect Internet traffic intended for the Complainant away from it to the Respondent’s website with the intention to create income for the Respondent. In addition, the Respondent continued this behaviour even after the Complainant had sent a cease and desist letter to it.

The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the disputed domain name, and finds that the requirement of paragraph 4(a)(ii) of the Policy is also met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which are evidence of bad faith registration and use of domain names:

(1) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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 name; or

(2) the Respondent has registered the domain name 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

(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location of a product.

According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and is being used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party.

Given the fact that the Complainant was a very well-known producer of coffee products already well before the time when the Respondent registered the disputed domain name, that the disputed domain name is directed to a website which provides also links to the Complainant’s main website and that some of the Complainant’s machines are mentioned there, the Panel finds that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name (see, Luigi Lavazza S.p.A. v. Satoshi Shimoshita, WIPO Case No. D2011-1299; Gianni Versace S.p.A. v. Nicolino Colonelli Europel SRL, WIPO Case No. D2008-0570 and Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain name in bad faith.

The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.

The Respondent registered the disputed domain name, which fully contains the Complainant’s trademark LAVAZZA ESPRESSO POINT. Given the fact that the Complainant is a well-known company in the field of coffee products and that it markets a closed espresso system under this trademark, it is very likely that Internet users believe that they get directed to a website of the Complainant. In this context, it has to be mentioned that Internet users, who search for products and/or services of a specific company or for the Complainant’s coffee products, do often type in their browsers freestyle addresses that combine the name of the company (Lavazza) and descriptive words (for instance, “espresso”) hoping to narrow down their search results. Subject of the links provided on the website to which the disputed domain name resolves, are services which are offered by the Complainant but also those of the Complainant’s competiors. Furthermore, the likelihood for confusion is extremely high because the Complainant owns not only several Lavazza-domain names under the gTLD “.com” (like e.g. <lavazza.com>, <lavazzablue.com>, <lavazzaespression.com>, <lavazza-espression.com>, <lavazzalive.com>, <lavazzaqualitaoro.com> and <lavazzaqualitarossa.com>) but also the domain name <espressopoint.com>, several domain names containing the terms “lavazza” and “espresso” (e.g. <lavazzaespresso.info> and <lavazzaespresso.org>) and also domain names only consisting of the term “Lavazza Espresso Point” under more than 100 ccTLDs including the ccTLD “.ch” which stands for Switzerland where the Respondent apparently lives.

All this could lead Internet users to believe that this website is either maintained by the Complainant or by a third person who is somehow linked with the Complainant and that everything they do will be at the end to the benefit of the Complainant and not of the Respondent.

The Panel believes that the Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal (see also Humana Inc. v. Domain Deluxe, WIPO Case No. D2005-0231). Furthermore, the Respondent’s behaviour may also enable others, especially a main competitor of the Complainant, to take advantage of the fact that Internet users are directed to their website instead of the Complainant’s website. The only reason for this would be the use of the Complainant’s trademark rights by the Respondent which allows apart from the Respondent also third parties to reap the profit of such wrongful conduct (see also Luigi Lavazza S.p.A. Satoshi Shimoshita, WIPO Case No. D2011-1299; The Proctor & Gamble Company v. Names2000.com, WIPO Case No. D2010-0357 and Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912). Therefore, the Panel believes that the only purpose of doing this was to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In the Panel’s opinion, another indication for bad faith use in the present circumstances is that the Respondent has not responded to the Complainant after receipt of the Complainant’s cease and desist letter but continued its behaviour even after the Complainant had filed its Complaint with the Center (see e.g.Societe des Produits Nestle SA v. Deleting domain, Umbeke Membe, WIPO Case No. D2008-0738).

It is the same with the fact that the Respondent used a WhoIs protection service for the registration of the disputed domain name. The only reason the Panel can imagine why the Respondent used such a WhoIs protection service is to increase the difficulty for the Complainant, to identify and contact the Respondent and therewith to frustrate the purposes of the Policy or make it more difficult for the Complainant to protect its trademarks (Express Scripts, Inc., v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743).

Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain name has been registered and is being used in bad faith.

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 <lavazzaespressopoint.com> be transferred to the Complainant.

Christian Schalk
Sole Panelist
Dated: August 24, 2012