WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. Jo Suyong, LB Korea Co. LTD

Case No. D2019-2304

1. The Parties

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

The Respondent is Jo Suyong, LB Korea Co. LTD, Republic of Korea, represented by Nexus Law Group, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <lavazzavending.com> (“Domain Name”) is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2019. On September 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2019, 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.

On September 27, 2019, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed Domain Name is Korean. On the same day, the Complainant requested for English to be the language of the proceeding. On October 2, 2019, the Respondent requested for Korean to be the language of the proceeding.

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 in English and Korean of the Complaint, and the proceedings commenced on October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. On October 24, 2019, the Respondent requested an automatic four-day extension of the deadline to file a Response. The Center granted the requested extension pursuant to paragraph 5(b) of the Rules and confirmed that the new deadline for Response was November 1, 2019. The Response was filed with the Center on November 1, 2019.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 25, 2019. 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, Luigi Lavazza S.p.A., founded in 1895, is a major Italian coffee producer. With more than thousands of employees worldwide, several local subsidiaries and a wide distribution network, it operates today in more than 90 countries. The global sales volume amounted to EUR 1.87 billion in 2018 and on a European level, Lavazza becomes one of the top 50 brands in terms of presence and recognition.

Today, the Lavazza Group consists of about 30 companies managed directly or indirectly by the parent company Luigi Lavazza S.p.A., and direct foreign subsidiaries mainly deal with the distribution and marketing of products and coffee machines. The Complainant has a strong presence in the media through marketing campaigns and through its Lavazza Calendar, and the Complainant’s sales volume in the Republic of Korea amounted to over EUR 2 million in 2018.

Among others, the Complainant holds the following trademark rights:

- International Trademark registration No. 1186133 for the word mark LAVAZZA, registered on July 29, 2013, and designating also Republic of Korea, in classes 7 and 11;

- International Trademark registration No. 1299219 for LAVAZZA, registered on February 23, 2016, and designating also Republic of Korea, in classes 11 , 30, and 43;

- International Trademark registration No. 809577 for LAVAZZA BLUE, registered on June 5, 2003, and designating also Republic of Korea, in classes 9, 11, and 30;

- National Trademark registration in Republic of Korea No. 0361580 for LAVAZZA (word mark), registered on April 16, 1997 and duly renewed, in classes 30 and 32;

- National Trademark registration in Republic of Korea No. 4101156400000 for LAVAZZA (word mark), registered on April 28, 2005 and duly renewed, in classes 43;

- European Union Trademark registration No. 000317057 for LAVAZZA (word mark), registered on May 25, 1998, in classes 21, 30, and 42.

The Complainant registered its official website “www.lavazza.com” on May 19, 1996 to promote its products and inform its customers on Italian espresso and on Italian culture. The Complainant also owns several hundreds of domain names containing the term “Lavazza” in order to protect and promote the LAVAZZA trademark and products.

The Domain Name <lavazzavending.com> was registered by the Respondent on October 7, 2015, and the website features the Complainant’s figurative trademarks and visuals and promotes the sale of LAVAZZA products.

The Respondent was an authorized distributor of the Complainant’s LAVAZZA products (by virtue of a distribution agreement dated in 2020). The Complainant terminated the Exclusive Distribution Contract with the Respondent with effect as of January 1, 2018 by sending a Termination Letter dated September 21, 2017, and the Termination Letter requested the Respondent to transfer the Domain Name.

On September 19, 2016, the Complainant sent a cease and desist letter to the Respondent notifying the infringement of the Complainant’s rights through the registration and use of the Domain Name. Two reminders of such cease and desist letter were sent on April 14, 2017, and June 23, 2017; however, the Respondent did not provide any response.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because i) the Respondent is no longer an authorized reseller of the Complainant’s products due to termination of the distribution agreement by the Complainant; ii) Clause 4.07 of the Exclusive Distribution Contract (“Distribution Agreement”) prohibited the Respondent’s registration of domain names which could be confusingly similar to the Complainant’s marks; iii) the Respondent is not commonly known by the Domain Name or the name “Lavazza Vending”; and iv) there is no evidence of the Respondent’s 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.

The Complainant also contends that the Respondent registered and is using the Domain Name in bad faith because the Respondent (i) intentionally registered and is using the Domain Name 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 or affiliation of the Respondent’s website; (ii) failed to cease using the Domain Name after the termination of the Distribution Agreement and receiving the Complainant’s cease and desist letter; and (iii) was fully aware of the Complainant’s reputation and well-known trademarks.

B. Respondent

The Respondent denies the Complainant’s contentions. It contends that it has rights or legitimate interests in respect of the Domain Name in that it acquired permission by the Complainant’s Asia Pacific Regional Manager to register the Domain Name for the Complainant. The Respondent also alleges that (i) the Distribution Agreement was not terminated properly and (ii) the Domain Name is required to continue to operate coffee machine business even in case of the termination of the Distribution Agreement. The Respondent also contends that the Domain Name has not been registered and used in bad faith because the Respondent did not register the Domain Name (i) to sell it to the Complainant; (ii) to prevent the owner of the trademark from reflecting the mark in a corresponding domain name; (iii) to disrupt the business of a competitor; or (iv) to attract Internet users to its website for commercial gain.

6. Discussion and Findings

A. Language of the Proceeding

Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the Parties, subject to the authority of the Panel to determine otherwise.

In this case, the language of the Registration Agreement is Korean. However, in determining the language of the proceeding in the present case, pursuant to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers the following points:

(i) during the pre-Complaint communications, the Parties exchanged correspondence and executed the Distribution Agreement in English, which indicate the Respondent’s familiarity with English; (ii) English words are used on the corresponding website “www.lavazzavending.com”; (iii) the Panel is familiar with both English and Korean, capable of reviewing all the documents and materials in both languages and able to give full consideration to the Parties’ respective arguments; and (iv) ordering the Complainant to translate the Complaint in Korean will cause undue delay and expense in the process.

In light of the aforementioned circumstances, the Panel finds that there will be no prejudice against the Respondent as a result of the Complainant’s submission in English. Thus, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.

B. Identical or Confusingly Similar

The Domain Name <lavazzavending.com> incorporates the Complainant’s LAVAZZA trademark in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0; see also, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, “When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy.” Moreover, the generic Top-Level Domain (“gTLD”), such as “.com,” is normally disregarded during the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.

In this case, in the Domain Name, suffix “vending” and the gTLD “.com,” are attached to the Complainant’s LAVAZZA trademark. However, the term “vending” is a dictionary term and it does not prevent a finding of confusing similarity between the Complainant’s trademark and the Domain Name. See Sonera Ojyand Telia AB (Publ.) v. Daungsoo Ghim, WIPO Case No. D2002-0403; see also, JanSport Apparel Corp v. Feng Qi, WIPO Case No. D2017-1486, “The mere addition of the descriptive terms to the Complainant’s EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant’s registered trademark EASTPAK and the disputed domain names.” Moreover, the mere addition of the gTLD “.com” also does not eliminate confusing similarity because gTLD is viewed as a standard registration requirement as the “use of a gTLD is required of domain name registrants.” See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.

Therefore, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

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

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In this case, after reviewing the assertions made in the Complaint and Response thereto, it appears that the Complainant did not give the right to use its trademarks to the Respondent. The Respondent contends that it has notified its registration of the Domain Name to the Asia Pacific Regional Manager of LAVAZZA, and he permitted the Respondent to register and use the Domain Name. However, there is no (i) written evidence of his “permission” and (ii) written evidence that he was authorized to provide such permission. Moreover, Clause 4.07 of the Distribution Agreement expressly prohibits the Respondent to register the domain name which could be confusingly similar to the Complainant’s marks. Although the Respondent alleges that the Complainant has a policy of permitting the registration of the domain name despite the Clause 4.07 of the Distribution Agreement, no written evidence was provided to substantiate this alleged claim. The Panel thus believes that no actual bona fide or legitimate use of the Domain Name could be claimed by the Respondent.

The fact that the Complainant’s website on September 27, 2017 included a link to the Respondent’s website at a domain name different to the Domain Name, under the section “Distributor Korea”, does not alter the Panel’s conclusion on the Respondent’s conduct.

In addition, the Respondent alleges that it has used the Domain Name to operate a website that purports to advertise LAVAZZA coffee machines and sell the Complainant’s coffee capsules under the Complainant’s permission. It also contends that the Domain Name is required to continue to operate its coffee machine business even in case of the termination of the Distribution Agreement. However, the Panel finds that such use is highly commercial, and the Respondent can still operate its coffee machine business without operating the website with the Domain Name. The Panel thus believes the reason why the Respondent registered and used the Domain Name even after the termination of the Distribution Agreement was to induce Internet users to believe that the website with the Domain Name is controlled by or associated with the Complainant (and sell the Complainant’s products), whilst this has not been the case since the termination of the Distribution Agreement towards the end of 2017. Thus, there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.

Lastly, the Panel finds that the Respondent is not commonly known by the Domain Name or the name “Lavazza,” as the Respondent’s official name is “LB Korea.”

In light of the above analysis, the Panel doubts as to the legitimacy of the Respondent’s registration and continuous use of the Domain Name, and finds that the Respondent lacks rights or legitimate interests in the Domain Name.

D. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that bad faith is found when there are circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.

It is generally accepted under the Policy that, for a bad faith registration, (i) the Respondent must have been aware of the Complainant or its trademarks when it registered the Domain Name, and (ii) the registration must in some way have been targeted at the Complainant or its trademark, for example, by seeking to capitalize on it. See The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 and Mediaset S.p.A. v. Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954.

Given that the Respondent entered into a distribution agreement with the Complainant before the registration of the Domain Name, the Respondent was aware of the rights the Complainant has in the trademark, and the value of the said trademark, at the point of the registration. The Panel notes the express prohibition of registering domain names contained in the distribution agreement. Despite such prohibition, the Respondent registered the Domain Name which leads to a conclusion of bad faith. The fact that the Respondent publishes images taken from the Complainant’s advertising campaigns and promotes the sale of LAVAZZA products on the website with the Domain Name is a clear indication of bad faith.

Moreover, the Respondent’s failure to cease using the Domain Name after receiving the Complainant’s (i) termination letter and (ii) cease and desist letter shows the Respondent’s intent to use the Domain Name in bad faith as the Domain Name is currently redirected to a website featuring the Complainant’s trademarks and promoting the sales of LAVAZZA products without disclosing the true relationship between the parties – namely, that the Respondent was not (any longer) an authorized distributor of the Complainant’s products. Thus, the Panel considers that the Respondent’s use of the Domain Name following termination of the Distribution Agreement was an attempt to attract Internet users to the Respondent’s website for commercial gain by creating confusion.

For the reasons above, the Panel finds that the Respondent registered and used the Domain Name 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 Domain Name <lavazzavending.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Date: December 9, 2019