WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jacobs Douwe Egberts DE GmbH v. Черевко Михайло Леонідович

Case No. DUA2020-0031

1. The Parties

The Complainant is Jacobs Douwe Egberts DE GmbH, Germany, represented by Ploum, Netherlands.

The Respondent is Черевко Михайло Леонідович, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <jacobstore.com.ua> is registered with 1Gb LLC (ua.1gb). (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2020. On December 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 11, 2021.

On January 8, 2021, the Center sent an email communication to the Parties indicating the registration agreement for the disputed domain name is Ukrainian, and inviting the Parties to submit their preference as to the language of the proceeding. On January 8, 2021, the Respondent submitted its request that Russian or Ukrainian be the language of the proceeding. On January 11, 2021, the Complainant submitted its request that English be the language of the proceeding.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”).

In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was February 9, 2021. The Respondent did not submit a formal response. However, the Respondent sent an informal email communication to the Center on January 30, 2021. On February 11, 2021, the Center informed the Parties that it would proceed to appoint a panel.

The Center appointed Ganna Prokhorova as the sole panelist in this matter on February 24, 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 .UA Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of a large number of trademark registrations worldwide consisting of or including the word element JACOBS, e.g. International trademark registration JACOBS no. 370114, registered in 1970 and designating Ukraine, among others. The JACOBS trademarks are registered and are being used for goods and services in International classes 7, 9, 11, 16, 21, 29, 30, 32, 35, and 43 including coffee and tea makers.

The Complainant owns and operates website at numerous domain names incorporating the JACOBS brand, for instance <jacobscoffee.com>.

The disputed domain name was registered on December 22, 2016. At the time of the Decision, the disputed domain name redirects to the website under another domain name, <coffeestory.com.ua> with similar content offering JACOBS coffee for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the mark JACOBS by virtue of use and registrations. JACOBS is a famous brand in many countries worldwide and the name JACOBS is for the Complainant’s customers synonymous with quality products.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s JACOBS marks.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant adds that there is no evidence of the Respondent’s use or preparations to use the disputed domain name for a bona fide offering of goods or services, or that the Respondent has any legitimate noncommercial or fair use of the disputed domain name.

The Complainant alleges that the disputed domain name was registered and/or is being used in bad faith.

The Complainant seeks a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent sent the following informal email communication to the Center on January 3, 2021:

"Hello! Our domain name is jacobstore com.ua. In translation, Jacob's store. That is, jacob, not jacobs. That is, we do not use the name jacobs."¹

6. Discussion and Findings

Paragraph 4(a) of the .UA Policy binds the Complainant to prove each of the following three elements to succeed:

(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 the disputed domain name; and

(iii) the disputed domain name has been registered or is being used in bad faith.

Given the similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel will refer to UDRP precedents when relevant. The Panel has also taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the consensus views captured therein.

A. Language of the Proceedings

The language of the Registration Agreement for the disputed domain name is Ukrainian.

Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous .UA panels, paragraph 11 of the .UA Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the .UA Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., Chewy Inc v. Rostislav Karyi / Ростислав Карый, WIPO Case No. DUA2020-0003, Crocs, Inc. v. Матвеева Анжела Геннадьевна / Matveeva Angela, WIPO Case No. DUA2020-0015).

The Complainant has filed the Complaint in English and requested English to be the language of the proceeding. The Complainant contends that the Respondent must be familiar with the English language, since (1) “the [disputed domain name] entirely incorporates (albeit with a deliberate misspelling) a well-known brand which consist solely of Latin characters: JACOBSTORE. This shows that the Respondent is familiar with the brand which is not of Ukrainian origin”, and (2) “a consumer is able to choose the English language while visiting the website behind the [disputed] domain name. In other words, it is obvious that the respondent must be able to understand the English language”. Therefore, the Complainant believes that the Respondent is familiar with the English language, and it would be in fairness to both Parties for the proceeding to be held in English as appropriate language of this proceeding.

The Respondent objected to the Complainant’s request requesting either Russian or Ukrainian as the language of the proceeding, saying the following: “Hello, I do not understand anything. Everything is written in English; I have been selling coffee on this site for more than four years. Write some questions on the site. And why was not asked before. I’m retired and I’m making some pennies selling this coffee, because you cannot live in retirement. If they have questions, then let them proceed only in Ukrainian or Russian.”²

The Panel is familiar with all three languages, English, Russian, and Ukrainian.

Whilst there is a language requirement that is provided for in paragraph 11(a) of the .UA Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the Parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the Parties or undue delay (see, e.g., Michael Kors (Switzerland) International GmbH. v. Minakova Maria, WIPO Case No. DUA2020-0002; AB Electrolux v. Name Servis, Александр Шевчук, WIPO Case No. DUA2020-0011).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

In this case, the Panel is proficient in both Ukrainian and English and the circumstances of this case show that the Respondent is capable of understanding English since the website under the disputed domain name was fully translated into English and consumers were able to choose English language to surf through the website.

The Panel also notes that the Center has sent all of its email communications to the Parties in both languages English and Ukrainian. The Panel also finds that substantial additional expense and delay would likely be incurred if respective filings in the case would be ordered to be further translated.

Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the registered trademark JACOBS.

According to paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights.

The Complainant’s has proved rights in the JACOBS trademark worldwide, in particular, though the registered International registrations designating Ukraine that predate the registration of the disputed domain name by decades.

Therefore, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights.

The Panel also confirms that the disputed domain name is confusingly similar to the Complainant’s JACOBS trademarks.

The disputed domain name <jacobstore.com.ua> consists of the Complainant’s trademark JACOBS, the dictionary word “store”, with the omission of the letter ‘s’, and the country code Top-Level Domain (“ccTLD”) suffix “.com.ua.”

Based on section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Therefore, the Panel disregards this element for the purposes of this comparison.

Furthermore, the Panel notes that disputed domain name incorporates the Complainant’s trademark JACOBS in its entirety.

Notwithstanding that the disputed domain name contains the word “store” with a single letter “s” after the Complainant’s trademark JACOBS, which is obviously a misspelling, the Panel believes that according to a side-by-side comparison of the disputed domain name and the textual components of the JACOBS trademark, the disputed domain name features the Complainant’s JACOBS registered trademark in its entirety and, thus, that the Complainant’s JACOBS registered trademark is recognizable within the disputed domain name. In view of the above, the Panel believes that the addition of the dictionary word “store” does not prevent a finding of confusingly similarity under the first element of the .UA Policy.

Based on the foregoing, the disputed domain name is clearly confusingly similar to the Complainant’s JACOBS trademark.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the .UA Policy.

C. Rights or Legitimate Interests

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

Under paragraph 4(a)(ii) of the .UA Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

While the overall burden of proof in .UA proceedings is on the complainant, the Panel recognizes 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 a prima facie case 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, e.g. LEGO Juris A/S v. Anton Obrezkov, WIPO Case No. DUA2020-0001).

The Complainant has made a prima facie case that the Respondent lacks any right or legitimate interest in the disputed domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use the JACOBS trademark or to register a domain name incorporating the JACOBS trademark. According to the Complainant, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers or to tarnish the JACOBS trademark. Firstly, the Respondent is not an authorized distributor or reseller of the JACOBS coffee. Secondly, the website under the disputed domain name does not meet the requirements set out by numerous .UA panel decisions for a bona fide offering of goods. Therefore, the Panel agrees that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Moreover, the Panel agrees that the Respondent cannot claim nominative fair use of the disputed domain name because the Respondent’s use does not meet the criteria in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The criteria laid down in this case and described in WIPO Overview 3.0 at section 2.8.1 (the Oki Data Test) have been widely adopted and cited by .UA panels to address “the difficult question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name.” The Oki Data Test has also been repeatedly applied by .UA panels in the context of unauthorized resellers. Here, the Respondent is not an authorized sale or service agent for the Complainant, and the Respondent’s use of the disputed domain name fails to meet the third criterion of the Oki Data Test, which requires the website to accurately disclose the Respondent’s relationship with the Complainant. The website found at the disputed domain name has no visible disclaimer stating that the website is neither endorsed nor sponsored by the Complainant to explain the non-existing relationship with the trademark holder (see also LEGO Juris A/S v. Anton Obrezkov, WIPO Case No. DUA2020-0001). Furthermore, the Respondent states to be the official representative of the Complainant in Ukraine and notes to be in direct contact with the Complainant, which it is clearly not.

In addition, the Respondent, prominently and without authorization presents the Complainant’s old but registered JACOBS trademark, where consumers will usually expect to find the name of the online shop.

The website further uses the Complainant’s official product images without authorization. This illegitimate use of the Complainant’s images, the use of the JACOBS trademark on the website and the false claims further supports the false impression, that the website is endorsed by the Complainant, which it is not. The website does not provide any information regarding the real identity of the owner of the website.

Taking the above into consideration, Internet users are clearly misled regarding the relationship between the website and the Complainant and will falsely believe that the website under the disputed domain name is owned by an official representative of the Complainant. Such use of the disputed domain name cannot be considered a bona fide offering of goods and does not establish a legitimate interest on behalf of the Respondent.

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the .UA Policy.

D. Registered or Used in Bad Faith

The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

According to paragraph 4(a)(ii) of the .UA Policy it should be established that the disputed domain name has been registered OR is being used in bad faith.

Although it is sufficient to prove registration of the disputed domain name or its use in bad faith, the Panel is convinced that the Respondent has both registered and is using the disputed domain name in bad faith.

It is evident from the Respondent’s use of the disputed domain name that the Respondent knew of the Complainant and the JACOBS trademark when registering the disputed domain name, which in itself leads to a finding of bad faith (e.g. Купервіжн Інтернешнл Холдінг Компані ЛП v. Тетяна Зарова/ Tetiana Zharova, WIPO Case No. DUA2020-0003).

It is also evident from the Respondent’s use of the disputed domain name that the Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the JACOBS trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith.

As it has already been established by the Panel during evaluation of the second element above, by reproducing the JACOBS trademark in the disputed domain name and on the website and by claiming to be the official representative of the Complainant, the Respondent clearly suggests to be an affiliated dealer of the Complainant, which it is not true to fact. This suggestion is further supported by the Respondent’s use of the Complainant’s official product images.
All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the .UA Policy.

7. Decision

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

Ganna Prokhorova
Sole Panelist
Date: March 10, 2021

¹ Informal translation from Russian made by the Panel

² Informal translation from Russian made by the Panel