Complainant is Caffè Borbone S.r.l., Italy, (hereinafter “Complainant”) represented by Società Italiana Brevetti S.p.A., Italy.
Respondent is Mei Ying Lin, Philippines (hereinafter “Respondent”).
The disputed domain name <borbonecoffe.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2021. On May 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 11, 2021, 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 Complainant on May 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 24, 2021.
The Center verified that the Complaint together with the amended 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 May 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 22, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on July 1, 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.
Complainant, founded in 1997 in Naples, is a leading Italian company in the coffee industry. Complainant is one of the Italian market leaders, producing approximately 96 tons of processed coffee daily in its Italian factories. Complainant’s coffee products are sold all over the world. In 2020 Complainant won the Business Excellence Award sponsored by the Italian Stock Exchange, and Complainant has been acknowledged as one of the primary Italian players in the portioned coffee sector (compatible capsules and pods). Complainant is the second most memorable brand in Italy. Complaint, Annex 5.
Complainant owns numerous trademarks for BORBONE and CAFFE BORBONE in several jurisdictions including Italy, the European Union, and the United States of America, whose registrations date back as early as September 6, 2003. Complaint, Annexes 6 and 7.
Complainant is also the owner of several domain names, most of which either resolve to Complainant’s main corporate web site or redirect to that site. Annexes 8 and 9.
Respondent registered the disputed domain name on June 11, 2020. Complaint, Annex 1. The disputed domain name is being used to link to a web site at “Kenya-caffe.myshopify.com”, on which are sold different kinds of coffee products, capsules, coffee machines, and related products bearing the trademark LORE CAFFE, an Italian coffee producer and one of Complainant’s competitors. Complaint, p. 8, (photograph reproduced of web page).
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s BORBONE and CAFFE BORBONNE trademarks. Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant argues that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The disputed domain name consists of Complainant’s trademarked name BORBONE followed immediately by the letters “coffe”. The portion that consists of “coffe” is similar to the English language word “coffee”, descriptive of Complainant’s products. It also suggests that it is a misspelling of the Italian word, “caffe”, which the first word in Complainant’s CAFFE BORBONE trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is using the disputed domain name to ultimately resolve to the web site to which
<kenya-caffe.myshopify.com> resolves, a web site featuring the products of one of Complainant’s direct competitors. Accordingly, the Panel has no difficulty in finding that the disputed domain name has been registered and is being used in bad faith.
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, <borbonecoffe.com>, be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Date: July 11, 2021