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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moffat Pty Ltd v. Sienna Coffee BN97979311

Case No. DAU2020-0017

1. The Parties

The Complainant is Moffat Pty Ltd, Australia, represented by Herbert Smith Freehills, Australia.

The Respondent is Sienna Coffee BN97979311, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <rancilio.com.au> is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2020. On August 12, 2020, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On August 14, 2020, Web Address Registration Pty Ltd 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 September 1, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2020. On September 21, 2020, the Respondent sent an email communication to the Center requesting an extension in which to submit its Response. The Response due date was extended to October 2, 2020. The Respondent submitted an informal email communication on October 4, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on October 26, 2020. 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 a distributor in Australia for Rancilio Group S.P.A.’s range of goods, including coffee machines which are sold under the RANCILIO brand. Rancilio Group S.P.A. owns various Australian trade mark registrations that incorporate the word mark RANCILIO, including combination logo/word mark registration number 382384, registered from October 12, 1982, and word mark registration number 1917113 registered from November 20, 2017. The Complainant owns the registered Australian business names Rancilio (registered on June 23, 2020 under ABN 90070810721), Rancilio Group (registered on June 23, 2020 under ABN 90070810721), and Rancilio Australia (registered on June 23, 2020 under ABN 90070810721).

The disputed domain name was registered on October 20, 2003. As at the date of filing it resolves to page that is “under construction”. The Respondent’s business is in the coffee industry.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the exclusive distributor and licensee in Australasia of Rancilio Group S.P.A.’s range of goods, including coffee machines sold under the RANCILIO brand and relies upon a copy of an internal email by the CEO of Rancilio Group S.P.A confirming that the Complainant is its Australasian distributor. The Complainant says that the disputed domain name is identical or confusingly similar to the RANCILIO trade mark registrations owned by Rancilio Group S.P.A. In addition, the Complainant notes that it owns registered Australian business names for, or incorporating, the “Rancilio” name as set out above and has provided extracts of these registrations.

The Complainant says the Respondent is not known by or with reference to the trade mark RANCILIO, but rather by SIENNA COFFEE under which it trades in Australia. It says that Rancilio Group S.P.A. is the only owner of a registered trade mark in Australia which contains the word RANCILIO and the Complainant has provided a search extract from the Australian Trade Mark register in support of this assertion. It adds that the Respondent has not been authorised to use the trade mark RANCILIO in the disputed domain name by Rancilio Group S.P.A. The Complainant further asserts that the disputed domain name was not registered and is not being used in connection with a bona fide offering of goods or services, nor is there any evidence to indicate that the Respondent has made any demonstrable preparations to use the disputed domain name for a legitimate purpose. It says that the disputed domain name currently resolves to a “network error page” and that archived extracts from the Wayback Machine indicate that it has never been used by the Respondent. Finally, it says that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

As far as registration in bad faith is concerned, the Complainant submits that the Rancilio Group has acquired a very substantial reputation in its RANCILIO branded coffee machines in Australia over a period of many years, having originally commenced business in Italy in 1927 and grown to be a leading manufacturer globally of espresso machines. It notes that the RANCILIO brand of coffee machine is considered one of the highest quality machines on the market and based on these facts submits that the Respondent, a commercial player in the coffee market, must have been aware of the RANCILIO brand when it registered the disputed domain name in 2003. In support of this assertion, the Complainant has provided a copy of an extract from the Respondent’s website at “www.siennacoffee.com.au” from December 28, 2004 in which the Respondent purports to sell RANCILIO branded products.

As far as use in bad faith is concerned, the Complainant submits that the Respondent’s non-use of the disputed domain name amounts to a passive holding in bad faith. It says further that the Respondent’s failure to respond to its letter of demand sent on July 23, 2020 or to respond to its various telephone calls is further evidence of bad faith. It also asserts that the Respondent has taken various steps to conceal its identity, including by amending the Registrant Contact Name and Tech Contact Name in respect of the disputed domain name to “Kim Vd” from “Kimberley Van Der Meulen”, following a phone call to the Respondent on July 31, 2020 during which the Complainant’s representatives requested Kimberley Van Der Meulen’s contact details. The Complainant says that the Respondent subsequently purchased a privacy service, which had the effect of concealing the Tech Contact Name but restored the Registrant Contact Name to its original form, being Kimberley Van Der Meulen. The Complainant suggests that the Respondent is unlikely to be aware that it is not possible to conceal the Registrant Contact Name for .com.au domain names and erroneously thought that the Registrant Contact Name would also be concealed at the time the original name was restored.

B. Respondent

The Respondent did not file a formal response. However, it did make a short submission in its email of October 4, 2020, in which it confirmed that “Sienna Australia Pty Ltd is the registered owner of rancilio.com.au NOT sienna coffee as claimed by Moffat”.

It also noted in its email as follows:

“Sienna Australia operates in Australia and other parts of the world in different industries.

Which include.
Sienna coffee as a service agency
Rancilio as a Project Management agency

In Australia as a management facilitator there is no copyright infringement on the Rancilio logo as used by the Italian manufacturer of espresso machines.

Ranciilo Project Management logo attached.

Logo was checked and tested for similarity and found to be significantly different as not to cause confusion.

Rancilio as Project Management facilitator is not operating in the same industry as Moffat.

Sienna Australia pty ltd reserves the right as registered owner to use rancilio.com.au to promote its business.”

6. Discussion and Findings

Although the disputed domain name is registered under the business name “Sienna Coffee” and this was confirmed by the response to the Center’s registrar verification request, it appears to the Panel that, at the date of filing of the Complaint, the legal entity trading as “Sienna Coffee” is Sienna Australia Pty. Ltd. The Panel notes evidence of this in the historical company search details for Sienna Australia Pty. Ltd. submitted in support of the Complaint and the Respondent’s assertion in its email of October 4, 2020 that “Sienna Australia Pty Ltd is the registered owner of rancilio.com.au NOT sienna coffee as claimed by Moffat”.

A. Identical or Confusingly Similar

Under Section 4(a) (i) of the Policy the Complainant must demonstrate that the disputed domain name is identical or confusingly similar to a name, trade mark, or service mark in which the Complainant owns rights. “Name” has been determined, for the purposes of the Policy, as including the Complainant’s company, business or other legal trading name as registered with the relevant Australian government authority.

The Complainant has demonstrated that at the date of filing of the Complaint it owns the registered Australian business names, Rancilio (registered on June 23, 2020 under ABN 90070810721), Rancilio Group (registered on June 23, 2020 under ABN 90070810721) and Rancilio Australia (registered on June 23, 2020 under ABN 90070810721). The disputed domain name incorporates the RANCILIO name and mark and is either identical or confusingly similar to each of these registered business names.

Accordingly, it is unnecessary to consider the scope or validity of the Complainant’s distributorship rights in RANCILIO products and trade marks in Australia and the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not known by the name or trade mark RANCILIO, but rather by Sienna Coffee under which the Respondent trades in Australia. It maintains that Rancilio Group S.P.A. is the only owner of a registered trade mark in Australia which contains the word “Rancilio”. The Complainant has provided a search extract from the Australian Trade Mark register in support of this assertion.

The Complainant has further asserted that the Respondent has not been authorised to use the trade mark RANCILIO in the disputed domain name by Rancilio Group S.P.A. It says rather that the Complainant is the exclusive distributor of the Rancilio Group’s products in Australia.

The Complainant further asserts that the Disputed Domain Name was not registered and is not being used in connection with a bona fide offering of goods or services, nor is there any evidence to indicate that the Respondent has made any demonstrable preparations to use the disputed domain name for a legitimate purpose. The Complainant has noted that the disputed domain name currently resolves to a “network error page” and has submitted archived extracts from the Wayback Machine that indicate that it has never been used by the Respondent. Finally, it says that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that the Complainant has made out a prima facie case that at the date of filing the Complaint the Respondent had no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this case. As a result, the Panel finds that the Complaint also succeeds under this element of the Policy

C. Registered or Subsequently Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy the Complainant must demonstrate that the Respondent has registered orused the disputed domain name in bad faith. Notably there is no conjunctive requirement in this limb of the Policy as there is under the UDRP Policy.

The Panel notes that the RANCILIO mark is very distinctive. The Complainant submits that the RANCILIO brand commenced in Italy in 1927 and has grown to be a leading manufacturer globally of espresso machines. It says that the RANCILIO brand of coffee machine is considered one of the highest quality machines on the market. Although there is little evidence before the Panel to support these assertions, the Respondent has not challenged them and there is evidence to suggest that the Respondent, or the entity at the time that was trading under the name “Sienna Coffee” (which appears likely to have been Ms Kimberley Van Der Meulen as the registered contact for the disputed domain name and now the secretary and a shareholder of Sienna Australia Pty Ltd with a registered business name of “Sienna Coffee”), was promoting RANCILIO products on its website at <siennacoffee.com.au> as early as 2004. Therefore, it seems to the Panel more likely than not that the Respondent, or the moving spirit behind it, namely Ms. Kimberley Van Der Meulen (who remains the registered contact for the disputed domain name), was aware of the distinctive RANCILIO brand when the disputed domain name was registered in 2003.

To date the disputed domain name has not been used. The Complainant asserts that this amounts to passive use in bad faith. The factors that panels have previously considered to amount to a passive holding in bad faith are set out at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (which is more recent but largely consistent with the approach described at paragraph 3.2 of a the auDA Overview of Panel Views on Selected auDRP Questions First Edition and include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use, (iii) the respondent’s concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the disputed domain name may be put.

The Panel has already found that the RANCILIO name or mark is very distinctive. The Respondent has failed to submit a substantive response or to provide evidence of contemplated good faith use. The Complainant has submitted that the Respondent has taken various steps to conceal its identity, including by amending the Registrant Contact Name and Tech Contact Name in respect of the disputed domain name to “Kim Vd” from “Kimberley Van Der Meulen”, following the Complainant’s representative’s phone call to the Respondent on July 31, 2020. It appears that the Respondent subsequently purchased a privacy service which had the effect of concealing the Tech Contact Name but restored the Registrant Contact Name to its original form, It may be, as suggested by the Complainant, that the Respondent was not aware that it is not possible to conceal the Registrant Contact Name for “.com.au” domain names and erroneously thought that the Registrant Contact Name would also be concealed at the time the original name was restored, but in any event it appears to the Panel that an attempt was made by the Respondent to conceal details.

Finally, in all the circumstances, the Panel considers it unlikely that the Respondent conceived the very distinctive RANCILIO name in the disputed domain name independently or had any plausible intention to use it in good faith in connection with RANCILIO products. The Panel notes in this regard that the Respondent had every opportunity to demonstrate a good faith rationale for registration and use of the disputed domain name, whether by response to the Complainant’s legal representatives’ letter of demand, or by way of a substantive response in these proceedings, but failed to do so on either occasion. The Panel finds that the test for passive holding in bad faith is satisfied.

On balance, the Panel therefore finds that the disputed domain name was registered or used in bad faith. As the Complainant is only required to demonstrate registration or use in bad faith under the Policy, the Panel finds that the third element of the Policy is also satisfied.

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 <rancilio.com.au> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: November 6, 2020

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