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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

IllycaffГЁ S.p.A. v. Mauro Sergio

Case No. D2009-1453

1. The Parties

The Complainant is IllycaffГЁ S.p.A. of Trieste, Italy, represented by Kivial s.r.l, Italy.

The Respondent is Mauro Sergio, of Potenza, Italy.

2. The Domain Names and Registrars

The disputed domain names <illycaffe.biz> and <illycaffe.com> are registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2009. On October 28, 2009, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain names. On October 29, 2009, Register.com 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 November 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on November 24, 2009.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on December 2, 2009. 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, Illycaffé SpA, was founded in 1933 in Italy by Francesco Illy and it is a leading Italian company in the field of the production and selling of a unique blend of high quality espresso coffee, consisting of nine types of pure Arabica coffee. The Complainant`s blend is distributed all over the world, and it has been currently marketed in 140 countries, in all 5 continents, and it is served in more than 50,000 commercial businesses. Since 2005 exports exceed 50% of total sales.

The Illycaffé Group includes eight controlled Companies and one connected Company and employs more than 700 people. In 2007 the IllycaffГЁ Group had a consolidated turnover of € 270 million and a net profit of € 7 million.

The trademark ILLY consist of the family name Illy.

The Complainant is the owner of considerable portfolio of trademarks for ILLYCAFFE and ILLY, registered both in Italy and abroad.

In particular, the Complainant owns the Italian trademark registration for ILLYCAFFE, No. 587029 filed on December 16, 1992, registered on February 10, 1993 and renewed under No. 1011331 on December 12, 2002 and the International Trademark Registration No. 600696 registered on May 26, 1993 and subsequently renewed, for goods included in classes 9, 11, 21, 30, 33 and extended to Austria, Bulgaria, Benelux, China, Czech Republic, Germany, Egypt, Spain, France, Croatia, Hungary, Liechtenstein, Morocco, Monaco, Macedon, Poland, Portugal, Romania, Serbia, Russia, Slovenia, Slovakia, San Marino, Ukraine.

The Complainant is also the owner of numerous domain names consisting of the wording "illycaffé" with the main generic extension and with the ccTLD of said countries where the Complainant mainly operates.

The Complainant is currently the owner of the following domain names:

<illycaffe.asia>, <illycaffe.be>, <illycaffe.ca>, <illycaffe.ch>, <illycaffe.cl>, <illycaffe.cn,> <illycaffe.co.il>, <illycaffe.co.nz>, <illycaffe.co.uic>, <illycaffe.co.za>, <illycaffe.com.hr>, <illycaffe.com.mx>, <illycaffe.dk>, <illycaffe.es>, <illycaffe.eu>, <illycaffe.fi>, <illycaffe.fr>, <illycaffe.hk>, <illycaffe.hu>, <illycaffe.ie>, <illycaffe.in>, <jllycaffe.info>, <illycaffe.kr>, <illycaffe.lu>, <illycaffe.net>, <jllycaffe.nl>, <illycaffe.no>, <illycaffe.pe>, <illycaffe.ph>, <illycaffe.pl>, <illycaffe.pt>, <illycaffe.ro>, <illycaffe.rs>, <illycaffe.se>, <illycaffe.sg>, <illycaffe.si>, <illycaffe.tw>, <illycaffe.ua>.

The disputed domain names were registered on February 03, 2002 and on May 02, 2002.

When the Complaint was filed, the disputed domain names resolved to a generic thematic search page concerning coffee, which appears to be a "placeholder" normally supplied by the Registrar to its users.

5. Parties` Contentions

A. Complainant

The Complainant contends that the name "illycaffe" is famous and renown on an international level, as it is proved by the press review attached to the Complaint, including both international and national press advertisements, television spots, and advertising campaigns.

The Complainant contends that its trademark is highly distinctive for the Complainant`s business since it combines the Italian surname of the Company`s founding father with the common word "caffe" (coffee in Italian) which just refers to the Complainant specific field of activity.

The Complainant contends that the disputed domain names <illycaffe.biz> and <illycaffe.com> are identical to the Complainant`s trademarks ILLYCAFFE because they incorporate the Complainant`s name and trademark ILLYCAFFE in it`s entirely.

The Complainant contends that the Respondent has no title or license to use the Complainant`s trademark, or any authorization to register domain names on behalf of Complainant. Moreover, specific searches carried out among the trademark registrations all over the world revealed that the Respondent does not own any trademark similar to or interfering with the Complainant`s ones.

The Complainant contends that the domain names <illycaffe.biz> and <illycaffe.com> have been registered and are being used in bad faith.

The Complainant states that there are no evidence of the Respondent`s use of the domain names or demonstrable preparations to use them in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the domain names, or finally that the Respondent is making a legitimate non-commercial or fair use of the domain names.

Considering that the domain names were registered in 2002 and that the Respondent has never actively used the domain names, it can be stated that the domain names are held in bad faith.

The Complainant contends that the Respondent was surely aware of the Complainant when he registered the contested domain names, as it is evidenced by the fact that the Respondent appears to be an Italian citizen resident in Potenza, the Complainant is registered in Trieste and therefore it has a very strong presence on the Italian market, with advertisements in the local and national press, spots on the main television channels, numerous sales points also in and nearby Potenza where Respondent resides, and a capillary distribution of its products.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainants must prove each of the following three elements:

(i) 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) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names are identical to the Complainant`s trademarks ILLYCAFFE`; the only difference is the omission of the accent, present in the trademarks but not in the domain names, and the adjunction of the suffixes ".com" and ".biz".

According to several consistent decisions (see Supre Pty Ltd v. Paul King, WIPO Case No. DAU2004-0006; Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849, Esteé Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 and Briefing.com Inc v. Cost Net Domain Manager, WIPO Case No. D2001-0970) the Panel finds that the accent on the "e" of "illycaffe" should be disregarded. Indeed, this omission is due to a technical reason because, as every body knows, it is not possible to register a domain name with accents. In any case, as stated in those previous decisions, the registration as a domain name of a trademark in its entirety is sufficient to establish that the domain name is identical or confusingly similar to the Complainant`s registered trademark.

With regards to the suffixes ".com" and ".biz" (which indicate that the domain names are registered in the ".com" and ".biz" gTLD), as it was established in many previous decisions (see A.P. MГёller v.Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) does not affect the domain names for the purpose of determining whether they are identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant`s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the domain name, such as:

(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

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

There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain names.

There is no evidence of the Respondent`s use, or demonstrable preparation to use, the disputed domain names in connection with a bona fide offering of goods.

The Respondent has not been and is not commonly known by the disputed domain names or has acquired any trademark or service mark rights in it. The Respondent`s name does not coincide with the disputed domain names.

No authorization has been granted to the Respondent by the Complainant to use the ILLYCAFFE` mark or to apply for any domain name incorporating the Complainant`s trademark.

Moreover, the use of the disputed domain names cannot be considered a bona fide offering of goods or services. The related sites currently consist of a generic thematic search page concerning coffee, which appears to be a "placeholder" normally supplied by the Registrar to its customers; as proved by the Complainant, even in the past, this has always been the content of the web-sites connected to the disputed domain names.

Such use cannot be considered bona fide use in the circumstances of this case.

Finally, no Response was filed in the case and the Panel, in accordance with paragraph 14(b) of the Rules, draws the inference "that non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one`s own rights" (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element is met.

C. Registered and Used in Bad Faith

The Panel finds that the domain names were registered and are being used in bad faith.

The Panel finds that the Complainant`s ILLYCAFFE` trademark, name and activity are well established and very widely known, in Italy and abroad, and considering the widespread use and reputation of Illycaffé name and mark, the inherent distinctiveness of the mark, and Complainant`s prior trademark registrations, the Respondent was certainly aware of it when he registered the domain names at issue. Respondent`s knowledge of the Complainant is a sure thing, also considering the fact that the Respondent appears to be an Italian citizen resident in Potenza, the Complainant is registered in Trieste and therefore it has a very strong presence and a capillary distribution of its products particularly on the Italian market where is probably more renowned than in other countries.

Accordingly, the choice of the disputed domain names by the Respondent, in the Panel`s view, could not result from a mere coincidence

In line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, in the absence of any right or legitimate interest and lacking any contrary evidence, the Respondent`s registration of a domain name confusingly similar to the Complainant`s widely-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).

Concerning the use of the domain name, Complainant has proven that the disputed domain names resolve and have always resolved to a generic thematic search page concerning coffee or other connected products, which appears to be a courtesy page normally supplied by the Registrar to its customers.

Also with regard to this issue, the Panel shares the Complainant`s view and, according to several precedents originated from the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel believes that, in certain circumstances, the inaction in respect of a domain name registration can constitute a domain name being used in bad faith.

In the Panel`s opinion, in the circumstances of this Complaint, the passive holding of the domain names by the Respondent amounts to the Respondent acting in bad faith.

Indeed, considering;

(i) the strong reputation of Complainant`s trademark and its widespread and international use;

(ii) the Respondent`s failure to provide evidence whatsoever of any actual or contemplated good faith use by it of the domain name;

(iii) the default of Respondent`s reply to the Complainant`s contentions; and that

(iv) the registration of the domain names prevent their registration by the lawful trademark owner.

The Panel concludes that the Respondent`s passive holding of the domain names satisfies the requirement of paragraph 4(a)(iii) of the Policy that the domain name "is being used in bad faith" (see Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172 and Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615).

In light of the above circumstances, the Panel is satisfied that the third element is met and that the domain names <illycaffe.biz> and <illycaffe.com>, were registered and are being used in bad faith.

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 names, <illycaffe.biz> and <illycaffe.com> be transferred to the Complainant.

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Alessandra Ferreri
Sole Panelist

Dated: December 16, 2009