Espressoborbone.com, Espressoborbone.shop

The timeline behind espressoborbone.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AN D MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Caffè Borbone S.r.l. v. Aldo Vincenzo Pecora Case No. D2023-3351 1. The Parties The Complainant is Caf f è Borbone S.r.l., Italy, represented by Società Italiana Brevetti S.p.A., Italy. The Respondent is Aldo Vincenzo Pecora, Italy. 2. The Domain Names and Registrars The disputed domain name <espressoborbone.com> is registered with Register SPA. The disputed domain name <espressoborbone.shop> is registered with eNom, LLC (the “Registrars”). 3. Procedural History The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2023. On August 4, 2023, the Center transmitted by email to the Registrars requests f or registrar verif ication in connection with the disputed domain names. On August 4, and August 7, 2023, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact inf ormation f or the disputed domain names, which differed from the named Respondent (Redacted for Privacy) and contact inf ormation in the Complaint. The Center sent an email communication to the Complainant on August 15, 2023, providing the registrant and contact inf ormation disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amended Complaint in English on August 17, 2023. On August 15, 2023, the Center sent an email communication regarding the language of the proceeding in English and Italian. The Complainant submitted a request to proceed in English on August 17, 2023. The Respondent did not submit any response to the Center’s communication. The Center verif ied that the Complaint together with the amended Complaint satisf ied the f ormal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules f or Unif orm Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules f or Unif orm Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center f ormally notif ied the Respondent of the Complaint both in English and Italian, and the proceedings commenced on August 24, 2023. In accordance page 2 with the Rules, paragraph 5, the due date for Response was September 13, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s def ault on September 14, 2023. The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 15, 2023. The Panel f inds 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 was founded in 1996 in Naples, Italy and is one of of the leading companies in the market f or Italian coffee, producing every day around 96 tonnes of processed cof f ee in its Italian f actories. The reputation of the Complainant’s CAFFE’ BORBONE brand has already been acknowledged in previous UDRP decision Caffè Borbone S.r.l. v. Beats, Beats / KAI, WIPO Case No . D2022-0824; and in the Italian procedure against the same Respondent, Caffè Borbone Srl v. Aldo Vincenzo Pecora, No. 7/2023 (issued by the Italian Dispute Resolution Service Provider MFSD). The Complainant has several registrations for the BORBONE and CAFFE’ BORBONE trademarks around the world. The Complainant is, inter alia, the owner of : - European Union Trad e Mark BORBONE (device), registration number 015670532, registered on November 23, 2016; - European Union Trad e Mark CAFFE’ BORBONE (device), registration number 015670541, registered on November 23, 2016; - Italian trademark CAFFE BORBONE (device), registration number 0000895990, registered on June 9, 2003; - International trademark CAFFÈ BORBONE (device), registration number 902614, registered on January 11, 2006. In addition, the Complainant holds numerous domain names ref lecting the trademarks CAFFÈ BORBONE/BORBONE, including <caf f eborbone.it> and <caffeborbone.com>. The disputed domain names, at the time the Complaint was f iled, presented a blank page. The disputed domain names were registered on May 18, 2023. 5. Parties’ Contentions A. Complainant The Complainant claims that: (a) the disputed domain names are confusingly similar to the Complainant’s trademarks; (b) the Respondent lacks any rights or legitimate interests in the disputed domain names; and (c) the Respondent has registered and is using the disputed domain names in bad f aith. B. Respondent The Respondent did not reply to the Complainant’s contentions. page 3 6. Discussion and Findings 6.1 Language of the Proceeding Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specif ied otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In this case, the registration agreement f or the disputed domain name <espressoborbone.shop> is in English, whereas the language of the registration agreement f or the disputed domain name <espressoborbone.com> is Italian. The Respondent appears to be Italian. The Complainant has requested that the language of the proceedings in this case should be English, arguing that the Respondent has a suf f icient understanding of the English language, as is shown by the Respondent’s own assertion, on his LinkedIn prof ile, that he is prof icient in English. Paragraph 10(b) of the Rules provides that: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”, and paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure f airness to the parties and the maintenance of an inexpensive and expeditious avenue f or resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding. The Panel f inds that the affirmation of the Respondent on his LinkedIn profile that he is prof icient in English provides sufficient evidence to suggest that the Respondent is able to conduct the proceeding in English. The Respondent has not responded to the Complainant’s assertion that the Respondent is able to read and understand English, and has not requested that the proceeding be conducted in Italian. In addition, the language of the Registration Agreement f or one of the disputed domain names is English. Theref ore, in the circumstances of this case the Panel finds that the Respondent will not be prejudiced by the language of the proceeding being English. The Panel, accordingly, accepts the Complainant’s argument that the language of the proceedings should be English, and so f inds. 6.2 Substantive Elements of the Policy In order f or the Complainant to obtain a transfer of the disputed domain names, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that: (i) the disputed domain names are 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 disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad f aith. page 4 A. Identical or Confusingly Similar The Complainant has established rights in the BORBONE trademark. The disputed domain names contain the Complainant’s BORBONE trademark with the addition of the term “espresso” and the Top-Level Domains, “.co m” and “.shop” respectively. The addition in the disputed domain names of the term “espresso” does not prevent the BORBONE trademark from being recognizable in the disputed domain names. Pursuant to section 1.8 of the WIP O Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which states: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the f irst element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” Theref ore, the Panel finds the disputed domain names to be confusingly similar to the BORBONE trademark in which the Complainant has rights. Accordingly, the Panel f inds that the Complainant has satisf ied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests This Panel f inds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names, and the burden of production of evidence shif ts to the Respondent. The composition of the disputed domain names, which combine the Complainant’s BORBONE trademark with the term “espresso” (i.e. “caf f è espresso” in Italian) which clearly ref ers to the Complainant’s field of activity, carries a risk of implied affiliation with the Complainant. The Respondent has no connection or af f iliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to engage in any legitimate noncommercial or f air use of the disputed domain names, nor any use in connection with a bona fide offering of goods or services. Indeed, it appears that the Respondent is passively holding the disputed domain names. In addition, the Respondent does not appear to be commonly known by the disputed domain names or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain names. Accordingly, the Panel f inds that the Complainant has satisf ied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the BORBONE and CAFFÈ BORBONE marks when it registered the disputed domain names. The Complainant’s BORBONE trademark is a distinctive and renowned trademark and has been registered and used for about 20 years. The renown of the Complainant’s trademark has already been acknowledged in previous UDRP decision Caffè Borbone S.r.l. v. Beats, Beats / KAI, WIPO Case No. D2022-0824, in which it was held that “...since the Complainant registered its trademark CAFFÈ BORBONE, the Complainant has achieved significant growth in the cof f ee business industry f or more than 20 years. The Complainant’s trademark has become a relevant trademark in the cof f ee industry worldwide”. The Respondent has registered three domain names containing the Complainant’s trademark. These domain names combine the Complainant’s trademark with the term “espresso” which ref ers to the Complainant’s field of activity. In addition, the Respondent appears to be an Italian residing in Italy where the Complainant and its trademark are renowned. page 5 Clear evidence that the Respondent was aware of the Complainant’s trademark and activity is also given by the f act that the disputed domain names were registered on May 18, 2023, namely af ter this same Complainant filed an opposition before the Italian Registry of the ccTLD.it on December 22, 2022, against the registration of the domain name <espressoborbone.it> by this same Respondent, and also af ter the Complainant f iled (on March 30, 2023) a reassignment procedure in order to recover the domain name <espressoborbone.it>, at that time assigned to the Respondent. Consequently, it appears that the Respondent registered the disputed domain names while aware of the Complainant’s trademark and activity, and did so with the intention of creating a likelihood of conf usion with the Complainant’s trademark as to the source, sponsorship, af f iliation, or endorsement of either the Respondent and/or the disputed domain names. This constitutes bad faith registration and use as well as a disruption of the Complainant’s business under the Policy. Inf erence of bad f aith can also be f ound in the Respondent’s f ailure to respond to the Complainant’s contentions, and the Respondent’s lack of any rights or legitimate interests in the disputed domain names. As regards the use in bad faith of the disputed domain names, which at the time the Complaint was f iled, were inactive (namely, a blank page), the Panel considers that in the circumstances of this case, the passive holding of the disputed domain names does not prevent a f inding of bad f aith. See WIPO Overview 3.0, section 3.3. The Panel here considers as relevant the renown of the Complainant’s trademark, the incorporation of said distinctive trademark, the inherently misleading nature of the disputed domain names, and the Respondent’s f ailure to participate in the proceeding. Finally, this same Respondent was already found to have registered and used in bad faith the domain name <espressoborbone.it>. See the Italian procedure Caffè Borbone Srl v. Aldo Vincenzo Pecora, MFSD Case No. 7/2023. Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and used the disputed domain names in bad f aith. Theref ore, the Complainant has satisf ied paragraph 4(a)(iii) of the Policy. 7. Decision For the f oregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <espressoborbone.com> and <espressoborbone.shop>, be transf erred to the Complainant. /Fabrizio Bedarida/ Fabrizio Bedarida Sole Panelist Date: September 29, 2023

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.