Caffè Borbone S.r.l. v. Bruce Anderson
Claim Number: FA2208002008848
Complainant is Caffè Borbone S.r.l. (“Complainant”), represented by Mauro Delluniversità of Società Italiana Brevetti S.p.A., Italy. Respondent is Bruce Anderson (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caffeborbone.us>, registered with Sav.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2022; the Forum received payment on August 18, 2022.
On August 19, 2022, Sav.com, LLC confirmed by e-mail to the Forum that the <caffeborbone.us> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@caffeborbone.us. Also on August 25, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum 's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Caffe Borbone S.r.1., operates as an Italian coffee company that distributes its coffee products all over the world. Complainant claims rights to its CAFFE BORBONE mark through its registration with the United States Patent and Office (“USPTO”) (e.g.¸ Reg. No. 4,356,426, registered June 25, 2013). See Compl. Annex 5. Respondent’s <caffeborbone.us> domain name is identical or confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s CAFFE BORBONE mark and adds the “.us” country code top-level domain (“ccTLD”) to form.
Respondent lacks rights or legitimate interests in the <caffeborbone.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed any rights to Respondent in the CAFFE BORBONE mark. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name’s resolving webpage to offer the domain name for sale for an amount that exceeds Respondent’s out-of-pocket costs.
Respondent registered or uses the <caffeborbone.us> domain name in bad faith. Respondent uses the disputed domain name’s resolving webpage to offer the domain name for sale. Respondent fully incorporated Complainant’s well-known CAFFE BORBONE mark in the disputed domain name in an attempt to attract users with a false impression of association with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an Italian company that operates in the coffee industry and distributes its coffee products all over the world.
2. Complainant has established its rights to its CAFFE BORBONE mark through its registration with the United States Patent and Office (“USPTO”) (e.g.¸ Reg. No. 4,356,426, registered June 25, 2013).
3. Respondent registered the <caffeborbone.us> domain name on March 29, 2022.
4. Respondent uses the disputed domain name’s resolving webpage to offer the domain name for sale for an amount that exceeds Respondent’s out-of-pocket costs.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon prior UDRP decisions as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has rights in the CAFFE BORBONE mark through its registration of the mark with the USPTO (e.g.¸ Reg. No. 4,356,426, registered June 25, 2013). See Compl. Annex 5. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has established its rights in the CAFFE BORBONE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical and/or confusingly similar to Complainant’s CAFFE BORBONE mark. Complainant argues that Respondent’s <caffeborbone.us> domain name is identical or confusingly similar to Complainant’s CAFFE BORBONE mark. Under Policy ¶ 4(a)(i), the addition of a top-level domain name is generally considered irrelevant in determining whether a disputed domain name is identical to a protected mark. See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding, “The ccTLD “.us” designation is inconsequential to a Policy ¶ 4(a)(i) analysis.”). Respondent wholly incorporates Complainant’s CAFFE BORBONE mark in the <caffeborbone.us> domain name and adds the “.us” ccTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is identical or confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s CAFFE BORBONE mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on March 29, 2022;
(c) Respondent uses the disputed domain name’s resolving webpage to offer the domain name for sale for an amount that exceeds Respondent’s out-of-pocket costs;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <caffeborbone.us> domain name because Respondent is not commonly known by the disputed domain name, Complainant’s prior rights in the mark precede Respondents registration, and Complainant has not authorized or licensed to Respondent any rights in the CAFFE BORBONE mark. Information that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(iii) based on the WHOIS information and other evidence in the record). Further, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information and other information on the record lists the registrant for the disputed domain name as “Brain Morgan.” See Registrar Verification Email; see also WHOIS information. Additionally, there is no other evidence to suggest that Respondent was authorized to use the CAFFE BORBONE mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii);
(f)The Panel further finds that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel finds that Respondent has failed Policy ¶ 4(c)(i);
(g) Complainant argues that Respondent does not use the <caffeborbone.us> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Use of a disputed domain name’s resolving webpage to offer the domain for sale for an amount that far exceeds out of pocket costs is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). Complainant attached a screenshot of the disputed domain name’s resolving webpage on page 7 of the complainant. See Compl. Pg. 7. Respondent uses the disputed domain name’s resolving webpage solely to offer the domain name for sale for an amount that exceeds Respondent’s out-of-pocket costs for registration of the disputed domain name. Id. As the Panel agrees, it finds that Respondent does not use the <caffeborbone.us> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(ii) and (iv).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration or Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith or has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered or used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered the disputed domain name with intent to sell it in bad faith within the meaning of Policy ¶ 4(b)(i). A respondent’s general offer of a domain name for sale may evidence a respondent’s bad faith. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Respondent uses the disputed domain name’s resolving webpage to display contact information to purchase the domain name for an amount (1455 USD) that far exceeds Respondent’s out-of-pocket costs of registering the disputed domain name. See Compl. Pg. 7. As the Panel finds Respondent registered the <caffeborbone.us> domain name with intent to sell, it finds the Respondent registered the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant contends that Respondent uses its CAFFE BORBONE mark in the <caffeborbone.us> domain name with intent to divert and attract Internet users for commercial gain in bad faith. A respondent’s use of a domain name that is obviously connected to a complainant’s widely used mark indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Respondent incorporates the entirety of Complainant’s CAFFE BORBONE mark in the disputed domain name to divert unsuspecting users to Respondent’s own webpage. As the Panel agrees, it finds that Respondent uses the <caffeborbone.us> domain name with intent to divert and attract Internet users for commercial gain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caffeborbone.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: September 26, 2022
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