Cafés Ltda. v Natanael Santos, Andria Carla Nascimento Pesente

WIPO Case No. D2025-1640

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

D.E Cafés do Brasil Ltda., Jacobs Douwe Egberts BR Comercialização de
Cafés Ltda. v. Natanael Santos, Andria Carla Nascimento Pesente,
Eduardo Pigatto, Vinicius Guedes da Silva, Claudio Silva

Case No. D2025-1640

1. The Parties

Complainants are D.E Cafés do Brasil Ltda. and Jacobs Douwe Egberts BR Comercialização de
Cafés Ltda., Brazil, represented by Ploum, Netherlands (Kingdom of the), collectively referred herein as

“Complainant”.

Respondents are Natanael Santos, Andria Carla Nascimento Pesente, Eduardo Pigatto, Vinicius Guedes da

Silva, and Claudio Silva, Brazil.

2. The Domain Names and Registrars

The disputed domain names <cafepilaooficial.shop>, <cafepilao.shop>, <cafes-pilao.shop>, <compra-cafes-pilao.shop>, and <pilao.site> are registered with Hostinger Operations, UAB.

The disputed domain names <cafes-pilao.online>, and <pilao.online> are registered with GoDaddy.com, LLC

(the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2025. On April 23, 2025, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 24 and 25, 2025, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint.

The Center sent an email communication to Complainant on April 25, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying

registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that
all domain names are under common control. Complainant filed an amended Complaint on April 28, 2025.

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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 Respondents of the Complaint, and the proceedings commenced on May 5, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2025. On May 16, 2025, the registrant of the disputed domain name <cafepilao.shop> sent an email communication to the Center.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 30, 2025. 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

Complainant is made up by D.E Cafés do Brasil Ltda. and Jacobs Douwe Egberts BR Comercialização de Cafés Ltda., companies that are part of Jacob Douwe Egberts, which in turn is part of JDE Peet’s business group, which is a large coffee and tea company. The group’s product portfolio is present in over 100

countries around the world.

Complainant is the owner of registrations in Brazil and in other jurisdictions, consisting of or including the PILÃO trademark. Complainant also owns and operates domain names incorporating the PILÃO trademark, such as <pilao.com.br> and <cafepilao.com.br>. All are well known in Portuguese-speaking countries, especially in Brazil, where it was recognized for years amongst the top five products in the Brazilian Market.

Some examples of Complainant´s trademarks registrations for PILÃO can be found below:

Registration	Trademark	Jurisdictions	Registration Date
826405525	Brazil	August 14, 2007

904969770 Brazil July 7, 2015

912174730 Brazil October 10, 2018

810036541	PILÃO	Brazil	February 5, 1985
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The disputed domain names were registered as follows: <pilao.online> was registered on March 1, 2025;
<pilao.site> was registered on March 27, 2025; <cafepilao.shop> was registered on March 2, 2025;
<cafepilaooficial.shop>, was registered on March 21, 2025; <cafes-pilao.online> was registered on March 1,
2025; <cafes-pilao.shop> was registered on March 8, 2025; and <compra-cafes-pilao.shop> was registered
on March 8, 2025. It is worth noting that at the time of the filing of the Complaint, the disputed domain
names <pilao.online> <cafes-pilao.shop> resolved to Registrar-parked pages, while the remaining disputed

domain names resolved to inactive pages.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, Complainant contends that the entirety of the PILÃO trademark, owned by Complainant, is being reproduced in the disputed domain names. Regarding the disputed domain names <pilao.online> and <pilao.site>, they are identical to the PILÃO trademark. The remaining disputed domain names are confusingly similar, incorporating the trademark in its entirety and only adding generic terms, such as “cafe”, “cafes”, oficial”, and “compra”, not preventing the possibility of confusion with Complainant’s prior rights to the PILÃO trademark.

Additionally, Complainant asserts that the use of a generic Top-Level Domain (“gTLD”), here as “.site”,
“store”, and “shop” is typically ignored when assessing the similarities between the disputed domain names

and Complainant’s prior rights.

Therefore, according to Complainant, the disputed domain names are confusingly similar with Complainant´s
trademark PILÃO, fulfilling paragraph 4(a)(i) of the Policy and paragraphs 3(b)(viii) and (b)(ix)(1) of the
Rules.

Complainant states that Respondents lack any rights or legitimate interest in the disputed domain names. the disputed domain names.
This is supported by the fact that there is no current or past relationship between the Parties. Also,

Complainant affirms that Respondents are not making a legitimate noncommercial or fair use of the disputed domain names as they do not resolve to any active website. Other than this, Complainant highlights that Respondents have activated email services for the disputed domain names, which might be used for fraudulent purposes.

Also, Complainant professes that because of the PILÃO trademark’s notoriety in the Brazilian territory it is very likely that the trademark was known to Respondents at the time of registration of the disputed domain names.

In this manner, Complainant states that no legitimate use of the disputed domain names could be reasonably claimed by Respondents, fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.

Finally, Complainant urges that the disputed domain names were registered and used in bad faith. As pointed above, Complainant contends that Respondents knew or should have known about the existence of Complainant’s rights to the PILÃO trademark and of Complainant’s prominence in the coffee business, especially in Brazil at the time of the registration of the disputed domain name.

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Complainant argues that Respondents have intentionally attempted to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant asseverates that the composition of the disputed domain names and the reputation surrounding the PILÃO trademark corroborate this point of view.

Complainant reasons that the fact that the inactivity of the webpages does not prevent a finding of bad faith in this case as it can be linked to the doctrine of passive holding. Moreover, Complainant asserts that the activation of Mail Exchange (“MX”) Records poses a risk of using the disputed domain names for fraudulent purposes.

Thus, according to Complainant, the requirements for the identification of a bad faith registration and use of the disputed domain name have been fulfilled, pursuant to paragraphs 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3).

Accordingly, requests the transfer of the disputed domain names to Complainant.

B. Respondent

On May 16, 2025, Respondent Eduardo Pigatto, registrant of the disputed domain name <cafepilao.shop>,
expressed his consent to the transfer of the disputed domain. There was no communication from other

Respondents.

6. Discussion and Findings

To succeed in a UDRP complaint, a complainant must demonstrate that all the elements listed in paragraph
4(a) of the Policy have been satisfied, as following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

The burden of proving these elements is upon Complainant.

6.1. Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on Complainant’s request. However, it must be noted that Eduardo Pigatto, one of the disputed domain name registrants, consented to the transfer of the disputed domain name registered under his name.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

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In addressing Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that all domain names target the same unique trademark PILÃO and possess a similar naming pattern, as most of the disputed domain names consist of the PILÃO trademark along with the generic and/or descriptive term “café”, which means coffee in Portuguese, so it instantly relates to Complainant’s business.

Other than this, all of the disputed domain names have been registered within a relatively short period of time, between March 1, 2025, and March 27, 2025. Complainant highlights that the data linked to the disputed domain names contains similar mistakes relating to the registrant phone and fax number. Also, four of the five addresses linked to the disputed domain names seem to be fake as neither Google nor Google Maps are able to identify them.

Furthermore, the identities used seem to be fake and created only for the purposes of creating the disputed domain names, for most of the disputed domain names, the registrant names also do not correspond with the email addresses used for registration.

Other Panels have reached similar conclusions through the analysis of the particularities of the registration of
disputed domain names, such as the time span of registration and the naming pattern. See WIPO Case
No. D2025-0572, Stable Aggregator Limited, Hollycorn N.V., Dream Finance OÜ, t/a Coinspaid, Mr. Pavel
Kashuba v. Host Master, Njalla Okta LLC, FlokiNET Ltd WhoisProtection FlokiNET Ltd WhoisProtection,
FlokiNET Ltd, Renne Meyer.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

The only viable argument as to why the disputed domain names are not under common control would be pointing out that in the only reply, provided by Eduardo Pigatto, did not reference all of the disputed domain names. However, the Panel notes that the same reply indicated the consent of the Respondent in the transfer of the disputed domain name <cafepilao.shop> to Complainant. Therefore, it is clear that the consolidation of the disputes would be fair and equitable to all Parties.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred in this decision as “Respondent”) in a single proceeding.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing
(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison
between Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the trademark PILÃO is being reproduced within the disputed domain names. While the disputed domain names <pilao.online> and <pilao.site>, are almost identical to the PILÃO trademark except for the removal of the tilde, the remaining disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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Although the addition of the generic terms “cafe(s)” (which means “coffee” in English), “compra” (which means “purchase” in English) and “oficial” (which means “official” in English) may bear on assessment of the second and third elements, the Panel finds that such changes do not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

In reality, the addition of these terms does not prevent the confusing similarity. Previous UDRP panels have
found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or
otherwise) would not prevent a finding of confusing similarity under the first element because Complainant’s
PILÃO trademark is clearly still recognizable in the disputed domain names. For a similar conclusion, see
WIPO Case No. D2021-3625, Keurig Green Mountain, Inc. v. Super Privacy Service LTD c/o Dynadot / Cola
Sich / Hatten Bach / Douglas Hall.

Therefore, based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of
proof always remains on the complainant). If respondent fails to come forward with such relevant evidence,

complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Actually, the only communication provided in this case was of consent of transfer of the <cafepilao.shop> disputed domain name.

Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has not rebutted

Based on the available record, Respondent is not entitled to any trademark, trade name, or any other right associated with the disputed domain names. Additionally, Respondent has not been authorized by Complainant to use the PILÃO trademark, and there is no commercial relationship between the Parties. Respondent is not commonly known by the disputed domain names, and the Panel notes that Respondent is not making any use of the disputed domain names, since they resolve to either parked pages or inactive pages. In light of these circumstances, the Panel finds that no rights or legitimate interests can be found on behalf of Respondent.

The Panel also notes that the composition of the disputed domain names carries a risk of implied affiliation.

WIPO Overview 3.0, section 2.5.1.

Accordingly, the Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that Respondent has registered the disputed domain names that are confusingly similar to Complainant’s trademark PILÃO, as explained above in 6.A. Also, based on the available record, it is established that Respondent has no affiliation with Complainant and the trademark PILÃO, nor has it sought authorization or a license to utilize the referred trademark. Also, based on the available record, Respondent does not own any trademarks containing the term PILÃO or showed any rights or legitimate interests over the trademark or any relating terms, as explained in 6B.

Furthermore, considering Complainant´s significant local reputation in Brazil appearing as one of the biggest companies in the coffee business, Respondent evidently knew or should have known of the existence of Complainant’s prior trademark rights and domain names, which were matters of public record, before registering the disputed domain names. Other than this, considering Respondent’s choices in the naming pattern of the disputed domain names, Respondent must have had knowledge of Complainant’s pre-existing rights to the PILÃO trademark and should also have known about Complainant’s domain names such as <pilao.com.br> or <cafepilao.com.br>.

Moreover, the Panel notes that Complainant points out that Respondent has activated MX records. Although there is no evidence of illegal behavior up until now, there is a clear potential in the activation of MX Records, which further supports the Panel’s finding on bad faith. Other panels have reached the same conclusion.

See WIPO Case No. D2023-2856, IPSOS v. Ipsos Market, ipsosmarketsurvey.

Panels have found that the non-use of a domain name, including a blank or “coming soon” page would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of Complainant’s trademark, the composition of the disputed domain names, activation of MX records, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

Therefore, the Panel finds that the circumstances of the present case allow for a finding of bad faith in the registration and use of the disputed domain names, considering that (i) Respondent is holding passively the disputed domain names; (ii) Respondent knew or should have known of the Complainant’s trademark rights in PILÃO when registering the disputed domain names, (iii) Respondent’s actions of activating MX Records poses of a threat of illegal activity in the near future.

Based on the available record, the Panel finds that Complainant has established the third element of the

Policy.

7. Decision

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 names <cafepilaooficial.shop>, <cafepilao.shop>, <cafes-pilao.shop>,
<compra-cafes-pilao.shop>, <pilao.site>, <cafes-pilao.online>, and <pilao.online> be transferred to

Complainant.

/Gabriel F. Leonardos/
Gabriel F. Leonardos
Sole Panelist
Date: June 13, 2025