Caffè Borbone S.r.l. v du qiang qiang

WIPO Case No. D2023-5059

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Caffè Borbone S.r.l. v. du qiang qiang

Case No. D2023-5059

1. The Parties

The Complainant is Caffè Borbone S.r.l., Italy, represented by Società Italiana Brevetti S.p.A., Italy.

The Respondent is du qiang qiang, Philippines.

2. The Domain Name and Registrar

The disputed domain name <borboneusa.com> is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5,
2023. On December 5, 2023, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On December 6, 2023, the Registrar transmitted
by email to the Center its verification response disclosing the registrant and contact information for the
disputed domain name which differed from the named Respondent (Redacted for Privacy) and contact
information in the Complaint. The Center sent an email communication to the Complainant on December 11,
2023, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

December 13, 2023.

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 the Respondent of the Complaint, and the proceedings commenced on December 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2024.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on February 1, 2024. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant, Caffè Borbone S.r.l., is a company headquartered in Italy and is active in the coffee
industry. The Complainant was founded in 1996 in Naples and owes its name to the royal family and to
Charles III of Bourbon. Caffè Borbone, which is considered one of the Italian coffee market leaders, daily
produces around 96 tonnes of processed coffee in its Italian factories, which are distributed all over the
world. The Complainant’s coffee products have received various prizes and awards. The reputation of the
Complainant’s BORBONE and CAFFÈ BORBONE brands have already been acknowledged in previous
UDRP decisions including Caffè Borbone S.r.l. v. Beats, Beats / KAI, WIPO Case No. D2022-0824 and Caffè

Borbone S.r.l. v. Aldo Vincenzo Pecora, WIPO Case No. D2023-3351.

The Complainant possesses an international trademark portfolio for the marks BORBONE and CAFFÈ registration number 015670532, registered on November 23, 2016; European Union Trade Mark Registration CAFFÈ BORBONE (device), registration number 015670541, registered on November 23, 2016 and International trademark CAFFÈ BORBONE (device), registration number 902614, registered on January 11, 2006. The Complainant also has a strong online presence and is the owner of various domain names including the abovementioned marks.

The disputed domain name was registered on November 24, 2022, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an inactive webpage stating “403 Forbidden”.

5. Parties’ Contentions

A. Complainant

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

Notably, the Complainant contends that the disputed domain name is confusingly similar to its registered trademarks as it incorporates the BORBONE mark entirely and also contains the dominant part of the CAFFÈ BORBONE mark, to which the merely geographical descriptive abbreviation “USA” was added. Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name since it has not used the disputed domain name in connection with a bona fide offering of goods or services, nor of any serious preparations for that purpose. Finally, the Complainant essentially contends that the Respondent has knowingly targeted its well-known marks by registering the disputed domain name and that it is currently holding the disputed domain name passively in bad faith.

B. Respondent

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

6. Discussion and Findings

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

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the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the 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 Panel finds the entirety of the BORBONE mark is reproduced within the disputed domain name.
Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Furthermore, the Panel also finds that the mark CAFFÈ BORBONE is recognizable within the disputed domain name, since it contains the dominant part of this mark. Accordingly, the disputed domain name is also confusingly similar to that mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “usa”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does 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.

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 the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the 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 the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Furthermore, the Panel notes that the disputed domain name directs to an inactive webpage and that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, nor any credible preparations for that purpose. In this regard, the Panel finds that passively holding

a domain name being confusingly similar to the Complainant’s trademark, without making any use of it, does
not confer any rights or legitimate interests in the disputed domain name on the Respondent (see in this
regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691;
and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Finally, the Panel finds that the nature of the disputed domain name, entirely incorporating the Complainant’s trademark for BORBONE combined with the common geographical acronym “USA”, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant and its products or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

Based on the available record, 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 the Respondent has registered a domain name which is confusingly similar to the Complainant’s well-known, intensely used and distinctive trademarks for BORBONE and CAFFÈ BORBONE. The Panel refers to prior decisions under the Policy which have recognized the well- known nature of these trademarks, see for instance Caffè Borbone S.r.l. v. Aldo Vincenzo Pecora, WIPO Case No. D2023-3351. The Panel deducts from this fact that by registering the disputed domain name, the Respondent deliberately and consciously targeted the Complainant’s prior well-known trademarks for BORBONE and CAFFÈ BORBONE. The Panel refers to the WIPO Overview 3.0, section 3.1.4, which states “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Furthermore, the Panel also notes that the Complainant’s trademarks were registered several years before the registration date of the disputed domain name. The Panel deducts from these elements that the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks at the time of registering the disputed domain name. In the Panel’s view, these elements indicate bad faith on the part of the Respondent, and the Panel therefore finds that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.

As to use in bad faith, 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. Having reviewed the available record, the Panel finds that the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine 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, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and strong reputation of the Complainant’s trademark, the composition of the disputed domain name and the unlikeliness of any good faith use of the disputed domain name by the Respondent and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Based on the available record, the Panel finds that the 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 name <borboneusa.com> be transferred to the Complainant.

/Deanna Wong Wai Man/
Deanna Wong Wai Man
Sole Panelist
Date: February 11, 2024