Caffè Borbone S.r.l. v 谢奇峰 (Qi Feng Xie)

WIPO Case No. D2025-2463

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Caffè Borbone S.r.l. v. 谢奇峰 (Qi Feng Xie)

Case No. D2025-2463

1. The Parties

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

The Respondent is 谢奇峰 (Qi Feng Xie), China.

2. The Domain Name and Registrar

The disputed domain name <caffeborboneeconomico.com> is registered with Cloud Yuqu LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June
23, 2025. On June 23, 2025, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On June 25, 2025, the Registrar transmitted by
email to the Center its verification response disclosing registrant and contact information for the disputed
domain name which differed from the named Respondent (Registration Private) and contact information in
the Complaint. The Center sent an email communication to the Complainant on June 25, 2025, 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 in English on June 30, 2025.

On June 25, 2025, the Center informed the Parties in Chinese and English, that the language of the Registration Agreement for the disputed domain name is Chinese. On June 30, 2025, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission.

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 in English and Chinese of the Complaint, and the proceedings commenced on July 1, 2025. In accordance with the

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Rules, paragraph 5, the due date for Response was July 21, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2025.

The Center appointed Jacob Changjie Chen as the sole panelist in this matter on July 28, 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

The Complainant, founded in 1996 in Italy, is one of the leading Italian coffee brands and produces every day around 96 tonnes of processed coffee. The Complainant’s products, namely capsule, coffee beans and ground coffee, are distributed all over the world.

The Complainant owns a number of CAFFÈ BORBONE trademark registrations, including:

- Italian Trademark Registration No. 895990, registered on June 9, 2003, in classes 9, 30, and 42;

- International Registration No. 902614, registered on January 11, 2006, in classes 9, 30, and 43;

- United States of America Trademark Registration No. 4356426, registered on June 25, 2013, in

classes 30, and 43;
- European Union Trademark Registration No. 15670541, registered on November 23, 2016, in classes 7, 11, 21, 30, 35, 37, 40, and 43; and

- International Registration No. 1359499, registered on May 30, 2017, in classes 11, 30, and 43.

The disputed domain name was registered on May 16, 2025, and resolves to a website displaying “Caffe- borbone”, and promoting various food and beverage products, including those from the Complainant and Complainant’s competitors.

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:

(a) The disputed domain name is substantially identical to the CAFFÈ BORBONE trademark as it

identically reproduces the Complainant’s trademark being the addition of the Italian word “economico” not
sufficient to mitigate the confusion between the CAFFÈ BORBONE trademark and the disputed domain
name.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The

Respondent is not known and cannot be known by the disputed domain name which clearly refers to the noncommercial or fair use of the disputed domain name.
CAFFÈ BORBONE trademark. The Complainant has neither authorized nor given consent to the

(c) The disputed domain name was registered and is being used in bad faith. Considering the reputation

of the CAFFÈ BORBONE trademark before the registration of the disputed domain name, the Respondent
knew or should have known about the existence of the earlier CAFFÈ BORBONE trademark of the
Complainant. The Respondent intends to attract, for commercial gain, Internet users accessing the website
by confusing them into believing that it is a website held, controlled by, affiliated or related to the
Complainant.

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B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issues: Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons, including the fact that the Respondent is familiar with English as many English terms are used on the website which the disputed domain name directs to, and that holding the proceedings in Chinese would be unnecessarily burdening for the Complainant.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

6.2 Substantive Issues

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 the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

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 mark is recognizable 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.

Although the addition of the term “economico” may bear on assessment of the second and third elements, the Panel finds the addition of such term 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.

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.

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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.

The Panel notes that the disputed domain name is resolving to a website dominantly displaying a logo similar
to the CAFFÈ BORBONE trademark and purportedly offering the CAFFE BORBONE-branded products as
well as products of other brands including those competing with the Complainant. Such use cannot

constitute a bona fide use, or a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds the second element of the Policy has been established.

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 Complainant has registered and used the CAFFÈ BORBONE trademark for many years. The disputed domain name is resolving to a website displaying the CAFFÈ BORBONE trademark and offering CAFFÈ BORBONE products. The Respondent’s knowledge of the CAFFÈ BORBONE trademark at the time of registration is evident, which constitutes registration in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The disputed domain name is resolving to a website prominently displaying the CAFFÈ BORBONE trademark. It can be reasonably assumed that the Respondent is deliberately attempted to create a likelihood of confusion with the Complainant, and capitalize on the fame of the Complainant and the CAFFÈ

BORBONE trademark.

The Panel is also convinced that the Respondent has a pattern of bad faith conduct as it has been listed as respondent in Caffè Borbone S.r.l. v. 谢奇峰 (Qi Feng Xie), WIPO Case No. D2025-0211, which was also brought by the Complainant. This further supports the finding of the Respondent’s registration and use of the disputed domain name in bad faith.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <caffeborboneeconomico.com> be transferred to the Complainant.

/Jacob Changjie Chen/
Jacob Changjie Chen
Sole Panelist
Date: August 10, 2025