de Cafés Ltda v cleber weber, cleb, Name Redacted, Mkt Godat, Name

WIPO Case No. D2025-1321

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

D.E Cafés do Brasil Ltda., and Jacobs Douwe Egberts BR Comercialização
de Cafés Ltda v. cleber weber, cleb, Name Redacted, Mkt Godat, Name
Redacted

Case No. D2025-1321

1. The Parties

The 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).

The Respondents are cleber weber, cleb, Name Redacted[1], Mkt Godat, Name Redacted[2], Brazil.

[1] The Respondent appears to have used the name of a third parties, i.e. well-known Brazilian influencers, when registering the disputed

[2] Idem

2. The Domain Names and Registrars

The disputed domain names <cafeparatodospilao.shop>, <cafe-pilao.com>, and <pilaobrasil.site> are
registered with Hostinger Operations, UAB. The disputed domain name <pilao.store> is registered with

NameCheap, Inc. (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2025. On connection with the disputed domain names. On April 2, 2025, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (“Unknown”) and contact information in the Complaint.

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On April 2, 2025, the Center sent an email communication to the Complainants with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainants 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. The Complainants filed an amended Complaint on April 7, 2025.

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 Respondents of the Complaint, and the proceedings commenced on April 14, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2025. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on May 5, 2025.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 9, 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 Complainants are private limited liability companies organized under the laws of Brazil that are part of a global coffee and tea group headquartered in the Netherlands.

The Complainants own and market numerous coffee and tea brands worldwide, including the PILÃO coffee brand, one of the market leaders in Brazil.

The Complainants own trademark registrations for PILAO and PILÃO as a trademark, including the Brazilian

Trademark Registration No. 810036541 for PILÃO, registered on February 5,1985.

The Complainants also own and operate domain names incorporating the PILÃO trademark, such as

<pilao.com.br> (registered on April 2, 2009) and <cafepilao.com.br> (registered on June 25, 2001).

The disputed domain names are:

- <pilao.store> (registered February 25, 2025);

- <cafe-pilao.com> (registered February 1, 2025);

- <cafeparatodospilao.shop> (registered February 12, 2025); and

- <pilaobrasil.site> (registered February 8, 2025).

The disputed domain names <pilao.store>, <cafe-pilao.com>, and <cafeparatodospilao.shop> resolve to inactive webpages, and the disputed domain name <pilaobrasil.site> is a registrar parking page.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainants contend that:

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(i) The disputed domain names are confusingly similar to the Complainants’ trademark. The Complainants requirement and do not alter the analysis of confusing similarity.

assert that each of the disputed domain names wholly incorporates its PILÃO trademark. The additional
elements (“cafe”, “brasil”, and “paratodos”) are generic or descriptive and refer directly to the Complainant’s
coffee products or its market. These additions do not prevent a finding of confusing similarity. The generic

(ii) The Respondents have no rights or legitimate interests in the disputed domain names. The Complainants offering of goods or services.
state that they have not authorized the Respondents to use its PILÃO trademark. The Respondents are not
commonly known by the disputed domain names and have made no legitimate noncommercial or fair use.

(iii) The disputed domain names were registered and are being used in bad faith. The Complainant argues that the disputed domain names were registered to create an impression of affiliation with the Complainant. The Respondents have targeted the well-known PILÃO mark and registered multiple domain names using

variations of it in a short time frame, some using the same IP address. Passive holding of the disputed

domain names does not prevent a finding of bad faith.

B. Respondents

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

6.1 Consolidation

The amended Complaint was filed in relation to nominally different domain name registrants. The on similar naming patterns, proximity of registration dates, shared IP addresses, and the targeting of the PILÃO mark. The Complainants request 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 the Complainants’ request.

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.

In addressing the Complainants’ 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 disputed domain names reproduce the Complainants’ trademark PILAO and were registered within a relatively short period (between February 1, 2025, and February 25, 2025); two of the disputed domain names have been registered from the same IP address ; all but one of the disputed domain names have been registered with the same registrar (Hostinger Operations, UAB), and the disputed domain name that was registered with a different registrar (NameCheap, Inc.) still shares the same IP address as another disputed domain name; for the disputed domain names <cafe- pilao.com> and <pilaobrasil.site> the registrant used the names of two Brazilian influencers with a large following on social media.

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

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

6.2 Merits

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) the disputed domain name is 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 name; and

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

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

Annex 5 to the Complaint shows numerous trademark registrations for PILÃO and PILAO. Based on the available record, the Panel finds the Complainants have 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 disputed domain names incorporate the Complainants’ trademark PILAO, and partially reproduce the trademark PILÃO, with the mere omission of the tilde. Three of the disputed domain names contain other terms in Brazilian Portuguese (“cafeparatodos”, which may be translate as “coffee for all”; “cafe-“, which

corresponds to “coffee-“; and “brasil”, corresponding to “Brazil”). All disputed domain names also present a

gTLD extension (“.shop”, “.com”, “.site” or “.store”).

Although the addition of other terms (here, “cafeparatodos”, “cafe-“ and “brasil”) may bear on assessment of
the second and third elements, the Panel finds the addition of such does not prevent a finding of confusing
similarity between the disputed domain names and the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.8.

It is also well established that the addition of a gTLD (such as “.shop”, “.com”, “.site” or “.store”) are typically disregarded when determining whether a domain name is confusingly similar to a complainant’s trademark as such is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

Therefore, the Panel finds the disputed domain names are confusingly similar to the Complainants’ trademark and that 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.

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Having reviewed the available record, the Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainants’ prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the
Policy or otherwise.

Based on the available record, the Panel finds no indication that the Respondent is commonly known by the disputed domain names.

The Complainants have asserted, and the Respondent has not refuted, that the Respondent is not an authorized representative, nor has obtained any permission for registering the disputed domain names. The Panel finds that the nature of the disputed domain names, comprising the Complainants’ trademark – which is famous in Brazil – in connection with the gTLDs “.store”, “.shop”, “.com”, and “.site” (suggesting an official online store for the Complainant’s products or with other terms related to the country where the Complainant’s mark is well known or with coffee, indicate an awareness of the Complainants and their trademark and an intent to take unfair advantage of such, which does not support a finding of any rights or legitimate interests.

Based on the available record, 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.

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 names include the distinctive and well-known trademark PILAO in its entirety and the PILÃO trademark minus the tilde. According to the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a

famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

When the disputed domain names were registered in 2025, the PILAO and PILÃO trademarks were already famous in Brazil and the terms added to three of the disputed domain names are in Portuguese or relates to that country. The other was registered under the gTLD “.store”, suggesting it may be the official online store for the Complainant’s products.

Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainants’ trademark when registering the disputed domain names and that the registration of the disputed domain names was a mere coincidence.

The disputed domain names do not currently resolve to any active websites.
However, UDRP panels have frequently found that the apparent lack of so-called active use of a domain
name (passive holding) does not prevent a finding of bad faith. See WIPO Overview 3.0, section 3.3;
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid
Corporation v. Jay Strommen, WIPO Case No. D2005-1005.

The Panel notes the composition of the disputed domain names, the notoriety of the Complainant’s trademarks, the Respondent’s failure to come forward with any rights or legitimate interests, the use of a privacy service by the Respondent, and the lack of any plausible justification for the adoption of the terms “cafeparatodospilao”, “cafe-pilao”, “pilaobrasil” and “pilao” by the Respondent.

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Therefore, having reviewed the record, the Panel finds the registration and use of the disputed domain names constitute bad faith under 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 <cafeparatodospilao.shop>, <cafe-pilao.com>, <pilaobrasil.site>, and

<pilao.store> be transferred to the Complainants.

/Rodrigo Azevedo/
Rodrigo Azevedo
Sole Panelist
Date: May 26, 2025

domain names <cafe-pilao.com> and <pilaobrasil.site>. In light of the potential identity theft, the Panel has redacted the Respondent’s
name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer
of the disputed domain names, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1
to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the
exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,

WIPO Case No. D2009-1788.