Julius Meinl 1862 GmbH v BergeronRichard

WIPO Case No. D2024-5208

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Julius Meinl 1862 GmbH v. BergeronRichard

Case No. D2024-5208

1. The Parties

The Complainant is Julius Meinl 1862 GmbH, Austria, represented by Freshfields Rechtsanwälte PartG mbB,

Austria.

The Respondent is BergeronRichard, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <meinlcoffee.shop> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2024. On December 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2024, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 23, 2024, 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 amendment to the Complaint on December 23, 2024.

The Center verified that the Complaint together with the amendment to the 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 January 3, 2025. In accordance with the Rules, paragraph
5, the due date for Response was January 23, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on January 30, 2024.

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The Center appointed Anna Carabelli as the sole panelist in this matter on February 3, 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 is an Austrian family business based in Vienna, which provides high quality coffee, tea and related products, from ground and whole beans to hot and cold drinks, with more than 2 billion cups of coffee being consumed every year under the JULIUS MEINL trademark.

As per the undisputed evidence in the Complaint, the Complainant: (i) is the licensee of a number of
trademarks containing and/or consisting of “Julius Meinl” (hereinafter collectively “JULIUS MEINL
Trademark”), which are owned by Excellent Brands JMI Ltd. (Switzerland), and (ii) is authorized to file a
UDRP complaint to request the transfer of the disputed domain name.

The JULIUS MEINL Trademark portfolio licensed to the Complainant includes the marks MEINL and JULIUS jurisdictions, including the following:

- United States JULIUS MEINL trademark registration No. 2,333,616 (word mark), registered on March 21, 2000 in classes 29 and 30.

- United States JULIUS MEINL trademark registration No. 2,887,111 (word mark), registered on

September 21, 2004 in classes 29 and 30;

- United Kingdom MEINL trademark registration No. UK00915498223 (figurative), registered on

December 16, 2016 in classes 29, 30, 33, 35 and 43.

Employing about 1,000 people worldwide, the Complainant represents Viennese coffee culture worldwide,
including online through its website “ which provides details about the Complainant
and its products and services.

The disputed domain name was registered on August 14, 2024. As per the evidence provided with the Complaint, the disputed domain name resolves to an active website purportedly offering JULIUS MEINL branded products, and displaying the following copyright notice: “COPYRIGHT 2024 © JULIUS MEINL COFFEE EMPORIUM”.

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 JULIUS MEINL Trademark is internationally well-known;

- the disputed domain name is identical and/or confusingly similar to the JULIUS MEINL Trademark, since it incorporates the entire MEINL trademark and the dominant element “meinl” of the JULIUS MEINL trademark, with the mere addition of the descriptive term “coffee”;

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- the Respondent has no rights or legitimate interests in the disputed domain name. In this regard the

Complainant contends that: (i) the Respondent holds no license to use the JULIUS MEINL Trademark. Neither the Complainant nor the trademark owner has otherwise permitted the Respondent to use the trademark or apply for or use any domain name incorporating the trademark; (ii) the Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use, as it does not make clear that it has no official affiliation with the Complainant but rather emphasizes the affiliation with the Complainant and misleadingly diverts consumers and tarnishes the JULIUS MEINL Trademark;

- the disputed domain name was registered and is being used in bad faith. Due to the notoriousness of source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. This is evidenced by the fact that the Respondent allegedly claims that it holds a copyright license to use the JULIUS MEINL Trademark, by displaying on its website the notice “COPYRIGHT 2024 © JULIUS MEINL COFFEE EMPORIUM”. the JULIUS MEINL Trademark internationally, the Respondent must have been aware of the registration of	this trademark at the moment of registering the disputed domain name. Further, by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain Internet users to the
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in a disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above.
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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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.

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The disputed domain name incorporates the entire MEINL trademark and the dominant element “meinl” of
the JULIUS MEINL trademark. Accordingly, the disputed domain name is confusingly similar to the JULIUS

MEINL Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The content of the website associated with the disputed domain name confirms the confusing similarity.

WIPO Overview 3.0, section 1.15.

The addition of the generic Top-Level Domain, such as “.shop”, is viewed as a standard registration
requirement and as such is typically disregarded under the first element confusing similarity test.

WIPO Overview 3.0, section 1.11.1.

Although the addition of other terms, here the descriptive word “coffee”, 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.

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.

Moreover, as noted in Section 6.A above, the disputed domain name incorporates the Complainant’s MEINL Trademark together with the term “coffee”, which carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1. Indeed, as per the uncontested evidence submitted with the Complaint, the Respondent has used the disputed domain name to operate a website offering allegedly JULIUS MEINL branded products. There is not any disclaimer on the website disclosing the (lack of) relationship between the Parties. This cannot constitute fair use.

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.

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In the present case, in the Panel’s view it is difficult to believe that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name. According to the uncontested evidence submitted with the Complaint, the disputed domain name resolves to a website purportedly offering the Complainant’s products, and displaying the copyright notice “COPYRIGHT 2024 © JULIUS MEINL COFFEE EMPORIUM”. This indicates that the Respondent knew and targeted the Complainant when registering the disputed domain name and suggests that the disputed domain name was registered in bad faith with a deliberate intent to create an impression of an association with the Complainant and to mislead Internet users into believing the disputed domain name as an official domain name of the Complainant.

By directing the disputed domain name to a commercial website allegedly offering the Complainant’s goods, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website (see section 3.1.4 of the WIPO Overview 3.0).

Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith.

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 <meinlcoffee.shop> be transferred to the Complainant.

/Anna Carabelli/
Anna Carabelli
Sole Panelist
Date: February 16, 2025