Koninklijke Douwe Egberts B.V. v Domain Admin, Privacy Protect LLC

WIPO Case No. D2025-2976

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Koninklijke Douwe Egberts B.V. v. Domain Admin, Privacy Protect LLC
PrivacyProtect org

Case No. D2025-2976

1. The Parties

The Complainant is Koninklijke Douwe Egberts B.V., Netherlands (Kingdom of the), represented by Ploum,

Netherlands (Kingdom of the).

The Respondent is Domain Admin, Privacy Protect LLC PrivacyProtect org, United States of America.

2. The Domain Name and Registrar

The disputed domain name <tassimooriginalsenegal.com> is registered with GMO Internet, Inc. d/b/a

Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2025. On
July 25, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 28, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on July 31, 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 on the same day.

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 August 4, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was August 24, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 29, 2025.

page 2

The Center appointed Tao Sun as the sole panelist in this matter on September 8, 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 part of JDE group which holds a coffee and tea portfolio including many famous household names such as Jacobs, Tassimo, Moccona, etc. Under Tassimo brand the Complainant offers coffee pods and stylish coffee machines in the United Kingdom, European Union and many other countries worldwide and acquire certain reputation through uses.

The Complainant owns, among others, the following registered trademarks:

(i)      The European Union registration No. 005416458 TASSIMO in classes 11, 21 and 30, registered on

August 20, 2007;

(ii) The International registration No. 782380 TASSIMO in classes 9, 11, 21 and 30, registered on June 18, 2002, designating among others Australia, China, the United Kingdom, and the Russian Federation; and

(iii) The International registration No. 1356617 TASSIMO and device in classes 11, 21 and 30, registered on April 21, 2017, designating among others the European Union, China, and the Russian Federation.

The Complainant owns and operates the domain name <tassimo.com>.

The disputed domain name was registered on June 1, 2025. According to the evidence submitted by the Complainant, the disputed domain name is being used in connection with a website that allegedly markets and sells coffee products with Tassimo brand. In the upper left corner of the webpages, a Tassimo logo was displayed which is highly similar to the mark of the International registration No. 1356617 and the one used on the Complainant’s website “

The Respondent is reportedly Domain Admin, Privacy Protect LLC PrivacyProtect org, United States of
America.

The Complainant sent a letter to the email address which was listed on the website at the disputed domain name on July 7, 2025, requesting the Respondent to, among others, transfer the disputed domain name to the Complainant, followed by a reminder letter on July 17, 2025. No response was received by the

Complainant.

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:

(i)        The disputed domain name is confusingly similar to the Complainant’s TASSIMO trademark, as it

incorporates the TASSIMO Trademark in its entirety, to which the Respondent has added the descriptive
term “original” and the geographical term “senegal”.

page 3

(ii) The Respondent has no rights or legitimate interests in the disputed domain name. To the best of the Complainant’s knowledge and belief, the Respondent is not commonly known under the names “Tassimo”, “Tassimo Original”, or “Tassimo Original Senegal”, nor has the Respondent acquired any trademark or service rights. The Respondent is not affiliated with the Complainant and the Complainant has not licensed or otherwise permitted the Respondent to use the TASSIMO trademarks or to register a domain name incorporating these trademarks. The use of the TASSIMO trademark by the Respondent can in no event lead to a legitimate interest for the Respondent as it fails to pass the Oki Data test.

(iii) The disputed domain name has been registered and used in bad faith. Due to the fact that TASSIMO

is a well-known brand, the fact that the TASSIMO trademark is highly distinctive and given the great
similarities between the TASSIMO trademark and the disputed domain name, the Respondent must have
been aware of the Complainant and the TASSIMO trademark. The contents of the website at the disputed
domain name also demonstrate the Respondent’s intent to rely on a risk of confusion with the Complainant’s
activities and the TASSIMO trademark as to the source, sponsorship, affiliation, or endorsement of the
disputed domain name and the website associated with it.

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 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 disputed domain name is consisted of “tassimo”, “original” and “senegal”. The Complainant’s TASSIMO trademark can be easily recognized in the disputed domain name. Therefore, it should be considered confusingly similar with the Complainant’s trademark for purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms “original” and “senegal” 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.

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

page 4

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 Complainant has asserted that the Respondent is not affiliated with the Complainant and the Complainant has not licensed or otherwise permitted the Respondent to use the TASSIMO trademarks or to register a domain name incorporating these trademarks. The disputed domain name resolves to a website purportedly offering for sale coffee products with TASSIMO trademarks. It calls itself “Tassimo Original Senegal”, implying that it is the official business of Tassimo in Senegal. It also prominently displays a logo very similar to the mark registered and used by the Complainant. As such, no matter the Tassimo coffee products offered for sale on the Respondent’s website are genuine or not, such use fails to pass the Oki Data test as the site does not accurately and prominently disclose the Respondent’s relationship with the Complainant. WIPO Overview 3.0, section 2.8. Moreover, the disputed domain name itself carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1.

The Panel therefore 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’s TASSIMO trademark is inherently distinctive and has acquired certain reputation through use. The disputed domain name contains the entirety of the Complainant’s TASSIMO trademark with the addition of “original” and “senegal”, which can easily be understood to represent the TASSIMO’s Senegal business. Therefore, the composition of the disputed domain name may mislead Internet users into thinking it relates to the Complainant. In addition, the adoption of a logo very similar to that registered and used by the Complainant also suggests that the Respondent knew of the Complainant and its TASSIMO trademark and registered the disputed domain name in bad faith.

Furthermore, the fact that the disputed domain name resolves to a website where the TASSIMO branded products are offered for sale and the similar logo is displayed may mislead consumers into believing that the website is the official Senegalese website of the Complainant. The Panel is therefore convinced that the Respondent was aware of the Complainant’s TASSIMO trademark and intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and therefore is using the disputed domain name in bad faith.

Last but not the least, the Respondent’s failure to respond to the letter of the Complainant, its adoption of the privacy service to hide its identity as well as its failure to file any formal response all support a finding of bad faith.

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

page 5

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 <tassimooriginalsenegal.com> be transferred to the Complainant.

/Tao Sun/
Tao Sun
Sole Panelist
Date: September 22, 2025