Koninklijke Douwe Egberts v Nicolas Seguin

WIPO Case No. D2024-5105

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Koninklijke Douwe Egberts v. Nicolas Seguin

Case No. D2024-5105

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 Nicolas Seguin, France.

2. The Domain Name and Registrar

The disputed domain name <jdecoffee-fr.com> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2024. On December 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On that same day, 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 12, 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 amended Complaint on December 12, 2024.

On December 12, 2024, the Center informed the parties in French and English, that the language of the registration agreement for the disputed domain name is French. On December 12, 2024, the Complainant requested English to 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”).

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In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2025.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 16, 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 affiliated to Jacobs Douwe Egberts (“JDE”), which is itself part of JDE Peet’s. It is a pure play coffee and tea company which manages a portfolio of several household names in the industry including Jacobs, Tassimo, L’Or, and Senseo.

The Complainant is abbreviated as JDE and owns numerous trademarks on a worldwide basis consisting in all or in part of this abbreviation, notably but not only in classes 29, 30, 32 and 43, such as:

- United Kingdom trademark JDE n° UK00801248744 that was registered on March 30, 2016.

- International trademark JDE n° 1248744, that was registered on April 16, 2015.

The Complainant further owns several domain names incorporating the JDE trademark, notably
<jdecoffee.com>.

On September 16, 2024, the Respondent registered the disputed domain name. The Respondent has activated mail exchange (“MX”) services associated with the disputed domain name and is using the email address “[…]@jdecoffee-fr.com” to reach out to third-party businesses.

On November 21, 2024, the Respondent, presenting himself as sales manager and project advisor, placed an online request with a first third-party business in order to receive a quote for 9.000 Christmas cards and chocolate bars. The Respondent introduced itself as a “sales manager” and “project advisor” from Jacobs Douwe Egberts Belgium BV (a subsidiary company of the Complainant). Following this request the

Respondent emailed back and forth with an employee of the third-party business, using the email address
”[…]@jdecoffee-fr.com”. For its email signature, the Respondent used both the address and VAT number of

the Complainant.

Following this email correspondence, the Respondent signed a quote and ordered 9.000 Christmas cards
and chocolate bars together worth EUR 21.560. For its signature the Respondent, again, used the
Complainant’s contact details, address, and VAT number.

A few days later, the Complainant was contacted by another small third-party business located in Belgium which believed that the Complainant had ordered 1.000 gift boxes, 1.000 sets of 8 rolls of transparent crystal foil, and 1.000 rolls of aluminum foil. Again, the Respondent used the email address “[…]@jdecoffee-fr.com” to get in contact with that company. In addition to this, the Respondent once again used the Complainant’s contact details as well as its VAT number in order to place the order.

Following these complaints, on December 3, 2024, the Complainant asked the Registrar to take down the disputed domain name. On December 9, 2024, the Registrar confirmed that it had suspended the disputed domain name.

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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 JDE
trademark as it entirely incorporates such trademark and that the addition of the letters “fr” will be understood
as a reference to France and that term COFFEE as a descriptive term that refers to its core activity.

The Complainant then argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known under the name JDE or JDE COFFEE and does not own any such trademark. The Respondent’s use of the disputed domain name for fraudulent activities, i.e., an impersonation scam, does not amount to a bona fide offering of goods or services.

The Complainant finally asserts that, taking into account the use made of the disputed domain name as described above, the disputed domain name has obviously been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trademark or a 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.

Prior to turning to the merits of the case, the Panel however first has to deal with one procedural issue, namely the language of the proceedings.

A. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is French. 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 disputed domain name was registered in English and that the Respondent proved through the exchanges of emails he had with small businesses to have a good command of the English language.

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The Respondent did not make any specific submissions with respect to the language of the proceeding and did not comment on the Complainant’s request for the language of the proceeding be English.

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, notably the fact that the Respondent proves to understand English and did not oppose to the Complainant’s request, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

B. 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 entirety of the JDE 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.

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

C. 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.

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

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D. 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 uses the disputed domain name for fraudulent activities, namely an impersonation scam. As a result, there is no doubt that the Respondent was aware of the Complainant’s JDE trademarks when he registered the disputed domain name.

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.

Panels have held that the use of a domain name for illegal activity, in the present case an impersonation scam leading users to believe that the emails sent by the Respondent would originate from the Complainant, constitutes bad faith. WIPO Overview 3.0, section 3.4. 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.

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 <jdecoffee-fr.com> be transferred to the Complainant.

/Philippe Gilliéron/
Philippe Gilliéron
Sole Panelist
Date: January 24, 2025