Luigi Lavazza S.p.A. v Andrew Chee, Rebel X Digital

WIPO Case No. D2025-3218

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. Andrew Chee, Rebel X Digital

Case No. D2025-3218

1. The Parties

The Complainant is Luigi Lavazza S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.

The Respondent is Andrew Chee, Rebel X Digital, Canada.

2. The Domain Names and Registrar

The disputed domain names <lavazzacanada.com> and <lavazzadelivery.com> are registered with

NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2025. connection with the disputed domain names. On August 12, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 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 amendment to the Complaint on August 18, 2025

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”).

On August 18, 2025, the Respondent sent an email to the Center stating that it did not contest the Complaint and consented to the transfer of the disputed domain names. On August 19, 2025, the Center sent an email communication to the Parties outlining the procedures should they wish to explore settlement options. On

the same day, the Respondent copied the Center on an email to the Complainant declining the
Complainant’s request for reimbursement of costs as a condition of settlement. On August 20, 2025, the
Complainant informed the Center confirming that it did not wish to explore settlement further and requested

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that the case proceed to decision. The Center acknowledged receipt of this communication on August 21,
2025.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the 5, the due date for Response was September 11, 2025. On August 25, 2025, the Respondent submitted a signed Standard Settlement Form to the Center. On September 12, 2025, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Karen Fong as the sole panelist in this matter on September 17, 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

Established in Italy since 1895, the Complainant manufactures and sell coffee products around the world under the brand LAVAZZA. Its trade mark registrations for LAVAZZA include the following:

• European Union Trade Mark Registration No. 000317057 for LAVAZZA registered on May 25, 1998;

• Canada Trade Mark Registration No. TMA248177 for LAVAZZA registered on July 18, 1980;

• Canada Trade Mark Registration No. TMA596897 for LAVAZZA registered on December 9, 2003;

(individually and collectively referred to as the “Trade Mark”).

The Complainant advertises and offers for sale of its coffee products in Canada through its official website for the Canadian market at “

The Respondent, who is based in Canada, registered the disputed domain names on January 10, 2025. At the time of filing of the Complaint, the disputed domain names resolved to pay-per-click (“PPC”) webpages with sponsored links to third party competitor websites which relate to the Complainant’s field of activity (the

“Websites”). An email server has also been configured on each of the disputed domain names. The

Websites are inactive at the time of the writing of this Decision.

On February 13, 2025, the Complainant’s representatives sent a cease and desist letter to the Respondent
using the email addresses that were available in the public WhoIs database. Reminders were sent on

February 25, 2025, and March 19, 2025. The Respondent failed to respond.

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 names.

Notably, the Complainant contends that the disputed domain names are confusingly similar to the Trade and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not contest the Complaint and consented to the transfer of the disputed domain names without any admission of liability or bad faith and without agreement to pay any costs or damages beyond

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the domain transfer itself. It stated that the disputed domain names had been parked using the Registrar’s
default settings and were never used by it for advertising, promotion, or any commercial activity. It
contended that any advertising appearing on the associated webpages was generated automatically by the

Registrar’s parking system.

6. Discussion and Findings

A. Preliminary Issue – Respondent’s Consent to Transfer

The Panel has to consider whether it is necessary to proceed to a reasoned decision in light of the
Respondent’s consent to the transfer of the disputed domain names.

The Panel notes that the Respondent has stated that it does not contest the Complaint and consents to the transfer of the disputed domain names, while doing so without any admission of liability or bad faith and without agreement to pay any costs or damages beyond the domain transfer itself. The Respondent has explained that any use of the disputed domain names was generated automatically by the Registrar’s parking system and was not the result of any intentional action on its part. The Panel considers that in circumstances of this case, it is open to the Panel to decide whether or not to issue a decision on the merits (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10).

The Panel notes that the Complainant was entitled to set its own conditions as part of settlement discussions, and was likewise entitled to request that the matter proceed to a decision notwithstanding the Respondent’s consent to the transfers. In its correspondence to the Center, the Complainant stated that it did not wish to suspend the proceedings to explore settlement further and wished to obtain a decision as soon as possible in order to secure the transfer of the disputed domain names. The Panel further notes that while consenting to the transfer, the Respondent appears to deny its bad faith by stating “This consent is provided without admission of liability or bad faith”. In these circumstances, the Panel considers it appropriate to issue a reasoned decision addressing the elements of the Policy.

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 identity or confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Trade Mark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the Trade Mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of the other terms here, “canada” and “delivery”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms do not prevent a finding of confusing similarity between the disputed domain names and the Trade Mark for the purposes of the Policy. WIPO Overview

3.0, section 1.8.

Based on the available record, 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

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rights or legitimate interests in a disputed domain name.

While 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 often impossible 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. 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 record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. 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 names such as those enumerated in the
Policy or otherwise.

Moreover, the nature of the disputed domain names is inherently misleading as it effectively impersonate or suggest sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

Based on the available record, the Panel finds the second element of the Policy has been established.

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 must have been aware of the Trade Mark when it registered the disputed domain names given the reputation of the Trade Mark and the fact that it was registered decades prior to registration of the disputed domain names. It is therefore implausible that the Respondent was unaware of the Complainant when it registered the disputed domain names.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s

mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with the Respondent’s choice
of the disputed domain names without any explanation is also a significant factor to consider (as stated in
WIPO Overview 3.0, section 3.2.1). The disputed domain names fall into the category stated above and the

Panel finds that registration is in bad faith.

The disputed domain names are also being used in bad faith.

The Respondent claims that the disputed domain names have been parked using the Registrar’s default settings. In this regard, the Panel notes from section 3.5 of the WIPO Overview 3.0 that “with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim

responsibility for content appearing on the website associated with its domain name”. It is highly likely that

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Internet users, when typing the disputed domain names into their browser, or finding them through a search an aspect of the Complainant’s business in the other.
engine, would have been looking for a website operated by the Complainant rather than the Respondent.
The disputed domain names are likely to confuse Internet users trying to find the Complainant’s website.
Such confusion will inevitably result due to the fact that the disputed domain names comprise the

The Respondent employs the reputation of the Trade Mark to mislead users into visiting the disputed domain names instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for possible commercial gain, by misleading Internet users into believing that the

Respondent’s Websites are those of or authorised or endorsed by the Complainant.

Further, based on the available record, the Panel notes that a mail server has been configured on the disputed domain names.

Section 3.4 of WIPO Overview 3.0 states as follows:

“Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or

confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices
by the complainant’s actual or prospective customers.”

Although there is no evidence that the Respondent has actually sent phishing or fraudulent emails so far, the presence of an email server configured to the disputed domain names is an indicator that the disputed domain names could potentially be used to perpetuate phishing schemes and other email scams. Considering the circumstances, the Panel considers this further supports its finding of the Respondent’s bad faith.

The fact that the disputed domain names are no longer active does not preclude a finding of bad faith.

The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 <lavazzacanada.com> and <lavazzadelivery.com> be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: October 6, 2025