Luigi Lavazza S.p.A. v ASHRAF MOHAMED

WIPO Case No. D2025-3053

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. ASHRAF MOHAMED

Case No. D2025-3053

1. The Parties

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

The Respondent is ASHRAF MOHAMED, Egypt.

2. The Domain Name and Registrar

The disputed domain name <lavazzaeg.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2025.
On July 31, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 31, 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 (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on August 4,
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 4, 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the the due date for Response was August 25, 2025. The Respondent sent informal email communications to the Center on August 5, 2025, August 6, 2025, August 7, 2025, August 11, 2025 and August 12, 2025. The Response was filed with the Center on August 11, 2025.

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The Center appointed Warwick Smith as the sole panelist in this matter on August 19, 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 Italian joint-stock company, established in 1927. It has since expanded its commercial operations in Italy and into Europe and around the world. According to the Complaint, it now has approximately 45 per cent of the Italian retail market for its coffee products, and its LAVAZZA mark is one of the top 50 brands (in terms of presence and recognition) in Europe.

The Complainant manufactures and sells a broad range of espresso blends, capsules and coffee machines, trading under the marks A MODO MIO, LAVAZZA ESPRESSO POINT, and LAVAZZA BLUE.

The Complainant says that its LAVAZZA brand now enjoys worldwide recognition. The brand is promoted by extensive advertising campaigns, including by the production and distribution of a “Lavazza Calendar”. In support of its claim to worldwide brand recognition, the Complainant produced copies of press clippings confirming that recognition, some images of the LAVAZZA calendar, and some images from successful television advertising campaigns.

The Complainant now has more than 5,500 employees worldwide, and it operates through directly-owned subsidiary companies and a network of distributors in more than 140 countries. In 2024, it achieved revenues of EUR 3.35 billion, an increase of 9 per cent over its 2023 reported revenues.

The Complainant is the proprietor of a number of European Union and International Registrations of the word mark LAVAZZA. The International Registrations include International Registration No. 317174, registered on July 18, 1966, covering a variety of goods in International Classes 29, 30 and 31 and designating, among

other countries, Egypt (where the Respondent appears to reside). The Complainant also refers to in International Class 21. Again, Egypt is one of the designated countries in registration No. 450754.

In addition to its registrations of the LAVAZZA trademark, the Complainant has registered over 600 domain names that include the LAVAZZA mark. These include the domain name <lavazza.com>, at which the Complainant operates its principal website. Through its principal website, the Complainant not only describes and promotes its company and coffee products but also provides information about Italian espresso coffee and Italian culture generally.

The disputed domain name was registered on February 13, 2025. When the Complaint was filed, the disputed domain name directed to a webpage (“the Respondent’s Website”) displaying an image of coffee beans and a contact form. The webpage indicated that it was operated by “Lavazza Retail Egypt”.

5. Parties’ Contentions

A. Complainant

The Complainant contended that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. It contended that the disputed domain name is confusingly similar to its LAVAZZA mark, that the Respondent had no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and was being used, in bad faith.

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B. Respondent

The Respondent sent a number of email communications to the Center on August 5, 2025, in which he indicated his wish to settle the matter by transferring the disputed domain name to the Complainant, adding that he does not “plan to contest the Complaint”.

On August 7, 2025, the Complainant advised that it was not willing to suspend the proceedings in order to explore the possibility of settlement, and that it was “[…] keen to proceed to decision in the present case”, and that it wanted to obtain a decision on its Complaint, and a transfer of the disputed domain name to it.

The Respondent sent a reply to the Complainant’s representative the same day. In this email communication, the Respondent reiterated that he did not intend to “contest” the UDRP Complaint, and that he respected the Complainant’s request for a transfer of the disputed domain name and confirmed his willingness to proceed with the transfer. The Respondent asked if the Complainant was open to finalizing the settlement, or if he should proceed with a formal UDRP response. He concluded the email by stating that his message was not an admission of liability or acceptance of any legal obligations, and by asking for guidance on the next steps to secure a prompt resolution.

The Respondent repeated his offer to settle by transferring the disputed domain name to the Complainant in a further email communication sent on August 7, 2025. He advised that, should the Complainant prefer to proceed with the panel decision, he would submit his formal response by August 25, 2025, as required.

On August 11, 2025, the Respondent sent an email to the Center, copied to the Complainant’s representative, saying that he had not received a reply to his email communication of August 7, 2025. He asked if the Complainant was willing to proceed with a transfer of the disputed domain name. If settlement was not possible, he asked for confirmation that he might proceed with submitting his formal response that week.

On August 11, 2025, the Respondent submitted the following by way of formal response to the Complaint:

“I [Respondent’s name] […] hereby consent to the transfer of [the disputed domain name] to the findings on the merits of the case or any determination of bad faith. This request is made solely to facilitate a prompt resolution of the matter and does not amount to admission of liability or wrongdoing, or acceptance of any legal obligation, present or future.

I appreciate the Panel’s consideration and confirm my full cooperation in completing the transfer.”

In response to a query from the Center dated August 12, 2025, the Respondent confirmed by email dated August 12, 2025 that his email dated August 11, 2025 and the “formal response” document quoted above, together constituted his complete and final Response in the proceedings.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant is required to establish each of the following:

(i)        the 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 domain name; and

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

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A. Preliminary Issue – the Respondent’s Consent to Transfer the Disputed Domain Name

Section 4.10 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”) addresses the question of how panels should handle cases involving a respondent’s
informal or unilateral consent for the transfer of the domain name to the complainant outside the “standard

settlement process” (referred to earlier in WIPO Overview 3.0).

Section 4.10 provides:

“Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a
panel decision using the ‘standard settlement process’ described above, but where the respondent has
nevertheless given its consent on the record to the transfer….remedy sought by the complainant, many
panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives
effect to an understood party agreement as to the disposition of their case (whether by virtue of a deemed

admission, or on a no-fault basis).

In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to
proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so
include (i) where the panel finds a broader interest in recording a substantive decision on the merits –
notably recalling UDRP paragraph 4(b) (ii) discussing a pattern of bad faith conduct, (ii) where while
consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the
complainant has not agreed to accept such consent and has expressed a preference for a recorded decision,
(iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to
be certain that the complainant has shown that it possesses relevant trademark rights.”

Looking at the relevant decisions on this issue that are cited in WIPO Overview 3.0, the Panel notes that in John Bowers QC v. Tom Keogan, WIPO Case No. D2008-1720 (“John Bowers QC”), the respondent stated in his response that he had no objection to the transfer of the domain name to the complainant. In deciding whether it was necessary in those circumstances to make findings on each of the elements in paragraph 4 (a) of the Policy, the panel cited the following passage from the decision in the earlier case of The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132:

“[…] A genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4 (a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”

The panel in John Bowers QC referred to a number of other UDRP panel decisions where that approach had been followed, then went on to say:

“There may be circumstances where it is appropriate to proceed to a consideration of the merits of the cybersquatter who has repeatedly sought to avoid such a finding by timely concession [cited decisions omitted]. It is clear that the panel has a discretion to consider the merits where appropriate, even if the respondent has consented to the relief sought by the complainant.”

That summary of the appropriate approach has been followed in later UDRP decisions, including Rockwool International A/S v. Lin Chengxiong, WIPO Case No. D2012-0472, and Arnold Clark Automobiles Limited v. Domain May Be For Sale, Check Afternic.com Domain Admin, Domain Registries Foundation, WIPO Case No. D2016-2035. This Panel is content to adopt that approach in this case.

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Applying that approach, the starting point appears to be that the panel should move straight to the making of a transfer order, unless there are particular circumstances that make it appropriate to address the merits of the complaint. As the panel put it in John Bowers QC:

“In this case, the Panel does not consider it appropriate to address the merits. Whether or not the Domain the Respondent will make abusive registrations of other domain names in the future.”

To similar effect, the panel in Jet2.com v. Contact Privacy Inc. Customer 0130301837/ Jonathan Whittle, WIPO Case No. D2016-0812, after acknowledging its discretion to decide to give a decision on the merits in cases of “unilateral consents” to transfers, concluded on the facts of the case that “[…] there is no good reason not to simply order the transfer of the Domain Names”.

Are there good reasons to give a decision on the merits of the Complaint in this case? The Panel does not believe that there are, for two reasons. First, the Complainant has not expressly opposed the Respondent’s request to have the complaint determined on a “consent” basis. The Complainant’s representatives said, in their email dated August 7, 2025, that they wished to obtain a decision, and transfer of the disputed domain name, as soon as possible, but they did not express any view on how that decision should be made (on a

consent basis, or on a substantive determination of the Complaint). Nor did they seek to file any
supplementary submission opposing the Respondent’s request to have a transfer order made without any

consideration of the merits of the Complaint.

John Bowers QC

Secondly, this does not appear to be a case of the kind posited by the panel in the case, merits appear to have involved situations of that sort, where the respondent has been a “repeat offender” who has sought to delay the (inevitable) transfer of the domain name to the complainant, and to avoid adding to a track record of abusive domain name registration, by making last minute transfer offers after a UDRP proceeding has been commenced. That does not appear to be this case, or at least there is no evidential basis for the Panel to find that it is.

where it might be desirable to make a public finding of bad faith against a serial cybersquatter who has
repeatedly sought to avoid such a finding by making timely concessions once a UDRP proceeding has
commenced. There is no evidence (or allegation) in this case that the Respondent is a serial cybersquatter,
or that he has any history of abusive domain name registration. A number of the decisions cited in

There is no apparent issue in this case over the genuineness of the Respondent’s consent to the transfer of the disputed domain name to the Complainant, nor any other reason to depart from the starting position that the Panel can and should proceed immediately to make an order for transfer. There will be an order

accordingly.

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 <lavazzaeg.com> be transferred to the Complainant.

/Warwick Smith/
Warwick Smith
Sole Panelist
Date: September 2, 2025