Luigi Lavazza S.p.A. v Gasem Barati

WIPO Case No. DIR2025-0002

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. Gasem Barati

Case No. DIR2025-0002

1. The Parties

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

The Respondent is Gasem Barati, Iran (Islamic Republic of).

2. The Domain Name and Registrar

The disputed domain name <lavazza-coffee.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2025. On March 3, 2025, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On March 4, 2025, IRNIC 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 and contact information in the Complaint. The Center sent an email
communication to Complainant on the same day, providing the registrant and contact information disclosed
by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an
amendment to the Complaint on March 4, 2025. Hard copies of the Complaint were received by the Center

on March 3, 2025.

The Center verified that the Complaint and the amendment to the Complaint satisfied the formal
requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir
Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain
Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2025. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2025. The Respondent sent email communications to the

Center on March 5 and 13, 2025. Accordingly, the Center notified Commencement of Panel Appointment
Process on March 31, 2025.

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The Center appointed Alistair Payne as the sole panelist in this matter on April 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.

The Respondent sent new emails on April 3 and April 12, 2025.

4. Factual Background

The Complainant, based in Italy, is an international manufacturer and retailer of coffee and coffee products including espresso blends, capsules and coffee machines. It operates in over 140 countries and has more than 4000 employees and in 2023 the Lavazza Group achieved revenues of EUR 3.1 billion. The

Complainant owns numerous trade mark registrations for or including LAVAZZA, including, International word mark registration number 317174 registered on July 18, 1966, and designated in Iran (Islamic Republic of) and European Union word mark registration number 000317057 registered on May 25, 1998. It also owns more than 600 domain name registrations containing its LAVAZZA trade mark, including <lavazza.com> which was registered on May 19, 1996.

The disputed domain name was acquired by the Respondent and registered in his name on November 16, 2024. It resolves to a website which appears to be in the Persian or Farsi language and which features the LAVAZZA trade mark and also features copies of official content and LAVAZZA product visuals from the

Complainant’s website and promotes or offers for sale LAVAZZA coffee and coffee capsules.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights for its LAVAZZA trade mark. It submits that the disputed domain name incorporates the whole of the Complainant’s trade mark and is therefore confusingly similar to it. It says that the fact that the disputed domain name differs from the Complainant’s trade mark by the addition of the non-distinctive and generic word “coffee” and a hyphen between “lavazza” and “coffee” does not prevent a finding of confusing similarity.

The Complainant submits that the Respondent is not its licensee or authorised agent or reseller and has no Barati, is commonly known by a name corresponding to the disputed domain name whether as an individual, a business, or other organization. Furthermore, says the Complainant, according to the searches performed by it the Respondent does not own any trade mark registrations for LAVAZZA.

permission to use the Complainant’s trade marks or domain names, or to register the disputed domain name.

The Complainant notes that the disputed domain name resolves to a commercial website featuring the identity and contact details on the website at the disputed domain name and the “About Us” section only includes template information which is unrelated to the Respondent or to coffee products. This says the Complainant, suggests that the Respondent has willfully intended to impersonate the Complainant or one of its affiliated entities.

LAVAZZA trade mark and products visuals and offering for sale LAVAZZA products at discounted prices,
without publishing any disclaimer of non-affiliation or concerning the website administrator. The Complainant
asserts that this conduct does not amount to and is not consistent with a bona fide offering of goods or
services or a legitimate non-commercial or fair use without intent for commercial gain, because it amounts to
the Respondent free-riding on the reputation attaching to the Complainant’s trade mark and causing
confusion amongst users as to the source or affiliation of its website and the products offered for sale. The

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As far as registration in bad faith is concerned the Complainant asserts that its mark is extremely well reputed as a consequence of its long established international business and that this has been recognised by panels in a number of past cases. In this light and considering that the LAVAZZA trade mark is displayed on the website to which the disputed domain name resolves, the Complainant says that the Respondent must have been aware of the Complainant’s business and trade marks when it registered the disputed domain name.

The Complainant says that the disputed domain name is used in connection with a commercial website featuring its LAVAZZA trade mark and products visuals and offering for sale LAVAZZA coffee products, without providing any disclaimer of non- affiliation with the Complainant. Such use, says the Complainant,

clearly demonstrates that the Respondent’s purpose in registering and using the disputed domain name was
and is to intentionally attract Internet users seeking the Complainant’s branded products to its own website
for commercial gain, by creating a likelihood of confusion with the Complainant’s trade mark as to the source,
sponsorship, affiliation, or endorsement of its website and the goods offered on said website, in terms of
paragraph 4(b)(iv) of the Policy.

In addition, the Complainant argues that that the configuration of MX (“Mail Exchange”) records supports a finding of bad faith, as does the Respondent’s failure to respond to the cease and desist letter and subsequent reminders.

B. Respondent

The Respondent did not file a formal response but sent short emails on March 5 and March 13, 2025, suggesting that he would “remove” or “disconnect” the disputed domain name. The Respondent subsequently sent emails after the Panel’s appointment, on April 3 and April 12, 2025, concerning its attempts to have the disputed domain name deleted.

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 trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.1

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 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.

Although the addition of other terms may bear upon assessment of the second and third elements, the Panel finds the addition of a hyphen and the word “coffee” 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.

1Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”), the Panel will refer to

the WIPO Overview 3.0 where relevant to this proceeding.

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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 irDRP 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.

The Complainant has submitted that the disputed domain name was registered long after the Complainant’s fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain.

registration or first use of its mark. It has also submitted that there is no evidence that the Respondent,
whose name is Ghasem Barati, is commonly known by a name corresponding to the disputed domain name,
whether as an individual, a business, or other organization. Based on its searches, the Complainant was not
able to identify any trade mark registrations for LAVAZZA owned by the Respondent. The disputed domain
name resolves to a commercial website which, without the Complainant’s permission or authorization,
features the LAVAZZA trade mark and products visuals and offers for sale LAVAZZA products at discounted
prices, without publishing any disclaimer of non-affiliation or concerning the website administrator. The

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.

C. Registered or Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the disputed domain name has been registered or is being 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 registered the disputed domain name in November 2024 many years after the designation and registration of the LAVAZZA mark in Iran (Islamic Republic of), where the Respondent is based. The website to which the disputed domain name resolves appears to be in the Persian or Farsi language and is aimed at an Iranian audience. Considering the degree of repute attaching to the LAVAZZA mark as a consequence of the Complainant’s use of it internationally over many years and of the level of distinctiveness of the LAVAZZA mark and its use on the website to which the disputed domain name resolves in relation to products that appear to be the Complainant’s products, the Panel finds that it is more likely than not that the Iran (Islamic Republic of) based Respondent was well aware of the LAVAZZA mark and of the Complainant’s business when it registered the disputed domain name in late 2024 and therefore that the disputed domain name was registered in bad faith.

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Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.

The disputed domain name resolves to a website at which the Respondent uses without authorization the Complainant’s LAVAZZA mark and its products visuals and offers for commercial sale LAVAZZA coffee products, without providing any disclaimer of non-affiliation with the Complainant. It appears to the Panel that the Respondent has sought to use the disputed domain name to confuse Internet users to be directed to its website at which it masquerades as if it is the Complainant, or has the Complainant’s approval or endorsement to use its marks and promote or sell its products, when this is not the case.

This amounts to use of the disputed domain name to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website and it is more likely than not that this was undertaken for the Respondent’s ultimate commercial gain which fulfills the requirements of paragraph 4(b)(iv) of the Policy and amounts to evidence of registration and use in bad faith.

The Respondent’s failure to respond to the Complainant’s agent’s cease and desist letter and subsequent reminders only reinforces the Panel’s view of the Respondent’s use of the disputed 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 <lavazza-coffee.ir> be transferred to the Complainant.

/Alistair Payne /
Alistair Payne
Sole Panelist
Date: April 16, 2024