Luigi Lavazza S.p.A. v Name Redacted

WIPO Case No. D2025-3222

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Luigi Lavazza S.p.A. v. Name Redacted

Case No. D2025-3222

1. The Parties

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

Respondent is Name Redacted[1].

[1]It appears from the Case File that Respondent as the underlying registrant of the disputed domain name has used the name and

2. The Domain Name and Registrar

The disputed domain name <lavazzaus.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 August 12, 2025. On August 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 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 Complainant on August 14, 2025, 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 August 18, 2025.

page 2

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 Respondent of the Complaint, and the proceedings commenced on August 20, 2025. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2025. An informal email communication was sent to the Center by Respondent on September 10, 2025, pursuant to the notification of Respondent’s default.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on September 15, 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

Complainant is a company organized under the laws of Italy that is primarily active in the coffee industry.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to its company name and brand LAVAZZA, inter alia, but not limited to, the following:

- word trademark LAVAZZA, European Union Intellectual Property Office (EUIPO), registration number: 000317057, registration date: May 25, 1998, status: active;

- word trademark LAVAZZA, United States Patent and Trademark Office (USPTO), registration number: 1201336, registration date: July 13, 1982, status: active.

Moreover, Complainant has demonstrated to own since 1996, amongst many others, the domain name
<lavazza.com>, used to operate Complainant’s main website at “ promoting, inter alia,
Complainant’s coffee products and related services internationally, including in the United States of America

(“United States”).

Respondent, according to the Registrar verification, is located in the United States.

The disputed domain name was registered on September 20, 2019; it previously didn’t resolve to any active website and, at the time of filing of the Complaint, it redirects to a website operated by the Registrar where it is offered for sale, together with a form to inquire about the price offered for it.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends that it was first established in 1895, named by the family name of Complainant’s founder, and has since developed and now belongs to the top 50 brands in Europe in terms of presence and recognition with more than 5,500 employees as well as direct subsidiaries and a wide distribution network operating in over 140 countries, which is why its LAVAZZA trademark is meanwhile well known worldwide.

page 3

Complainant submits that the disputed domain name is confusingly similar to Complainant’s LAVAZZA trademark, as it wholly incorporates the latter and differs only by the mere addition of the two letters “us” which can be interpreted as a geographical indicator for the United States. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not a licensee, an authorized agent of Complainant or in any other way authorized to use Complainant’s LAVAZZA trademark or the disputed domain name, (2) Respondent obviously is not commonly known by a name corresponding to the disputed domain name as an individual, business, or other organization, (3) Respondent clearly registered the disputed domain name in order to derive profit from its sale which cannot of itself confer rights or legitimate interests therein, (4) LAVAZZA corresponds with the surname of Complainant’s founder and family and has no meaning in foreign languages, and (5) the composition of the disputed domain name, combining Complainant’s LAVAZZA trademark with the geographical indicator “us” - referring to the United States - carries a high risk of implied affiliation with Complainant. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) in light of Complainant’s use of the LAVAZZA trademark since as early as 1895 and of the amount of advertising and sales of Complainant’s products in Europe and worldwide, Respondent could not have possibly ignored the existence thereof at the time of registration of the disputed domain name with which it is confusingly similar, (2) in light of the distinctiveness or reputation of Complainant’s LAVAZZA trademark, Respondent clearly acted in opportunistic bad faith, since it obviously registered the disputed domain name with full knowledge of Complainant and its trademark for the purpose of taking commercial advantage thereof, (3) such Respondent’s intention to derive profits is also clearly demonstrated by the redirection of the disputed domain name to a Registrar’s website where it is offered for sale, together with a form to inquire about the price offered for it, and (4) Respondent failed to reply to Complainant’s cease-and- desist letter which is an additional circumstance evidencing bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which Complainant has rights; and

(ii)       that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate.

A. Identical or Confusingly Similar

First, 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 Complainant’s LAVAZZA trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Complainant has shown rights in respect of its LAVAZZA trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1. The entirety of such trademark is reproduced within the disputed domain
name, simply added by the term “us”. Accordingly, the disputed domain name is confusingly similar to
Complainant’s LAVAZZA trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

page 4

Although the addition of other terms (here, the geographic term “us”) may bear on assessment of the second
and third elements, the Panel finds the addition of such term does not prevent a finding of confusing
similarity between the disputed domain name and Complainant’s LAVAZZA trademark for the purposes of

the Policy. WIPO Overview 3.0, section 1.8.

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

B. Rights or Legitimate Interests

Second, paragraph 4(c) of the Policy provides a list of circumstances in which 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 Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted 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.

Respondent has not been authorized to use Complainant’s LAVAZZA trademark, either as a domain name or in any other way. Also, there is no evidence to consider that Respondent’s name would somehow correspond with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term and the family name of Complainant’s founder “Lavazza” on its own. Finally, Respondent so far obviously has neither used the disputed domain name for a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose, but rather to offer it on the Internet for sale. UDRP panels have recognized that holding a domain name for resale can be bona fide and is not per se illegitimate under the UDRP (see WIPO Overview 3.0, section 2.1) but have also found that the mere registration of such a domain name does not by itself automatically confer rights or legitimate interests (see WIPO Overview 3.0, section 2.10.1). Moreover, given that the disputed domain name fully incorporates Complainant’s undisputedly well-known LAVAZZA trademark, merely added by the geographical identifier “us” for the United States where Complainant undisputedly has business, the Panel finds that by offering it for sale Respondent has intended to capitalize on the reputation and goodwill inherent in Complainant’s LAVAZZA trademark, which cannot constitute fair use and, thus, cannot confer rights or legitimate interests therein.

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

C. Registered and Used in Bad Faith

Third, 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 a significant number of circumstances indicating that the disputed domain name was registered by Respondent for the purpose of selling it to Complainant as the LAVAZZA trademark owner. These include e.g.: (1) the nature of the disputed domain name which wholly incorporates

page 5

WIPO Overview 3.0, section 3.1.1), which, in turn, is evidencing the registration and use of the disputed domain name in bad faith.

the LAVAZZA trademark combined with the geographic term “us” referring to the United States, (2) the LAVAZZA trademark rights when registering the disputed domain name, and (4) Respondent’s failure to present a credible evidence backed rationale for registering the disputed domain name, e.g., by submitting a Response. UDRP panels widely agree that those circumstances allow to conclude that Respondent has registered or acquired the disputed domain name primarily to sell it to Complainant for valuable consideration in excess of Respondent’s costs related to the disputed domain name as set forth by paragraph 4(b)(i) of the Policy (see

undisputed worldwide distinctiveness of the LAVAZZA trademark, including in the United States, (3)

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

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, <lavazzaus.com>, be transferred to Complainant.

/Stephanie G. Hartung/
Stephanie G. Hartung
Sole Panelist
Date: September 26, 2025

contact details of a third party when registering the latter. In light of the potential identity theft, the Panel has redacted Respondent’s
name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer
of the disputed domain name which includes Respondent’s name. The Panel has authorized the Center to transmit Annex 1 to the
Registrar as part of the order in these proceedings, and has indicated Annex 1 to this Decision shall not be published due to the
exceptional circumstances of this case. See ASOS plc. v. Name Redacted, WIPO Case No. D2017-1520; Banco Bradesco S.A. v.
FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.