Tpresso SA v. Italytrade S.R.L. (Italytrade S.r.l.)
Case No. D2015-1261
1. The Parties The Complainant is Tpresso SA of Zürich, Switzerland, represented by Troesch Scheidegger Werner AG, Switzerland.
The Respondent is Italytrade S.R.L. of Bari, Italy represented by Avv. Natale Clemente, Italy.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2015. On July 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on July 28, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2015. The Response was filed with the Center on August 21, 2015.
The Center appointed David Taylor as the sole panelist in this matter on September 4, 2015. 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 a company based in Switzerland that offers tea capsules under the trade mark TPRESSO. It owns International Trade Mark Registration No. 1077699 in TPRESSO, registered on December 15, 2010 for goods in classes 11 and 30, mainly tea capsules and machines for the preparation of hot beverages, particularly for the preparation from capsules of non-medicinal infusions and teas. Its main website is available at “www.tpresso.com”.
The Respondent is a company based in Italy that manufactures tea, coffee (and other infusions) in “Nespresso” compatible capsules that are also compatible with the Respondent’s own “Espressina” machine. The Respondent manufactures and sells its tea capsules under the TEESPRESSO and TESPRESSO trade marks (and its coffee capsules under the CAFFE OTTAVO brand). The Respondent’s community trade mark application for TESPRESSO filed in 2013 before the Office for Harmonization in the Internal Market (OHIM) was successfully opposed by the Complainant. The Respondent however filed an appeal before the Board of Appeals which is currently pending. In 2015, the Complainant commenced another opposition proceeding before OHIM against the registration of the Respondent’s community trade mark application in the term TEESPRESSO, which is also currently pending.
The Domain Names were registered in 2010 and 2012, specifically was registered on November 21, 2010 and on November 9, 2012. However, they were acquired by the Respondent in 2013 and in 2014. The Domain Name redirects to the website “www.teespresso.com”, where the Respondent offers its tea products.
5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights. The Complainant argues that, visually, the terms “tespresso” and “teespresso” in the Domain Names are similar to the Complainant’s TPRESSO trade mark to the extent that they coincide in seven letters, namely “t-*-*-p-r-e-s-s-o” and “t-*-*-*-p-r-e-s-s-o”. It also argues that aurally, irrespective of the different pronunciation rules in different languages, the pronunciation of the Domain Names coincides in the sound of the letters “t-pre-sso”, which is identical to TPRESSO. The Complainant further argues that the only difference in the pronunciation lies in the additional letter “s” present in the Domain Names, given that in some languages, such as German, Italian, French, Portuguese and Spanish, the letter “t” will be pronounced “te”. The Complainant argues that the Domain Names are nevertheless highly similar aurally. In English “te” and “tee” are pronounced as “t” and “tea”, respectively. The Complainant contends that the relevant public will, in connection with the claimed or offered goods, perceive the beginning of the trade mark TPRESSO and the Domain Names as referring to tea. It further argues that the average consumer of the concerned identical products, which are intended for the public at large, will be confused as to the origin of those goods. The Complainant thus argues that there exists a clear likelihood of confusion between the Domain Names and the products offered by the Respondent and the trade mark in which the Complainant has rights.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names. It argues that the Respondent is not commonly known by the Domain Names. It further argues that the Domain Name was only used in 2015 even though it appears to have been created on November 21, 2010 and that it was then given up for which appears to have been created on November 9, 2012. The Complainant further argues that the Respondent is making a nonlegitimate commercial, unfair use of the Domain Names with the intent for commercial gain, misleading and diverting the public from the Complainant’s original website available at “www.tpresso.com”, which is based on its International Trade Mark Registration No. 1077699, in use since at least 2011.
The Complainant also contends that the Respondent has registered and used the Domain Names in bad faith. The Complainant argues that by using the Domain Names the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s TPRESSO trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products offered on the Respondent’s website. The Complainant asserts that it is the original provider of tea capsules for the original TPRESSO system and that the TPRESSO trade mark is known in that market segment.
B. Respondent The Respondent argues that the Domain Names are not confusingly similar to the Complainant’s TPRESSO trade mark. The Respondent asserts that the Domain Names are inspired by the Italian words “te” and “espresso”, which is also known in English and Italian in relation to coffee and the like. It argues that the Complainant’s TPRESSO trade mark does not evoke anything and has no recognizable meaning, associated or confusingly similar to TESPRESSO or TEESPRESSO, nor with the Italian terms “te” and “espresso”. It further argues that the trade mark TPRESSO is not a significant trade mark. The Respondent also contends that the Complainant’s website available at “www.tpresso.com” does not appear by entering the terms “tespresso” or “teespresso” on a search engine and vice versa. The Respondent further contends that there is no proximity and/or similarity, whether visual, aural or conceptual, between the Complainant’s trade mark and the Domain Names and that a likelihood of confusion and/or association does not exist.
The Respondent argues that it has rights or legitimate interests in the Domain Names. It asserts that since 2013 it manufactures in its factory tea and other infusions in “Nespresso” compatible capsules that may be used with its “Espressina” machine and other compatible machines for the preparation of tea. The Respondent further asserts that the Complainant’s TPRESSO system has nothing to do with the “Nespresso” capsules and it is not compatible with the “Nespresso” system. The Respondent further claims that it has been using the trade mark TESPRESSO since 2013 and TEESPRESSO since 2014 and that it purchased the Domain Name (which redirects to “www.teespresso.com”) in 2013 and in 2014. The Respondent further asserts that it is making limited use of its website and its TESPRESSO and TEESPRESSO trade marks as a precaution as in 2013 the Complainant filed an opposition against the Respondent’s community trade mark application for TESPRESSO before OHIM. The Respondent explains that it has appealed the ruling in favor of the Complainant and that the appeal is currently pending. The Respondent further asserts that in 2015 the Complainant initiated another opposition proceeding against its TEESPRESSO trade mark which is also currently pending. Thus the Respondent argues that it is clear that it has rights or legitimate interests in the Domain Names.
The Respondent contends that it has not registered and used the Domain Names in bad faith. It argues that it is simply pursuing a legitimate project (manufacturing of “Nespresso” compatible coffee and tea capsules in its factory with its machinery and marketing such capsules using its own trade marks) which differs considerably from the Complainant’s, in terms of names and content.
6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 10 of the Rules further provides that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Names, the Complainant must prove each of the following elements:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
The Panel shall therefore proceed to examine whether the Complainant has discharged the burden of proof in respect of each of the aforementioned three elements and decides as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider whether the Complainant has rights in a trade mark or service mark to which the Domain Names are identical or confusingly similar. There is no question that the Complainant has rights in the term TPRESSO, as evidenced by the Complainant’s international trade mark registration. However, whether the Domain Names are identical or confusingly similar to the Complainant’s TPRESSO trade mark is not as straightforward.
The Panel observes that the second level of the Domain Names consists of the terms “tespresso” and “teespresso”. Visually, it can be said that the Complainant’s trade mark is recognizable within the Domain Names. The difference between the Domain Names and the Complainant’s trade mark consist of the presence of the letters “es” in the case of the Domain Name and the letters “ees” in the case of the Domain Name . There are also aural similarities between “tespresso” and “teespresso” and the Complainant’s TPRESSO trade mark, in spite of the presence of the consonant “s”. Furthermore, conceptually, the Domain Names begin with “te”, which refers to “tea” in Italian (as well as in other languages such as Spanish) and also contain the generic term “espresso”, which means “fast” in Italian. Thus there are visual, aural and conceptual similarities between the Complainant’s trade mark and the Domain Names, although the visual and aural components are arguably weaker given the additional letters in the Domain Names, particularly the consonant “s”.
The top-level suffix “.com” is generally disregarded in assessing whether a domain name is identical or confusingly similar to a trade mark (as it is a technical requirement of registration).
The first element of the Policy is essentially a “low threshold”, standing requirement and so the Panel finds that the Domain Names are confusingly similar to the Complainant’s TPRESSO trade mark for the purpose of this test. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Names. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances which a respondent may rely on to establish rights or legitimate interests, including but not limited to:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Whilst the overall burden of proof rests with the complainant, it has been recognized by UDRP panels that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant. See paragraph 2.1 of the WIPO Overview 2.0.
The Panel has considered the arguments and evidence put forward by the parties and on balance finds that the Respondent is able to claim rights or legitimate interests in the Domain Names.
The Complainant’s trade mark is a registered trade mark that predates the date of acquisition of the Domain Names by the Respondent. However, the Complainant has not put forward any arguments or evidence that would suggest that the Respondent had knowledge of the Complainant’s rights at the time of registration (at least at the time the Respondent acquired the Domain Name in September 2013, prior to the opposition proceeding initiated by the Complainant), although it may well be the case given that the Respondent operates in the same sector and the geographical proximity between Switzerland and Italy, where the parties are based. The Respondent however has not admitted or denied its prior knowledge of the Complainant’s trade mark and so in view of the parties’ submissions, it is a difficult issue for the Panel to determine.
However, the Panel considers that even if the Respondent had prior knowledge of the Complainant’s TPRESSO trade mark that does not necessarily mean that the Respondent cannot have rights or legitimate interests in the Domain Names. The Panel has taken into consideration the following:
- The Domain Names consist of two generic terms “te”, meaning “tea” in Italian as well as in other languages, and “espresso”, meaning “fast” in Italian. The fact that the Complainant’s TPRESSO trade mark is suggestive of the descriptive terms “tea” and “espresso” does not entitle the Complainant to exclude others from using such descriptive or generic terms in a domain name (as long as there is no evidence that it is being used to trade on the Complainant’s rights);
- The Respondent is using the Domain Names to point to a website offering products described by the Domain Names, namely tea capsules and machines for the preparation of tea using tea capsules;
- The Respondent’s business activity appears to be lawful and there is no suggestion from the Complainant that it holds a monopoly over the production of tea capsules (and machines for the preparation of tea using capsules);
- The “look and feel” of the Respondent’s website does not reproduce the “look and feel” of the Complainant’s website and is rather distinctive; neither does the Respondent’s website display a trade mark or logo that is identical or similar to the Complainant’s trade mark or logo;
- The evidence submitted by the Respondent, including screen captures of its website, promotional materials, sample products and receipts, demonstrate that the Respondent has made considerable financial investment to produce and market its tea products;
- The Respondent appears to have filed in 2013 a community trade mark application in the term “tespresso” and in 2014 in the term “teespresso” and although the Respondent’s applications have been opposed by the Complainant (one of which resulted in a decision in favour of the Complainant and the other is currently pending) the Respondent has appealed the ruling and the appeals procedure is also currently pending.
Therefore the Panel is of the view that the foregoing is enough to tip the balance in favour of the Respondent.
The Panel has also considered the purpose of the Policy, which was designed to address obvious cases of cybersquatting. Based on the record, the Panel is of the view that the Respondent’s conduct cannot be considered cybersquatting, particularly as there appears to be a genuine, ongoing trade mark dispute between the parties. Prior UDRP panels deciding under the Policy have held that where there may be “ongoing trade mark disputes between the parties, this is not the proper forum in which to comment on them. Trade mark disputes involve larger issues which are inappropriately resolved under the Policy (See Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201)”. See SAP AG v. UniSAP, Inc., WIPO Case No. D2009-0297.
The Panel finds that the Complainant has, on balance, failed to show that the Respondent lacks rights or legitimate interests in the Domain Names.
Accordingly, the Complainant has not met paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In view of the foregoing, it is not necessary for the Panel to determine whether the Domain Names were registered and used in bad faith.
7. Decision For the foregoing reasons, the Complaint is denied.