Decision for dispute CAC-UDRP-107540

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant Pro Coffee Gear LLC is the registered owner of some trademarks containing PRO COFFEE GEAR, e.g:

• United States trademark registration No. 7456054 PRO COFFEE GEAR (figurative), registered on July 23, 2024 (filed on July 26, 2023) for services in classes 35 and 37;
• European Union trademark registration No. 018907993 PRO COFFEE GEAR (figurative), registered on November 15, 2023 (filed on July 31, 2023) for services in classes 35 and 37;
• United Kingdom trademark registration No. UK00003940463 PRO COFFEE GEAR (figurative), registered on October 27, 2023 (filed on August 01, 2023) for services in classes 35 and 37.

The Complainant is Pro Coffee Gear LLC, located in the United States and has been incorporated on June 12, 2020 under the State of Delaware, US. It results from the Complainant’s undisputed allegations that it is active in the coffee-equipment sector.

It also operates the domain name < procoffeegear.com >, created on November 15, 2019, for its official website.

The disputed domain name < coffeegearpros.com > was registered on September 12, 2023.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to a competing website prominently using the typosquatting of Complainant’s mark.

The Complainant sent a Cease & Desist letter to the Respondent on 26 August 2024, and a reminder on January 13, 2025 which has received no response.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s distinctive trademarks since it incorporates the Complainant's mark in its entirety. The reordering of words occurred, which is merely changing the sequence (“PRO COFFEE GEARˮ is transformed into “coffee gear pro-sˮ). Such reordering is considered to represent an “immaterial variationˮ which does not affect the outcome about the domain name being confusingly similar.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name.  According to the Complainant, the Respondent does not own any trade marks or other rights globally that would be identical or similar to the Complainant's marks. The Complainant has never authorised or licensed the Respondent to use its registered "PRO COFFEE GEAR" marks or its confusingly similar alterations on the Respondentʼs website or in the disputed domain name. Further, it contends that the Respondent clearly did not and currently does not use the domain name in connection with a legitimate offering of goods or services. The content under the disputed domain name does not provide any legitimate goods or services at the moment; instead, it was used in a manner intended to confuse consumers or trade off the goodwill associated with the Complainant's brand and its trade marks. Additionally, when attempting to order any random product from the Respondentʼs website, it appears not to function as a genuine retail operation, as it is not possible to proceed to checkout, which in practice makes it impossible to purchase products. This fact only confirms that the Respondentʼs website is primarily intended to confuse consumers or trade off the goodwill associated with the Complainant's brand. Additionally, there is no evidence that the Respondent is commonly known by the name "COFFEE GEAR PROS", (s. Google Search results on the first page).

Furthermore, the Complainant contends that the disputed domain name was registered and is being used in bad faith.  According to the Complainant, the Respondent intentionally uses the Complainant’s trademark in its domain name to attract for commercial gain. The disputed domain Name fully incorporates the Complainantʼs distinctive marks with different word positioning. The Complainant pointed out that the disputed domain name was registered more than 4 years after the registration of the Complainant’s domain and three and a half years after the incorporation of the Complainant’s legal entity. Additionally, when the Respondent registered its domain name, with expected due care and simple online searching, he must have known that the confusingly similar domain was already active and registered, a similar trade mark registered and a similar legal entity was incorporated. The Respondentʼs use of the disputed domain name is likely to mislead the relevant consumers into believing that the domain is associated with, endorsed by, or affiliated with the Complainant. This demonstrates bad faith in both the registration and use of the domain. The Respondent is not merely using the disputed domain name as a string of words; the Respondent actively brands the site as “COFFEE GEAR PROSˮ with a logo mark and overall storefront presentation that invites an association with the Complainantʼs brand. It is clear that the average consumer, when encountering the Complainant’s mark and the Respondentʼs disputed domain name and website would erroneously likely assume a connection between them. On the other hand, the Respondent uses the confusingly similar domain name, showing the very similar content on the website, as is shown on the Complainantʼs website.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

1. 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 trademark and the disputed domain name.  WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.  WIPO Overview 3.1, section 1.2.1.  It is true that said trademark is a figurative trademark, containing a design element.  However, it is acknowledged by prior UDRP panels that such figurative marks would satisfy the requirement that a complainant shows “rights in a mark” as panels would tend to focus on the non-design element for purposes of assessing confusing similarity.  WIPO Overview 3.1, section 1.10.

The above test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.  In the case at hand, the entirety of the mark’s textual component is reproduced within the disputed domain name. The Panel finds the mark is recognizable within the disputed domain name.  Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy.  WIPO Overview 3.1, section 1.7.  

It is the view of this Panel that the disputed domain name < coffeegearpros.com > consists of a variation of the textual components of Complainant’s trademark “PRO COFFEE GEAR” (i.e. an inversion of words occurred, “PRO COFFEE GEARˮ is transformed into “coffee gear proˮ and adding at the end the consonant “s”) and this cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the disputed domain name contains sufficiently recognizable aspects of the relevant mark. Prior UDRP panels have found that a domain name which consists of a variation of a trademark (typically a common, obvious, or intentional misspelling, referred to as typosquatting) is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This Panel shares this view (see WIPO Overview 3.1 at section 1.9).

Finally, the generic Top-Level Domain (“gTLD”) “.com” of the disputed domain name is typically disregarded under the first element confusing similarity test (see WIPO Overview 3.1 at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

2. 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 UDRP proceedings is on the complainant, panels have recognized that proving that 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 3.1, section 2.1.

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 notes that the disputed domain name inverts the term “pro” (and adds a letter s) in the Complainant’s trademark and, as such, is also similar to the domain name <procoffegear.com> which resolves to the Complainant’s official website and which the Complainant has been using since 2019.  The Panel notes the Complainant’s contention that the disputed domain name consists of a misspelling of its trademark which signals an intention on the part of the Respondent to confuse Internet users seeking or expecting the Complainant.  It further notes that the disputed domain name is also a combination of dictionary terms; however, merely registering a domain name comprised of a dictionary word or phrase would not by itself automatically confer rights or legitimate interests on the Respondent.  Noting the absence of any explanation by the Respondent as to its selection of the disputed domain name and the fact that the Respondent provided false contact information (In fact, the CAC was not able to send the written notice to the Respondent, as the address provided by the Registrar in the Registrar Verification does not exist. The postal service provider would not be able to deliver a written notice to such an address), the Panel finds it more likely than not that the Respondent registered the disputed domain name with the Complainant in mind.

 Panels also tend to look at whether a response is filed (and the credibility thereof), whether the Respondent provides false contact information in assessing the legitimate interest of the Respondent (see WIPO Overview 3.1 at section 2.5.3). This Panel shares this view.

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

3. According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

In the present case, the Panel notes that it results from the Complainant’s documented allegations that the disputed domain name resolves to a competing website prominently using the typosquatting of Complainant’s mark.

In the present case, the disputed domain name was registered following the Complainant’s filing of the trademark applications. Previous Panels found that the respondent has acted in bad faith in the case of domain names registered in anticipation of trademark rights (see WIPO Overview 3.1 at section 3.8.2: As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith. Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.). This Panel shares this view.

 Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith (see WIPO Overview 3.1 at section 3.2.1):

(i) the nature of the disputed domain name (i.e. a typosquatting);

 (ii) the content of the website to which the disputed domain name directs (i.e. a competing website);

(ii) the content of the website to which the disputed domain name directs (i.e.  competing website);

(iii) a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name;

(iv) the Respondent’s concealing its identity through a privacy service.

(v) the Respondent providing false contact information (i.e. the address provided by the Registrar in the Registrar Verification does not exist)

(vi) the Respondent did not reply to the cease and desist letters and to the Complaint.

The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(iii) of the Policy.