Complainant is Cassa di Risparmio di Firenze Società per Azioni of Firenze, Italy.
Respondent is ILHWA of KyoungJu City, Republic of Korea.
The disputed domain name <carifirenze.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2009. On July 21, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On July 22, 2009, OnlineNic, Inc. d/b/a China-Channel.com 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 Respondent of the Complaint, and the proceedings commenced on July 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 14, 2009.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 19, 2009. 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.
Complainant is a group of banks based in Italy. Complainant's name is Cassa di Risparmio di Firenze, which roughly translates into English as “Savings Bank of Florence.” Complainant's name is abbreviated as “CR Firenze,” and it is often referred to as “Carifirenze” in the financial press for sake of brevity. Complaint, Annex C.
Complainant is the holder of a number of trademark registrations in Italy for the mark BANCA CR FIRENZE, the earliest of which issued on June 9, 2004. Complaint, Annex F.
Respondent registered the domain name at issue on September 11, 2008. Complaint, Annex A. In the past Respondent has used the domain name at issue to resolve to a web site at which are listed links to Complainant's web site and to web sites of other competitive institutions in the fields of banking, loans, credit card issuance, and other financial services directly competitive with the services offered by Complainant. Complaint, Annex I. Respondent currently uses the domain name at issue to resolve to a parking site at which there are links to businesses associated with the city of Florence, Italy. Florence is the English translation of the Italian name, Firenze. The web site contains a link to a page on which the domain name at issue is offered for sale and invites the user to make an offer to purchase. Complaint, Annex L.
Complainant contends that the domain name at issue is confusingly similar to Complainant's BANCA CR FIRENZE mark in that it incorporates the C and the R and Firenze, the distinctive elements of the mark, and merely adds the letters “a” and “i,” and also that the domain name adopts Complainant's common name “Carifirenze” as used in the financial press. Complainant has not authorized Respondent to use its mark or common name and Respondent is not known by the name “carifirenze,” and therefore Respondent has no rights or legitimate interests in respect of the domain name at issue. Finally Respondent has used the domain name at issue to link to competitors of Complainant and currently uses the domain name at issue on a parking page at which the domain name is also offered for sale. Complainant contends that this constitutes bad faith registration and use.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
The domain name at issue consists of the distinctive elements of Complainant's BANCA CR FIRENZE mark with an “a” inserted between the “c” and the “r” and an “i” inserted after the “r” and before “firenze.” The fact that the domain name does not incorporate the word “banca” (in English, “bank”) which is part of Complainant's mark is not controlling on the question of confusing similarity, since that part of the mark is not distinctive and is a common descriptive term of Complainant's business. EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 (<efgprivate.com> held confusingly similar to EFG PRIVATE BANK mark. Nor is the addition of the letters “a” and “i” to the name, especially where the addition actually increases the confusion between the domain name and Complainant by suggesting Complainant's common name. Id. (<efgpb.com> held confusingly similar to the EFG mark, especially since the domain name also suggests the EFG PRIVATE BANK mark and the “EFG Private Bank” name.) Accordingly, the Panel finds that the domain name at issue is confusingly similar to Complainant's mark.
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized 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, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1. In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name at issue, and Respondent has failed to assert any such rights. On the record, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Respondent has been using the domain name at issue to resolve to a web site at which links to financial institutions offering services directly competitive to those offered by Complainant. This constitutes bad faith registration and use. YAHOO!INC. v. David Murray, WIPO Case No. D2001-1319. Moreover, Respondent is currently using the domain name at issue to resolve to a parking site. This is also evidence of bad faith registration and use. Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. Accordingly the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <carifirenze.com> be transferred to Complainant.
M. Scott Donahey
Dated: August 21, 2009