World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carige Vita Nuova S.p.A. v. Vita Nuova Public Organization, Domain Management / Whois Privacy Services by Domain Protect LLC

Case No. D2010-1912

1. The Parties

The Complainant is Carige Vita Nuova S.p.A. of Genoa, Italy represented by Internazionale Brevetti Ingg. Zini, Maranesi & C. S.r.l. of Italy.

The Respondent is Vita Nuova Public Organization, Domain Management / Whois Privacy Services by Domain Protect LLC of Saint-Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <carigevitanuova.com> is registered with Fiducia LLC, Latvijas Parstavnieciba.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2010. On November 10, 2010, the Center transmitted by email to Fiducia LLC, Latvijas Parstavnieciba. a request for registrar verification in connection with the disputed domain name. On November 16, 2010, Fiducia LLC, Latvijas Parstavnieciba. 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 the Complainant on November 18, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 19, 2010.

The Center verified that the Complaint amended 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 proceedings commenced on November 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2010.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on December 20, 2010. 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 an Italian Insurance company with its principal place of business in Genoa. The Complainant uses the trademark CARIGE VITA NUOVA for its products and services. It has an Italian trademark registration number 0001045742 dated April 20, 2007 for the said trademark under classes 16,35,36 and 38.

The Respondent registered the disputed domain name <carigevitanuova.com> on June 25, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant contends it is part of the Banca Carige financial group, and is the insurance branch of the group along with its sister company Carige Assicurazioni. The Complainant states its trademark CARIGE VITA NUOVA is therefore well known, as it is a leading insurance company that has about 3000 agents and the Banca Caragie group has about 1,900,000 clients. The Complainant has filed copies of its Italian trademark registration and its domain name registration for <carigivitanuova.it>. The Complainant states it owns a number of country and generic domain names that correspond with its trademark.

The Complainant states the disputed domain name is identical and confusingly similar to its trademark, its company name and its domain names. The only difference between its trademark and the disputed domain name being the addition of the dotcom gTLD, which can be disregarded for purposes of finding confusing similarity.

The Complainant argues that the Respondent lacks rights and legitimate interests in the disputed domain name, as it has not authorized the Respondent to use its mark. The Complainant believes that Respondent has no trademarks registered under the name CARIGE VITA NUOVA and the Respondent has not been known by the disputed domain name or uses it for a bona fide purpose. The website linked to the disputed domain name has several sponsored links and the Respondent has advertised the disputed domain name is up for sale.

The Complainant argues the disputed domain name was registered and is being used in bad faith for the reasons: that the Complainant’s mark is well known in the insurance field, the Complainant is a prior user of the mark on the Internet having published its website from the year 2001 and the Complainant owns several domain names corresponding to its mark CARIGE VITA NUOVA. The term “carige” represents an acronym for “CAssa RIsparmi GEnova”, the word “vita” means “life” and “nuova” means “new”. The registration of a domain name that is identical to this special combination cannot be a mere co-incidence argues the Complainant. The Respondent therefore had knowledge of the trademark when the disputed domain name was registered, which shows bad faith registration. The Complainant states that the Respondent has used the entire mark without plausible good faith use and has displayed several sponsored links on the website corresponding to the disputed domain name.

The Complainant states the Respondent has advertised the disputed domain name for sale on Sedo, quoting a minimum price of EUR 500 and the Respondent has registered more than a hundred thousand domain names. Further, the Respondent has been involved in two UDRP proceedings, which shows a pattern of such behavior by the Respondent. As the use of the disputed domain name by the Respondent disrupts its business and misleads Internet users, the Complainant requests for transfer of the disputed domain name.

B. Respondent

The registrar has identified the Respondent as Vita Nuova Public Organization of Saint-Petersburg in Russia. The Panel has verified from that the records that the Center has sent the notification to the named Respondent under the Rules. The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To obtain the remedy of transfer of the disputed domain name, the Policy states that the Complainant has to establish three elements under paragraph 4(a).

(i) The disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; and

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

(iii) The disputed domain name was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The first element under paragraph 4 (a) requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a mark in which it has rights.

The Complainant has filed a document that shows it has a multiclass trademark registration for its trademark CARIGE VITA NUOVA. Trademark registration constitutes prima facie evidence of validity of trademark rights. See Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654. The Panel finds the Complainant has established its rights in the CARIGE VITA NUOVA trademark.

The disputed domain name incorporates the entire trademark CARIGE VITA NUOVA. It is well established that a domain name that incorporates a trademark in it entirety is sufficient to establish confusing similarity to the trademark. See for instance Vibram S.p.A v.Hao Si Co.,Ltd/ Li ping/ Slan Lau, WIPO Case No. D2010-1525. The gTLD suffix does not impact the determining of confusing similarity of the domain name to the trademark. See InfoSpace.com, Inc. v. Tenebaum Ofer, WIPO Case No. D2000-0075.

For the reasons discussed the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie showing that the Respondent lacks rights and legitimate interests in the disputed domain name.

The Complainant has argued that the Respondent has no rights and legitimate interests, as the Respondent is not known by the disputed domain name and the Respondent is not authorized to use its mark. From the material on record it appears that the Respondent who is not connected with the Complainant or its business, nonetheless uses the Complainant’s trademark in the disputed domain name.

The Respondent is undoubtedly getting misdirected Internet traffic due to its unauthorized use of the Complainant’s mark. Further, the Respondent has placed sponsored links on its website and it can be inferred that the Respondent derives some form of commercial gain from these links.

The Respondent has not participated in these proceedings or filed any response to the Complaint. Further the Panel finds there is no material on record that indicates the Respondent’s legitimate interests in the disputed domain name. In the Panel’s view, the use of the Complainant’s trademark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name refers to the Complainant. A domain name that gives a false impression to users does not confer legitimate rights or interests. This view has been upheld in several decisions. See for instance Pfizer Inc. v. Alex Schreiner / Schreiner & Co., WIPO Case No. D2004-0731.

The Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and has satisfied the second element under paragraph 4 of the Policy.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of he Policy requires the Complainant to prove that the disputed domain name has been registered and is used in bad faith.

The Complainant has argued that the Respondent had knowledge of the Complainant’s mark at the time of registration of the disputed domain name for three reasons. First, the Complainant is a prior adopter and user of the mark. Second, the unique combination refers only to the Complainant and its business and none other. Third, the Complainant has a presence on the Internet from the year 2001 and owns several domain names incorporating its trademark prior to the Respondent’s registration of the disputed domain name.

Given the Complainant’s prior adoption and use of the mark and the fact that the acronym CARIGE is derived from the first two letters of “ CAass Risparmi GEnova” it undoubtedly refers to the Complainant. It is the Panel’s view, that the use of the Complainant’s trademark in the disputed domain name gives rise to the inference that the Respondent ought to have registered the disputed domain name for its trademark value. The facts and circumstances of the present case therefore suggests that the most plausible inference that can be drawn from the Respondent’s registration of the disputed domain name is that he had the Complainant’s trademark in mind for generating Internet traffic and for deriving some form of commercial gain by using the Complainant’s trademark. The registration of a domain name with the Complainant’s trademark in mind, under certain circumstances, is recognized as bad faith registration under the Policy. See Baccarat SA v. MSL International, Inc., WIPO Case No. D2005-0048.

Furthermore, the use of the trademark in the disputed domain name is likely to cause confusion to users, who may falsely believe that the Respondent’s domain name is being operated or endorsed by the Complainant. The registration of a domain name that uses a well-known mark itself is evidence of bad faith registration. See for instance Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435. The Complainant has stated that the Respondent has registered numerous domain names and has been involved in two UDRP cases, which show that he has engaged in a pattern of such behavior suggesting that the Respondent is a cybersquatter.

The Panel finds the Respondent has registered the disputed domain name with the intention of attracting Internet users to its website by creating a likelihood of confusion with a trademark in which the Complainant has rights giving a false impression of the source or sponsorship of the domain name, which is recognized as bad faith registration and use under paragraph 4 (b) (iv) of the Policy. See AXA S.A v. Privacy Protected.org/Koddos, Ronald Linco, WIPO Case No. D2010-0270.

The Complainant has filed a document that shows the disputed domain name is put up for sale on the Sedo site and the sale advertisement reads as:

“This Domain name without content is available for sale by its owner through Sedo’s Domain Marketplace. Submit your offer.”

Advertisement on the Sedo website for sale of the domain name are under certain circumstances is considered bad faith registration and use of the domain name, see for instance Burberry Limited v. Ruo Chang, WIPO Case No. D2010-1304. Under paragraph 4(b)(i) of the bad faith registration can be found if there are circumstances to indicate that the Respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the domain name. In the present case the Respondent has clearly advertised and specified a minimum price of EUR 500 for the sale of the disputed domain name.

The Panel finds the entire set of facts and circumstances in the present case indicate that the disputed domain name was registered in bad faith and is being used in bad faith for the reasons discussed.

The Complainant has successfully established the third element under paragraph 4 of the Policy.

7. Decision

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 <carigevitanuova.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Dated: January 3, 2010

 

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