WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mediobanca Banca di Credito Finanziario S.p.A. v. DomainsByProxy.com/ Alpha Systems
Case No. D2012-0141
1. The Parties
The Complainant is Mediobanca Banca of Milan, Italy, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
The Respondents are DomainsByProxy.com of Scottsdale, Arizona, United States of America and Alpha Systems of Milan, Italy, internally represented.
2. The Domain Name and Registrar
The disputed domain name <mediobanca.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2012. On January 26, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 27, 2012, GoDaddy.com, LLC 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 January 30, 2012 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 January 30, 2012. The Center verified that the Complaint together with the 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 January 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for the submission of the Response was February 20, 2012.
The Respondent did not file a formal Response. However, the Respondent sent several emails to the Center, containing arguments answering the Complaint, on January 27, January 30, January 31, February 1 and February 7, 2012.
By email dated February 1, 2012, the Respondent requested that the administrative proceeding be submitted to a three-member Panel. Both parties submitted to the Center a list of three potential co-Panelists and paid the appropriate fee.
The Center appointed Fabrizio La Spada, Nicoletta Colombo and Enrique Ochoa de González Argüelles as panelists in this matter on March 19, 2012. The Panel finds that it was properly constituted. Each member of 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.
On March 21, 2012, the Respondent sent an email to the Center, requesting a copy of the materials communicated to the Panel. The Center sent a copy of the case file to both parties on March 23, 2012.
On March 26, 2012, the Respondent sent a supplemental filing to the Center. A copy of this filing was sent by the Center to the Complainant and to the Panel.
4. Factual Background
The Complainant is an Italian company established in 1946. It offers banking services. Since 1946, it has developed to become an international banking group, with offices in Frankfurt, London, Madrid, Moscow, New York and Paris, in addition to its Italian offices. The Complainant obtained a Stock Exchange listing in 1956.
The Complainant owns several MEDIOBANCA trademarks, registered throughout the world. It is in particular the owner of the following registered trademarks:
- International trademark MEDIOBANCA, No. 807318, registered on May 19, 2003 in class 36
- Italian trademark MEDIOBANCA, No. 891641, registered on May 19, 2003 in class 36
The disputed domain name was registered on February 13, 2002. The disputed domain name is automatically redirected to another website, located at the domain name <cardrex.com>. On this website, the Respondent offers, under the "Cardrex" name, services related to a "stored-value" card, i.e., a card on which customers may store money for later access at bank machines or which they can use as a debit card. The <cardrex.com> website contains no reference to the MEDIOBANCA trademark or to the "Mediobanca" name.
5. Parties’ Contentions
Concerning the first element under the Policy, the Complainant submits that the disputed domain name is identical to its MEDIOBANCA trademark.
Concerning the second element under the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. More specifically, the Complainant submits that (1) the Respondent is not associated in any way to the Complainant or its distribution network; (2) the Respondent has never been commonly known in the normal course of business by the "Mediobanca" name; and (3) there is no evidence of a bona fide non-commercial or other legitimate fair use by the Respondent.
Concerning the third element under the Policy, the Complainant alleges that the Respondent has registered and used the disputed domain name in bad faith. According to the Complainant, it is inconceivable that the Respondent could not have been aware of the MEDIOBANCA trademark and trade name at the time it registered the disputed domain name. In this respect, the Complainant contends that when it may be presumed that the Respondent knew of the renown of the Complainant's trademark, a finding of "opportunistic bad faith" is in order. Moreover, the Complainant considers that use of the disputed domain name by the Respondent to redirect Internet users to the website at ”www.cardrex.com” leads consumers to believe that the "Cardrex" service is a banking service offered by the Complainant. According to the Complainant, this use intentionally attempts to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
On this basis, the Complainant requests that the disputed domain name be transferred to it.
The Respondent's arguments in response to the Complaint, set out in various emails sent to the Center, can be summarized as follows.
- The owner of the disputed domain name is a company International Services Inc., which is a licensed financial company in Central America and Panama. International Services has owned the disputed domain name since February 13, 2002.
- "Mediobanca" is a name used in the Spanish language. This is the reason why it was chosen by International Services as a name "for its Division". In Spanish, "Medio" together with the verb "mediar" means mediation, brokerage.
- The Complainant is an Italian bank that does not have any legal entity in Central America and Panama. Therefore, the Complainant has no rights in that part of the world.
- The disputed domain name belongs to Alpha Group, following the latter's acquisition of the rights of Alpha Systems. Alpha Group controls International Services.
- The Complainant did not own any rights to the "Mediobanca" or "Medio Banca" names on or before February 13, 2002, when the disputed domain name was registered. On that date, the Complainant only held rights in Italy.
- Alpha Group registered the disputed domain name because it was planning to seek a bank license under the name "Medio Banca".
- At the time the Respondent registered the disputed domain name, the Complainant only had offices in Italy.
- A web search with the "Medio Banca" name yields numerous results. This demonstrates that this name is a common name, used by many entities dealing with banking and financial operations.
- The Respondent does not use the disputed domain name for commercial operations or to attract customers.
- Finally, the Respondent points out that the present case is similar to another case recently decided by a WIPO panel, in a dispute involving the <mediaset.com> domain name. In that case, the panel dismissed the complaint, notably because it considered the domain name to have a generic meaning.
6. Supplemental Filing
On March 26, 2012, the Respondent sent an email to the Center, containing additional elements to support its position in the proceedings. This submission was unsolicited. In its email, the Respondent identified a decision issued by a WIPO panel concerning the <mediaset.com> domain name (Mediaset S.p.A. v. Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954). In that case, the panel denied the complaint, based on the finding that the term "media set" is merely generic and that, therefore, use of such term in a domain name was not in bad faith.
Paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party, and although the Rules do not provide expressly for unsolicited submissions, under paragraph 10(a) of the Rules, the panel may conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously (see NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., WIPO Case No. D2008-1984).
In this Panel’s view, a supplemental filing may delay and complicate proceedings. Consequently, whether it is appropriate to admit an unsolicited supplemental filing will depend, inter alia, on its relevance to the issues in the case, whether the panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not (see NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A., supra).
In this case, the supplemental filing makes a reference to another domain name dispute, in which a decision was issued by another panel. Although this decision is a matter of public record, as it is published on the Center's website, which this Panel is aware of, it is relevant to the issues at hand. The Panel therefore considers that it may be taken into account.
The Panel has considered whether the Complainant should be given an opportunity to reply to the Respondent's supplemental submission. It has come to the view that it should not. First, the Complainant has not requested to be given the opportunity to reply. Second, the Respondent's email only makes a reference to a previous WIPO UDRP decision, which is a matter of pubic record. Third, the Respondent's submission does not affect the outcome of these proceedings. Under the present circumstances, the Parties will not be prejudiced, and procedural efficiency will be better served, by the Panel proceeding to a decision based on the materials now before it.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section B); and
(iii) the disputed domain name has been registered and is being used in bad faith (see below, section C).
Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several MEDIOBANCA trademarks.
Concerning the second issue, the Panel finds that the disputed domain name is identical to the Complainant's MEDIOBANCA trademark. In this respect, the Panel notes that it is well established that the specific top level domain name “.com” is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the Complainant's trade mark and the disputed domain name (see Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239, and cases cited therein).
A question arises concerning the date of registration of the first of Complainant's trademarks. Indeed, the Complainant first registered its MEDIOBANCA trademark on May 19, 2003, whereas the disputed domain name was registered on February 13, 2002, i.e., before the Complainant acquired trademark rights. However, this does not change the Panel's finding that the disputed domain name is identical to a trademark in which the Complainant has rights.
Indeed, the question of priority of the Complainant's trade mark rights is not an issue to be dealt with under paragraph 4(a)(i) of the Policy, as registration of a domain name before a complainant acquires corresponding trademark rights does not prevent a finding of identity or confusing similarity: the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4; Reckitt Benckiser Plc v. Eunsook Wi, supra; MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598; Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827; AB Svenska Spel v. Andrey Zacharov, WIPO Case No. D2003-0527; Iogen Corporation v. IOGEN, WIPO Case No. D2003-0544).
Furthermore, once the trademark right in one jurisdiction is established, the location of the Complainant's trademark and the goods and/or services protected by such rights are irrelevant when finding rights in a mark for purposes of the first element of the UDRP (see WIPO Overview 2.0, paragraph 1.1; Reckitt Benckiser Plc v. Eunsook Wi, supra; Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661).
In view of the foregoing, the Panel finds that the disputed domain name <mediobanca.com> is identical to a trademark in which the Complainant has rights. The Panel notes in this respect that the issue of the identity of the disputed domain name to the Complainant's trademark is not disputed by the Respondent.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements, without limitation:
(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Based on the submissions of the Parties and the evidence on record, the Panel finds that the Respondent has not been commonly known by the disputed domain name. Indeed, according to the communications filed by the Respondent, the latter has never traded under the "Mediobanca" name, but has been using the "Alpha Group" and "International Services" names. Moreover, the disputed domain name is automatically redirected to another website, “www.cardrex.com”, where services are offered under the "Cardrex" name.
The Panel further finds that the Respondent is not making a noncommercial or fair use of the disputed domain name, as the website to which the disputed domain name is redirected offers services of a commercial nature.
The question, however, arises whether the Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services. The Panel finds that this is not the case. Although the Respondent does use the disputed domain name, such use is not a bona fide use within the meaning of paragraph 4(c)(i) of the Policy. As stated in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy." Here, based upon the submissions and evidence presented by both parties, the Panel concludes that the reason that the Respondent registered the disputed domain name was to benefit from the fame of the Complainant's "Mediobanca" name, which had been used by the Complainant in Italy for more than 50 years before registration of the disputed domain name (the evidence produced by the Complainant shows that the Complainant was established in 1946), even though the Complainant's trademark was only registered after registration of the disputed domain name. This finding is reinforced by the fact that even though the Respondent registered the disputed domain name, it does not use the "Mediobanca" name in its trade and only uses the disputed domain name to redirect users to the website at “www.cardrex.com”.
In its submissions, the Respondent insisted on the fact that it considers the names "Medio" and "Banca" to be generic in the Spanish language. The Panel notes in this respect that mere registration of a domain name that is comprised of use of dictionary words may not of itself confer rights or legitimate interest in a domain name. If a respondent can show that it registered and has used the domain name with a view to taking advantage of the generic or descriptive meaning, then it may well have a legitimate interest for the purposes of the Policy. If instead and notwithstanding a potential generic use, the intention was to take advantage of a domain name's association with the business of another, then there will not be a legitimate interest (see WIPO Overview 2.0, paragraph 2.2; see also St Andrews Links Ltd v Refresh Design, WIPO Case No. D2009-0601). As set out above, the Panel considers that the Respondent's intention was to benefit from the fame of the Complainant's "Mediobanca" name, based in particular on the Complainant's widespread use of that name in Italy before registration of the disputed domain name, and on the fact that the Respondent is not making any use of the "Mediobanca" name, besides use in the disputed domain name, which however automatically redirects Internet users to another, unrelated website. In addition, the Panel notes that the Respondent claims that the "Medio" and "Banca" names are generic in the Spanish language, whereas the website to which the disputed domain name redirects Internet users is not specifically intended to a Spanish-speaking public. On the contrary, the website is written in the English language. Moreover, the Respondent is located in Italy, which is not a Spanish-speaking country. There is therefore no particular reason to take into account a possible meaning of the disputed domain name in Spanish.
Finally, the Respondent identified another UDRP decision, involving the <mediaset.com> domain name, in which the panel dismissed the complaint, notably because it considered the domain name to have a generic meaning (Mediaset S.p.A. v. Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954). According to the Respondent, the present case is similar to the <mediaset.com> case. The Panel has reviewed the case cited by the Respondent and considers that the reasoning of the panel that decided that case does not apply to the present dispute. First, the term "Media Set" has a specific meaning in English and can therefore be considered as having a generic meaning. That is not the case of the term "Mediobanca". Second, in the <mediaset.com> matter, although the respondent did not use the domain name, the Panel considered that there were "various possibilities to use the disputed domain name in good faith in connection with its generic meaning". This is not the case in the present matter, as the Respondent is using the disputed domain name to automatically redirect Internet users to the website at “www.cardrex.com”, with no reference to the "Mediobanca" name.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the respondent’s website or location.”
The Panel is satisfied that these circumstances are fulfilled in this case.
Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date (see above, section 7(A)), when a domain name is registered by the Respondent before the Complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the Complainant's then non-existent right. However, in certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found (see WIPO Overview 2.0, paragraph 3.1).
In the present case, the Complainant was established in 1946 and has been trading under the "Mediobanca" name in Italy ever since. It obtained a stock exchange listing in 1956 and has developed significant operations in Italy, before extending its presence internationally. In the Panel's view, it is unconceivable that the Respondent, which is an entity located in Italy according to the WhoIs records, did not know of the Complainant's name at the time it registered the disputed domain name. In this respect, the Panel notes that in its submissions, the Respondent did not dispute the Complainant's allegation that the Respondent was aware of the Complainant's trade name at the time of registration. On the contrary, the Respondent's position is that it was entitled to register the disputed domain name, because the Complainant did not own a registered trademark at the time and because the "Mediobanca" name is a combination of two generic words, "Medio" and "Banca".
For these reasons, the Panel is satisfied that the Respondent would never have registered the disputed domain name, if it was not for the fact that the Respondent knew that it was in use or about to be used as trade marks by the Complainant. This is indicative of bad faith under the Policy (see 537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation, WIPO Case No. D2009-0567; Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320).
Moreover, as already set out above, the Respondent only uses the disputed domain name to redirect Internet users to another website, where financial services are offered to the consumers, for commercial gain.
The Panel therefore finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. This fulfills the conditions of the third element under the Policy.
As a final comment, the Panel notes that the Complaint was filed nearly ten years after the Respondent registered the disputed domain name. Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements, as is the case in the present matter (see WIPO Overview 2.0, paragraph 4.10).
Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. However, in this case, the Panel has found that the Complainant has established its case on the merits, for the reasons set out above.
For all 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 <mediobanca.com> be transferred to the Complainant.
Fabrizio La Spada
Enrique Ochoa de González Argüelles
Dated: April 11, 2012