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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

UniCredit S.p.A. v. Registration Private / Guido Eugenio Ramella

Case No. D2014-1933

1. The Parties

The Complainant is UniCredit S.p.A. of Rome, Italy, represented by Carlo Piana, Italy.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Guido Eugenio Ramella of Genoa, Italy.

2. The Domain Name and Registrar

The disputed domain name <yunikreditbank.com> is registered with GoDaddy.com, LLC. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2014. On October 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2014, the Registrar 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 10, 2014, 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 amendment to the Complaint on November 13, 2014.

The Center verified that the Complaint together with the amendment to 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 proceedings commenced on November 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 6, 2014.

The Center appointed Luca Barbero as the sole panelist in this matter on December 11, 2014. 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 one of the major European banks, offering a wide range of banking and financial services.

The Complainant has provided evidence of ownership of the following trademark registrations:

- International trademark No. 797844 for UNICREDIT (figurative mark), registered on November 28, 2002, in classes 9, 16, 35, 36, 38, 39, 41 and 42;

- International trademark No. 886305 for UNICREDIT BANK (figurative mark), registered on February 21, 2006, in classes 9, 16, 35, 36, 38, 39, 41 and 42.

The disputed domain name <yunikreditbank.com> was registered on May 13, 2010, and is currently pointed to the website "www.bancanazionaleitaliana.com", which provides information about banking services and sponsored banners advertising third-party commercial activities.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the trademarks UNICREDIT and UNICREDIT BANK in which the Complainant has rights.

The Complainant states that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name for the following reasons:

- The Complainant is a well-known European bank group (the third largest in Europe) that offers many different banking and financial services. The Complainant's name is therefore widely known before the general public, besides its trademarks being renowned;

- The Respondent has no possible rights or reasonable commercial interests in the disputed domain name;

- The Respondent is hiding behind a name shield agency and there is no business name or corporate name disclosed in the website published at the disputed domain name;

- The Respondent (as an individual, business, or other organization) is not commonly known by the disputed domain name;

- The Respondent has no trademarks or similar rights in respect of the disputed domain name and there is no evidence of other commercial interests that could conceivably be considered as legitimate in respect of the disputed domain name.

The Complainant also submits that the Respondent registered and used the disputed domain name in bad faith since:

- The Respondent registered a domain name that is confusingly similar to the Complainant's well-known corporate name and trademarks and that has nothing connected to the Respondent's name;

- With reference to the use of the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark and business 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 website owner does not provide any sort of detail as to its identity, location or other information from which it would be possible to understand which sector of business it is active in or what its business is, if any at all;

- The disputed domain name uses the traffic generated by it to display advertisements generically similar to the business of the Complainant, and likely to lead users to competitors of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has provided evidence of ownership of two trademark registrations for UNICREDIT and UNICREDIT BANK together with device elements. The Panel notes that the core of these trademarks is constituted by the signs UNICREDIT and UNICREDIT BANK.

The Panel finds that the disputed domain name <yunikreditbank.com> is confusingly similar to the Complainant's marks as the addition of the letter "y" and the substitution of the letter "c" with a "k" in the disputed domain name are not sufficient to distinguish the disputed domain name from the Complainant's marks. See, along these lines, The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103 (<nasdasq.com>): "Respondent's domain name is so similar to Complainant's trademark to create confusion and to benefit of possible typos ("typosquatting")". In addition, as stated in several prior UDRP decisions, the generic Top-Level Domain ("gTLD") ".com" can also be disregarded in the assessment of confusing similarity.

Therefore, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademarks according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).

The Panel notes that the Respondent has not submitted a Response and that, according to the Complainant's allegations, there has never been any relationship between the parties and the Respondent has not been authorized to use the Complainant's trademarks.

In addition, there is no evidence that the Respondent might be commonly known by the disputed domain name or by a name corresponding to the disputed domain name.

The Panel is also satisfied that the current use of the disputed domain name, which resolves to a website providing information about banks and displays several sponsored advertisements leading to third parties' commercial websites, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.

The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.

The Panel finds that, in light of the Complainant's prior registration and use of the trademarks UNICREDIT and UNICREDIT BANK and of the well-known characters of the marks, especially in Italy, were the Respondent is based, the Respondent was or ought to have been aware of the Complainant's marks at the time of the registration of the disputed domain name.

Moreover, the Respondent's actual knowledge of the Complainant's marks is demonstrated by the use made by the Respondent of the disputed domain name, since it has been pointed to a website providing also information on the Complainant and its services.

In light of the above-described use of the disputed domain name, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location according to paragraph 4(b)(iv) of the Policy.

In light of the above, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

7. Decision

For 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 <yunikreditbank.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: December 22, 2014

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