WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Società Reale Mutua di Assicurazioni v. Andrew Reale, The Reale Group
Case No. D2014-2242
1. The Parties
The Complainant is Società Reale Mutua di Assicurazioni of Torino, Italy, represented by R&P Legal, Italy.
The Respondent is Andrew Reale, The Reale Group of Boston, Massachusetts, United States of America, represented by Steven Rinehart, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <realegroup.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2014. On December 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent, The Reale Group, 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 the Respondent of the Complaint, and the proceedings commenced on January 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2015. Later on the same day, the Center received two email communications from the Respondent regarding his proposed Response. A formal Response was filed with the Center on January 27, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on January 29, 2015. 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.
On February 3, 2015, the Panel issued Procedural Order No.1 indicating that it had decided to admit the Respondent’s late Response, reasons to be given in the decision, and inviting the Complainant to make a supplemental filing in response to certain new factual matters raised in the Response. The Complainant duly filed its submission on February 6, 2015.
4. Factual Background
The Complainant, established as a mutual insurer in 1828, is the holding company of an insurance, banking and real estate group of companies operating in Italy and Spain. It has 3,000 employees and serves approximately 3 million insured customers. The group’s turnover in 2013 was some EUR 3.5 billion.
For over 150 years, the Complainant has used the core trade mark REALE MUTUA and has also used other marks and domain names comprising the term “Reale” along with descriptive terms referable to the Complainant’s services.
The Complainant owns the following registered trade marks, amongst others:
- French trade mark registration number 1265666 for REALE MUTUA (figurative) in class 36, filing date April 13, 1981.
- International trade mark registration number 598546 for REALE MUTUA (figurative) in class 36, priority date February 2, 1993.
- International trade mark registration number 603978 for GRUPPO REALE MUTUA (figurative) in class 36, priority date February 2, 1993.
- Italian trade mark registration number 795195 for SCUDO REALE (figurative) in class 36, filing date November 26, 1997 and registration date November 29, 1999.
- Italian trade mark registration number 944516 for CENTO STELLE REALE (figurative) in class 36, filing date March 21, 2001 and registration date November 11, 2004.
The disputed domain name was registered on August 27, 2001.
There is currently no website at the disputed domain name.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The disputed domain name is confusingly similar to the Complainant’s prior trade marks.
The Complainant need not establish exclusive rights across all territorial boundaries, but only a bona fide basis for making the Complaint, as the Policy makes no distinction between localised and widespread trade mark rights.
In any event, the REALE trade marks, and in particular REALE MUTUA and GRUPPO REALE MUTUA, are well known marks taking into account the use of “Reale Mutua” as a company name for two centuries, the priority date of the Complainant’s international trade mark registrations, the Complainant’s extensive use of the REALE mark in domain names, the Complainant’s large customer base and its substantial investment in marketing.
The core of the disputed domain name is identical to the core of the Complainant’s trade marks, given that the REALE mark is entirely reproduced in the disputed domain name, in addition to the descriptive suffix “group”. The addition of the non-distinctive term “group” does nothing to reduce the confusing similarity between the disputed domain name and the Complainant’s well-known trade marks. In any case, the term “group” is similar to the word “gruppo” and equivalent conceptually to any consumer speaking Italian, Spanish or English.
The likelihood of confusion is even higher given that millions of customers of the Complainant, being familiar with the Complainant’s well known trade marks and domain names, might be induced to think that “realegroup” is part of the wider family of the REALE trade marks.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. Throughout the 13 years before this dispute was commenced, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. A domain name overview referring to the site status as “inactive” as well as the WhoIs output for the disputed domain name prove that disputed domain name is not actively used and that there is no website operated under the disputed domain name. The disputed domain name does not resolve to a website or other substantive online presence and the Respondent has not taken any steps to develop a website or use the disputed domain name in a legitimate manner since 2001.
A Google search does not bring up any reference to a website at the disputed domain name and a company search in the Massachusetts company registry reveals that “The Reale Group” does not exist as a corporation. Therefore, the Respondent may not assert that it is known by the disputed domain name or that it is making a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name should be considered as having been registered and used in bad faith.
Although being initially flagged as “not available” the disputed domain name is actually up for sale on the Registrar’s website where instructions are given as to how to submit offers to purchase the disputed domain name. Under the Policy, intent to sell the disputed domain name should be considered as evidence of the registration and use of a domain name in bad faith.
The Respondent is holding the disputed domain name passively and this alone supports a conclusion of bad faith registration and use.
The Respondent failed to provide a proper business name for the administrative contact and has purposefully used false information in registering the disputed domain name as the Complainant’s attempt to serve a notice via express courier failed, the recipient address turning out to be “non-existent”. This is further evidence of the registration of the domain in bad faith.
A summary of the Respondent’s contentions is as follows:
The Respondent registered the disputed domain name in 2001 in good faith because it incorporated his own name and the generic term “group”. The name “The Reale Group” is a trading name of Andrew Reale, who has always been listed as the administrator of the disputed domain name.
The Respondent has used the disputed domain name for many years to market his property management services as shown by archive screenshots of the website dated 2004 and 2010. The Respondent thus made bona fide active use of the disputed domain name. In the last year the Respondent took the website down to redesign it.
The Complainant’s trade marks are not confusingly similar to the disputed domain name.
A trade mark provides no rights under the Policy if deemed to be descriptive or generic.
The common terms “Reale” and “group” are “descriptive” of the Respondent’s services. The Respondent is using the terms, not by reference to the Complainant’s trade mark, but because they comprise dictionary or common terms plus his own given name.
The Respondent did not register the disputed domain name to disrupt the Complainant’s business nor to confuse customers seeking the Complainant nor to sell to the Complainant.
The Complainant has not attempted to explain the fact that the disputed domain name did resolve to a legitimate website for nine years, nor to analyse the fact that the disputed domain name incorporates the given name of the Respondent.
The Complainant waited for 14 years to bring the case and is barred by laches.
The Complainant is guilty of reverse domain name hijacking. The Complainant knows that there is no plausible basis for a complaint. The Complainant is attempting to “stomp” on the rights of the Respondent in the hope that the Respondent will be unable to muster the necessary resources necessary to defend itself.
C. Complainant (Supplemental Filing)
A summary of the Complainant’s supplementary filing is as follows:
The disputed domain name does not incorporate Mr. Reale’s own given name. Otherwise it would not have initiated this proceeding.
The disputed domain name refers, not to a person, but to a group of companies making business and the Respondent has no rights or legitimate interests in the disputed domain name in such case. The Respondent is neither a “group”, nor even a business. Although claiming to be “doing business as” The Reale Group, the Respondent failed to provide any evidence as to the existence of such business entity. In response to the Complaint and in support of its allegation of reverse domain name hijacking, the Respondent should have at least provided evidence of the registration of its business name with the state government, its tax identification number or its business licences and permits.
The fact that Mr. Reale has always been shown as the administrator of the disputed domain name in the WhoIs does not affect the Complainant’s submission that the disputed domain name has not been actively used, that the Respondent has passively held the disputed domain name and that it has been offered for sale.
There is no evidence of the Respondent’s alleged marketing of his property management services. The existence of a business and the supply of its services should be proved by official governmental documents and not a couple of screenshots of no evidentiary value. The two screenshots can only be considered as snapshots in a 13-year period. To be reliable, they should be attached to a business name registration or a tax identification number or a business licence proving that the trade name shown is a validly existing business.
There is no proof any hosting service connected to the website at the disputed domain name and this renders the allegation of a redesign process irrelevant.
6. Discussion and Findings
A. Late Response
The Response, which was due on Sunday January 25, 2015, was in fact received by the Center on January 27, 2015.
The explanation from the Respondent’s representative is that, as the deadline fell on a Sunday, he believed that, under the Rules, the Response was only due the next day – Monday January 26, 2015. He also stated that he sent the Response on January 26, 2015, in his time zone.
Paragraph 10(d) of the Rules provides that the Panel shall consider the admissibility, relevance, materiality and weight of the evidence.
Given that the Respondent’s representative is located in the US, and that the email transmitting the Response as received by the Center in Geneva, Switzerland bears a time stamp of “2:38:05 AM”, the Panel is prepared to accept that the Response was indeed despatched on January 26, 2015 according to the location of the Respondent and his representative and that the Response should therefore be treated as having been filed only one day late.
Despite the representative’s belief that the Rules allow an extension of time where a deadline falls on a weekend, there is no such provision in the Rules.
However, the Panel is mindful that the Response includes an explanation and evidence, which potentially cast light on the Respondent’s motive for registering, and use of, the disputed domain name. The Panel considers it would be unjust if this information were to be excluded from the case because the Response was served a day late, particularly where the deadline fell on a weekend. The Complainant has not been in any way prejudiced by the very short delay.
Accordingly the Panel decided to admit the late Response. As explained in Section 3. above, the Panel also invited the Complainant to address the new factual matters raised in the Response, an opportunity which the Complainant took up.
B. Identical or Confusingly Similar
The Complainant relies on its various REALE trade marks listed above.
The trade mark closest to the disputed domain name is International trademark registration number 603978 - a figurative mark dominated by the words GRUPPO REALE MUTUA.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP is said typically to involve a straightforward visual or aural comparison of the trade mark with the alphanumeric string in the disputed domain name.
Paragraph 1.11 of WIPO Overview 2.0 states that figurative, stylised or design elements in a trade mark are typically disregarded for the purpose of assessing confusing similarity, with such assessment generally being between the alpha-numeric components of the disputed domain name, and the dominant textual components of the relevant mark.
The Panel considers that the phrase “reale group” in the disputed domain name is visually and aurally similar to the phrase “gruppo reale”. Albeit that the words are inverted, the word “reale” is common to both and “gruppo” is the Italian for “group”, as well as looking and sounding like that English word.
Although not a straightforward question, on balance the Panel considers that omission of the additional term “mutua” from the disputed domain name does not prevent confusing similarity. This Italian word means “mutual” in English, a descriptive term, and arguably it is an adjunct to GRUPPO REALE, the dominant part of the trade mark. In the Panel’s view the trade mark is still – just about – recognisable with the disputed domain name.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s above-mentioned trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
“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, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
The Complainant has made out a prima facie case of lack of rights or legitimate interests in the disputed domain name and the Respondent has come forward with allegations and evidence to the contrary. The Panel must therefore weigh up all of the evidence, mindful that the burden of proof remains with the Complainant.
The issue is whether the Respondent has used the disputed domain name for a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy) and/or whether the Respondent as a business was known by the name reflected in the disputed domain name (4(c)(ii) of the Policy).
The Respondent, Andrew Reale, says he registered the disputed domain name in 2001 because he was conducting a property management business under the name “The Reale Group”, which incorporates his surname “Reale”.
The Complainant claims that the Respondent can have no rights or legitimate interests in the disputed domain name because it denotes a group of companies doing business, whereas the Respondent is not a group of companies. However, the issue here is simply whether or not the Respondent has genuinely been using the name in connection with a business and not whether the term “Group” accurately reflects his business structure. Indeed the Panel is aware that many entities which are not trading groups nonetheless use this term to give the impression of scale.
The Respondent has produced two “www.archive.org” screenshots of websites at the disputed domain name dated May 2004 and February 2010 respectively.
The May 2004 screenshot is of a website homepage branded “The Reale Group”, including some abstract imagery interwoven amongst two property photographs plus a third photograph of board nailed to a tree stating “The Reale Group. Setting the highest standard in real estate” followed by a large arrow with the words “OPEN HOUSE”. There are also links to “Home”, “About Us”, “Our Mission” and “Contact Us.”
The February 2010 screenshot presents a differently branded website. It is headed “The Reale Group” with the strapline: Property Development and Management”. The site describes the business as a “premier real estate development and management company with properties throughout the United States and around the world.” The website is said to include all “our current available rental listings along with helpful resources for renters, information about the Boston area, the mission of the The Reale Group, and how best to contact us.” The foregoing subjects all appear as hyperlinks. There is a link to an email address and telephone number.
Paragraph 4.5 of WIPO Overview 2.0 expresses the consensus view that UDRP panels may undertake limited factual research into matters of public record including visiting the website linked to the disputed domain name and consulting “www.archive.org” to see how the disputed domain name may have been used in the relevant past. The Panel has indeed visited “www.archive.org” and viewed the February 2010 screenshot. The Panel can confirm that the “listings” link did indeed lead to a page with listings of five Massachusetts properties for rental.
In the Panel’s view this evidence suffices to demonstrate that the disputed domain name has indeed been used for a bona fide offering of services and that the Respondent’s business has been known by the name reflected in the disputed domain name. The business appears to be on a very small scale, and without much of an Internet presence, but it is no less bona fide for that.
While the Complainant correctly observes that the archive website screenshots are only snapshots over a long period, the Panel disagrees with the Complainant’s assertion that they are unreliable unless “attached to” formal business documents such as a business name registration. Certainly, the Respondent could and should have done more to demonstrate his actual use of the name “The Reale Group”, whether by means of official documents or otherwise.
But, in the Panel’s view, the screenshots have the ring of truth about them. To suggest otherwise would effectively imply that the websites were concocted by the Respondent to give the false impression of trading under the name so as to justify his illicit holding of the disputed domain name vis-à-vis the Complainant. Based on the evidence before it, the Panel considers that that would be entirely far-fetched. First, the disputed domain name does include the Respondent’s actual surname, indicating that “The Reale Groupe” was a natural name for the Respondent to select (albeit one that gave a somewhat inflated impression of the scale of the business). Second, it seems highly unlikely, if not inconceivable, that the Respondent would have gone to the trouble of creating at least two different websites over the years, including the creation of detailed property listings, simply as a “front”.
The Complainant also draws attention the lack of a current active website at the disputed domain name, which the Respondent attributes to a website “redesign” but without explaining why this necessitated complete removal of the website “in the last year” or for exactly how long the site has been, and will remain, offline. Certainly the Respondent’s approach reinforces the impression that the website is far from central to its business but the Panel does not consider that the extended website downtime detracts from the legitimacy of the previous examples of active website use, discussed above. The Complainant alleges that the disputed domain name is for sale; this appears however to be a service provided by the registrar for third parties to make a “certified offer” for unavailable domain names, rather than the Respondent’s offering it for sale.
The Panel would add that the UDRP is a relatively limited process. The Panel does not have the benefit of the procedures available to a court such as witness testimony and document discovery, which might have cast further light on the legitimacy or otherwise of the Respondent’s use of the disputed domain name and the name reflected therein. The Panel can base its conclusion only on the record before it and, based on such information and for the reasons explained above, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name.
The Complainant has therefore failed to establish the second element of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
In view of the Panel’s conclusion in relation to “rights or legitimate interests”, it is unnecessary to consider the issue of bad faith in any detail.
The Panel would just comment briefly that the Complainant would have failed under this heading too on the basis that the Respondent had established a plausible legitimate reason to register the disputed domain name in connection with his own name/trading name and, further, that there is no evidence indicating that the Respondent was aware of the Complainant, let alone that he set out to target it. Amongst other things, there is no evidence that the Respondent has ever used the disputed domain name in a manner related to the Complainant’s field of activity.
E. Reverse Domain Name Hijacking (“RDNH”)
“Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant's lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name [...]
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP [...] or [...] misled the panel; a respondent's use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights [...]”
The Respondent claims that the Complainant knew that there was no plausible basis for a complaint. He questions why the Complainant made no mention of the fact that the disputed domain name incorporated the Respondent’s name. The Complainant says it would not have taken the case if the disputed domain name reflected the Respondent’s given name, i.e. “Andrew Reale”, but that the use of the term “Group” rendered the disputed domain name illegitimate. In the Panel’s view, use of the Respondent’s surname within the disputed domain name should have indicated the possibility, if not the likelihood, that the Respondent had a legitimate interest therein and it is surprising that the issue was not even discussed in the original Complaint. However, in the Panel’s view, this of itself does not equate to “knowledge” of the Respondent’s legitimate interests, required for a finding of RDNH.
The Respondent also observes that the Complainant has not attempted to explain the fact that the disputed domain name did resolve to a legitimate website for nine years. The Complainant does indeed assert that “the Respondent has not taken any steps to develop a website or use the disputed domain name in a legitimate manner since 2001”. That unqualified statement would warrant a finding of RDNH if there were evidence indicating that the Complainant was likely to have been aware of the “www.archive.org” screenshots at the time it filed the Complaint.
There is no mention of “www.archive.org” in the Complaint or the many exhibits thereto. How likely is it that the Complainant failed to check “www.archive.org” to see if there were any archive versions of a website at the disputed domain name, particularly given the potential importance to the case of any past use of the disputed domain name and in light of the Complainant’s other extensive investigations and searches into the Respondent’s activities? Certainly, the Panel would have had no difficulty in concluding that the Complainant was likely to have been aware of the May 2004/February 2010 screenshots if, say, the Complainant had relied upon different screenshots from “www.archive.org”. But it has not done so and so it is just about possible that the Complainant was unaware of the facility available at “www.archive.org”. Furthermore, the Respondent has the onus of establishing RDNH and he has not specifically asserted that the Complainant must have been aware of the archive screenshots, let alone provided any explanation as to why.
For these reasons the Panel has decided, against making a finding of RDNH.
For the foregoing reasons, the Complaint is denied.
Date: February 12, 2015