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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

UniCredit S.p.A. v. Whois privacy services provided by DomainProtect LLC / Yuri Antonov

Case No. D2015-1572

1. The Parties

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

The Respondent is Whois privacy services provided by DomainProtect LLC of Saint Petersburg, the Russian Federation / Yuri Antonov of Saint Petersburg, the Russian Federation.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 3, 2015. On September 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2015, 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 September 21, 2015 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 September 23, 2015.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 19, 2015.

The Center appointed Alfred Meijboom as the sole panelist in this matter on October 22, 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.

4. Factual Background

The Complainant is the owner of International Trademark registration no. 760491 FINECO of December 12, 2000 for services in classes 35, 36 and 42 for inter alia, online supply systems and computer based services relating to commercial business, insurances, home-banking services and professional advice services, based on an Italian trademark and for the following designated states Denmark, Estonia, Finland, United Kingdom of Great Britain and Northern Ireland, Greece, Iceland, Lithuania, Turkey, Albania, Austria, Bosnia and Herzegovina, Bulgaria, Benelux, Belarus, Switzerland, Czech Republic, Germany, France, Croatia, Hungary, Liechtenstein, Latvia, Monaco, Moldova, Poland, Portugal, Romania, Serbia, Russian Federation, Slovenia, Slovakia, San Marino and Ukraine (the "Trademark").

The disputed domain name was registered on March 10, 2015.

5. Parties' Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Trademark.

The Complainant alleges that the Respondent has no rights or legitimate interest in relation to the disputed domain name because the Complainant is well-known as it is the third largest bank in Europe, with Fineco as the Complainant's group online-only Internet bank and financial broker with a reputation in Italy and in Europe of its own due to large scale advertisement on all available media, whereas the Respondent is not commonly known under the disputed domain name, is hiding behind a name shield agency and has no commercial interest that could conceivably be considered as legitimate in respect of the disputed domain name.

The disputed domain name is registered and used in bad faith because the Respondent has registered the disputed domain name which is confusingly similar to the Trademark and which has no connection to the Respondent's name. Further, the Respondent from time to time publishes placeholder web pages under the disputed domain name that intentionally attempted to attract Internet users to the Respondent's web site or other online locations for commercial gain, inducing confusion in web readers as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location, creating a risk of false association with the Trademark and the Complainant's business.

B. Respondent

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

6. Discussion and Findings

The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that the Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

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

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

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well established that generic Top-Level Domains ("gTLDs"), such as ".com", may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Panel finds that the disputed domain name is confusingly similar to the Trademark. The Respondent has taken the Trademark in its entirety and merely added generic word "group", which is insufficient to differentiate the disputed domain name and Trademark (e.g., CGNU Plc. v. studio Promoart, WIPO Case No. D2001-1421; Carrefour S.A v. Multigestiones Puertonorte S.L., WIPO Case No. D2000-0837; Arkema France v. Robert Greco/Domains By Proxy, LLC, WIPO Case No. D2013-0650).

Consequently, the first element of paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel takes note of the allegations of the Complaint that the Respondent is not commonly known by the disputed domain name, used a privacy shield to hide its identity, and that there is no evidence of commercial interest that could be considered as legitimate in respect of the disputed domain name. The allegations of the Complainant remain unchallenged, so that there is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that constitute registration and use in bad faith of the disputed domain name. The Complainant's arguments are very brief and only provide two circumstances, without clarifying why such circumstances would qualify as the disputed domain name's registration and use in bad faith, and apparently leaving it to the Panel to provide the reasons therefore. The onus of proof is, however, for the Complainant, and remains for the Complainant even if the Respondent did not supply a Response. The Panel is prepared to fill in the reasons if they are obvious (as the Panel did when discussing the first element of paragraph 4(a) of the Policy despite that the Complainant merely stated that the disputed domain name is confusingly similar to the Trademark, without explaining such assertion), but this is not the case for the third element of paragraph 4(a) of the Policy, which requires the Complainant to prove that the disputed domain name was both registered and used in bad faith. In this light it is not sufficient to merely repeat that the disputed domain name is confusingly similar and has no connection to the Respondent's name (which the Complaint already stated as circumstances why the first and second element of paragraph 4(a) of the Policy were met). Finding confusing similarity is not sufficient to automatically also find registration and use of the disputed domain name in bad faith.

However, the case file shows that the Respondent used a false address and telephone number when he registered the disputed domain name, and his email address bounced, as evidenced when the Center unsuccessfully tried to notify the Respondent of the Complaint. When balancing the lack of clarity of the Complaint and the Respondent's failure to submit a Response, bearing in mind the additional circumstances of the use of a false contact details and a bouncing email, the Panel decides in favor of the Complainant. The fact that the Respondent used a privacy service to shield his true identity and used a false address and telephone number (and perhaps also a false identity) when he registered the disputed domain name, while in the Panel's view the Respondent could or should have known the Trademark at the time of registration of the disputed domain name, satisfies the Panel that the disputed domain was registered in bad faith (e.g. Société Softissimo v. Owner, WIPO Case No. D2001-1105; Swarovski Aktiengesellschaft v. Hellen Admas, WIPO Case No. D2013-0303; Areva v. Whois Privacy Protection Service, Inc. / Name Redacted, WIPO Case No. D2013-1778).

The Complainant's second claim that the Respondent "intentionally attempted to attract Internet users to the Respondent's web site or other online locations for commercial gain, inducing confusion in web readers as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's website or location, creating a risk of false association with the Complainant's mark and business" merely repeats paragraph 4(b)(iv) of the Policy. The Complainant obviously referred to the Respondent's website to which the disputed domain name occasionally resolved, and which possibly contains links to, inter alia, chat rooms, home rental and travel sites. This assumingly being the case, the Panel is satisfied that the disputed domain name resolved to a website which takes advantage of the confusion amongst Internet users concerning the source or affiliation of the disputed domain name which is confusingly similar to the Trademark, and is therefore used in bad faith.

Consequently, the third and last element of paragraph 4(a) of the Policy is also met.

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 <finecogroup.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist
Date: October 27, 2015

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