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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello

Case No. D2020-1955

1. The Parties

The Complainant is Banca Mediolanum S.p.A., Italy, represented by Studio Legale Bird & Bird, Italy.

The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Marzia Chiarello, Italy.

2. The Domain Name and Registrar

The disputed domain name <banca-mediolanum.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 28, 2020, 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 July 28, 2020 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 August 1, 2020.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2020. An informal communication from the Respondent was sent to the Center on August 4, 2020. However, the Respondent did not submit a formal response.

On August 24, 2020, the Complainant submitted a communication to the Center requesting the suspension of the proceedings to explore settlement possibilities. The proceedings were suspended until September 24, 2020, in which date the Complainant did not request an extension nor did the Complainant notify the Center of a settlement. On September 29, 2020, the Center informed the Parties that it would proceed with panel appointment.
The Center appointed Federica Togo as the sole panelist in this matter on October 20, 2020. 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 registered owner of trademarks in several jurisdictions consisting of or containing the term “MEDIOLANUM”, e.g., European Union Trademark registration No. 004671764 MEDIOLANUM (word), registered on October 3, 2006, in classes 35, 36, 38 notably concerning financial and insurance services. This Trademark has been duly renewed and is in force. European Trademark registration No. 015131551 BANCA MEDIOLANUM (word), registered on July 13, 2016, in classes 9, 18, 25, 35, 36, and 41 notably concerning banking, financial and insurance services. This Trademark is in force. The Complainant is the parent company of Mediolanum Group, which provides banking, financial and insurance products and services in Italy and other countries.

It results from the information disclosed by the Registrar that the disputed domain name was created on May 19, 2020.

Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that the Complainant is the parent company of Mediolanum Group, which provides banking, financial and insurance products and services, doing business in Italy and other countries. It was established in Italy in 1997 as a multi-channel bank and in 2000 started the process of expansion abroad by acquiring Fibanc banking group in Spain, where it now operates as Banco Mediolanum. The growth in Europe continued in 2001 with the acquisition of Bankhaus August Lenz & Co. in Germany and Gamax Holding AG in Luxembourg and Western International Life Insurance Company Ltd, which then changed its name to Mediolanum International Life and concentrates on developing products under Irish law, especially life policies, which are then distributed on the European market through branches in Italy, Spain and Germany. Nowadays it is an undisputed leading group of companies that provides a wide range of services through user-friendly solutions based on new technologies, including current accounts, debit and credit cards, mortgages and loans, saving investments solutions, but also insurance, retirement, and real estate products and services. The Complainant underlines that in 2018 it counted 2,270 employees, 1,249,881 customers, assets under administration / management for a value of EUR 74,085 million, and a net income of EUR 255.7 million.

In addition, the Complainant uses the official website “www.bancamediolanum.it” in connection with its activity.

The Complainant contends that its Trademark and trade name BANCA MEDIOLANUM is extensively used and known, in particular for banking and financial services.

The Complainant further contends that the disputed domain name is identical and in any case confusingly similar to the Complainant’s registered Trademark and trade name since it simply consists of the Complainant’s Trademark and trade name BANCA MEDIOLANUM, followed by the generic Top-Level Domain (“gTLD”) “.com”. This circumstance cannot be counterbalanced by the gTLD “.com”, which is of no significance.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, it has neither authorized, nor somehow given its consent to, anyone to register and use the disputed domain name <banca-mediolanum.com> that exactly duplicate the Complainant’s well-known Trademark and trade name BANCA MEDIOLANUM. According to the Complainant, the Respondent is not known by the name “Banca-Mediolanum” and has no rights or legitimate interests in this name, which does not correspond to any trademarks it may have. In addition, the Complainant underlines that the Respondent is an Italian individual or at any rate an individual based in Italy, where the Trademark and trade name BANCA MEDIOLANUM are extremely well known.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. In fact, the disputed domain name reproduces, without any authorization or approval, the Complainant’s registered Trademark (which is distinctive and renowned) and trade name BANCA MEDIOLANUM. The Complainant underlines that it is impossible that the Respondent chose to register the disputed domain name with no knowledge of the Complainant and its trade name and trade mark BANCA MEDIOLANUM, taking also into account that the Respondent is an Italian individual or at any rate an individual based in Italy, where the trademark and trade name BANCA MEDIOLANUM are extremely well known. In addition, the circumstance that the data of the Respondent are not available in the WhoIs database and that the disputed domain name is inactive and passively hold are also corroborative of the Respondent’s bad faith in registering and using the disputed domain name.

B. Respondent

On August 4, 2020, the Respondent sent an email communication to the Center indicating that she did not speak English well. The Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(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.

The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of European Trademark registration No. 015131551 BANCA MEDIOLANUM (word), registered on July 13, 2016, in classes 9, 18, 25, 35, 36, and 41 notably concerning banking, financial and insurance services. This Trademark is in force. (This Trademark registration predates the creation date of the disputed domain name, which is May 19, 2020.)

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark BANCA MEDIOLANUM is fully included in the disputed domain name. Furthermore, it is the view of this Panel that the addition of a hyphen in the disputed domain name between the terms “banca” and “mediolanum” cannot exclude the confusing similarity between the disputed domain name and the Complainant’s trademark, since the Complainant’s Trademark is clearly recognizable in the disputed domain name.

Finally, the gTLD “.com” of the disputed domain name has to be disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1).

In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark BANCA MEDIOLANUM, e.g., by registering the disputed domain name comprising the said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

In addition, no content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered as a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraphs 4(c)(i) and (iii) of the Policy (see, e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320). Moreover, the Panel notes that the disputed domain name is clearly constituted by the Complainant’s registered and well-known trademark BANCA MEDIOLANUM and that the trademark BANCA MEDIOLANUM is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant (see Banca Mediolanum S.p.A. v. Carlo Pascarella, Carlo Pascarella, WIPO Case No. D2020-0161). The Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s Trademark and trade name with the intent to attract Internet users for commercial gain (e.g.,KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. supra; VistaPrint Technologies Ltd., WIPO Case No. D2015-0886; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

Based on the evidence submitted by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant’s trademark BANCA MEDIOLANUM is widely known (see also Banca Mediolanum S.p.A. v. Carlo Pascarella, Carlo Pascarella, supra). Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s trademark when she registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed BANCA MEDIOLANUM mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth, WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, supra).

The disputed domain name does not resolve to an active website. In this regard, the Panel notes that the current passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In fact, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Complainant’s trademark BANCA MEDIOLANUM is widely known; (2) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use; (3) the Respondent originally used a privacy service hiding her identity; and (4) the implausibility of any good faith use to which the disputed domain name may be put (see WIPO Overview 3.0 at section 3.3).

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <banca-mediolanum.com> be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: November 3, 2020

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