WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unipol Gruppo Finanziario S.p.a. v. sm goo
Case No. D2016-2015
1. The Parties
The Complainant is Unipol Gruppo Finanziario S.p.a. of Bologna, Italy, represented by Bacchini Mazzitelli Law Firm, Italy.
The Respondent is sm goo of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <domuxhome.com> (the "Domain Name") is registered with TurnCommerce, Inc. DBA NameBright.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2016. On October 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2016. On November 2, 2016 the Center sent an email communication to the parties informing an email address found in one of the annexes to the Complaint was not copied in the notification of complaint email and giving the Respondent five days to inform if it wished to participate in the proceedings. The Respondent did not submit any response.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on November 21, 2016. 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 parent company of the Unipol Group, which is one of the largest insurance groups in Italy. Unipol Group was founded in 1962 in Bologna, Italy, as a cooperative provider of non-life insurance and has become the second largest insurance group on the Italian market and first in non-life insurance business. The Unipol Group has approximately 14,000 employees.
In its real estate business, the Unipol Group owns property of major historical, symbolic and architectural value, including the Velasca Tower and the Galfa Tower in Milan. In order to enhance these real estate assets, the Unipol Group created the Urban Up project with the aim of studying and implementing the redevelopment of important buildings owned, mainly in Milan and Turin. The Unipole Group, within this project, uses the "Domux Home" and "Domux Office" signs to promote its service of temporary residential and office rentals in prestigious buildings and furnished with special interior design.
The Complainant is the owner of two device marks containing the words DOMUX HOME (the "Trade Marks"):
1. European Union ("EU") trade mark registration no. 015317589, filed on April 8, 2016 and registered on September 8, 2016;
2. Italian trademark application no. 302016000036491 filed on April 8, 2016.
The Respondent has registered the Domain Name on April 11, 2016.
The faulty address information provided by the Respondent as registrant of the Domain Name – email addresses, fax number, postal address - has not enabled the Center to positively communicate by post or fax with the Respondent. According to the WhoIs data for the Domain Name, the postal address is (street) Beijing, (city) Bejing [sic!], (province) Beijing, China. In any event, the Center's emails to the Respondent have been delivered.
The Complainant has submitted a print of an email, with the Respondent's email address, signed by a A. Penacchioni, with an address in Milan, offering to sell the Domain Name to the Complainant for EUR 3,000. Other evidence shows that a domain name similar to the Domain Name (also comprising the expression "Domux Home" in another generic Top-Level Domain ("gTLD")), can be registered for EUR 8.53.
5. Parties' Contentions
The Complainant states that it has exclusive rights over the Trade Marks, as evidenced by the registration certificates, and that the Domain Name is identical and/or confusingly similar with the Trade Marks. The Complainant submits that the Domain Name fully incorporates the verbal element "Domux Home" of the Trade Marks, which is immediately perceivable in the Trade Marks.
The Complainant states that it has never licensed, authorized nor permitted or consented the Respondent to use the Trade Marks or any trademark similar thereto. Furthermore, the Complainant points out that the Respondent registered the Domain Name on April 11, 2016, three days after the date on which the Complainant submitted the applications for the Trade Marks.
According to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name, is not holding any rights or legitimate interests in the Domain Name, has registered it in bad faith and there is no legitimate reason to justify the choice of the word "Domux Home" in its business activity, if any. The Complainant alleges that the Respondent has never used the Domain Name.
The Complainant submits that, since the Respondent registered the disputed Domain Name three days after the Complainant filed the applications for the Trade Marks, it is not conceivable that the Respondent would not have had actual knowledge of the Trade Marks at the time of the registration of the Domain Name.
According to the Complainant, the Domain Name is not one that one could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. The Complainant further states that this shows that the Respondent was fully aware of the Complainant and the Trade Marks when registering the Domain Name which suggests registration in bad faith. In addition, the Complainant brings forward that the Respondent did so with full knowledge that the Domain Name would likely cause an Internet user visiting a website at a URL containing the Domain Name to assume that the same is somehow sponsored by or affiliated with the Complainant.
The Complainant adds that the Domain Name has been used in bad faith by the Respondent in that the Domain Name has been registered primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark in excess of the documented out–of–pocket costs of the Respondent directly related to the Domain Name.
According to the Complainant, an Internet search it has carried on the email address of the Respondent (smgoo3217@[…].com) has resulted in a finding of more than one hundred domain names connected to this email address.
Furthermore, the Complainant submits that the evidence shows that the Domain Name has not been used. However, the Complainant states that passive holding of a domain name can also be considered bad faith use under certain circumstances, as is the case here.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
This case is very similar to Unipol Gruppo Finanziario S.p.A. v. Edward Khan, WIPO Case No. D2016-2070 concerning the domain name <domuxoffice.com>.
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trade Marks.
The Trade Marks are device marks, which contain the element "Domux Home" which is incorporated in its entirety in the Domain Name. Therefore, the Domain Name is confusingly similar to the Trade Marks. The gTLD ".com" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0, paragraph 1.2")).
Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks.
B. Rights or Legitimate Interests
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not commonly known by the Domain Name and has not acquired trademark rights to the Domain Name. The Complainant has not authorized, licensed or otherwise consented to the Respondent's registration and use of the Trade Marks as part of the Domain Name. In addition, "Domux Home" is not a generic or descriptive term; nor does it appear to be a term that a potential registrant would accidentally think of. Therefore, it is difficult to imagine a bona fide use of the Domain Name, without reference to the Trade Marks.
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
In a case like the present, where the Domain Name has not been used, no Response has been filed and there has been no email or other written contact between the parties, the circumstances of the case can form the basis of a finding of bad faith registration and use of the Domain Name. In particular, the Complainant may demonstrate that the Respondent, when registering the Domain Name, knew or should have known the Trade Marks, as this may indicate that the Domain Name was registered to profit from the reputation of the Trade Marks and/or from the confusing similarity of the Domain Name and the Trade Marks, by attracting Internet users who believe there is a connection or affiliation between the companies behind the Domain Name and the Trade Marks.
Such knowledge may be derived or construed from the fact that the Domain Name was registered after the date of filing of the Trade Marks. However, although the Domain Name was registered three days after the application date of the Trade Marks, the registration records of both Trade Marks as verified online by the Panel show that the applications were not published until June 1, 2016, therefore well after April 11, 2016, the registration date of the Domain Name. Other evidence submitted by the Complainant, of publications concerning the "Domux Home" project, are from later dates, from June 2016 onwards, and are therefore not relevant as evidence that the Respondent knew or should have known the Trade Marks when registering the Domain Name.
However, as set out above, "Domux Home" is not a generic or descriptive term and does not appear to be a term or word that a person wishing to register a domain name would accidently think of. This seems to be confirmed by the fact that a Google search by the Panel for "Domux Home" resulted in three pages of references to appartments in the Complainant's "Domux Home" project. Later pages contained links to websites using the word, mark or sign "domus", the Latin word for house. This may imply that the Respondent was indeed aware of the Trade Marks (or at least, the use by the Complainant of the sign "Domux Home"), when registering the Domain Name.
Such finding is also reinforced by the evidence submitted by the Complainant that the Respodent or someone acting on its behalf offered to sell the Domain Name in amount in excess of its out-of-pocket costs.
Furthermore, the Panel finds that the Respondent has apparently taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made. In particular, the postal address does not have a street name or number, merely referring to Beijing, and the name of the city and province are given as Bejing.
Evidence submitted by the Complainant shows that the email address given for the Respondent (smgoo3217@[…].com) is associated with over one hundred domain names, of which none, upon checking a sample, resolved to an active website. This suggests that the Respondent hoards domain names in order to sell them to the highest bidder. If such domain names are of a generic nature, such a practice may under circumstances be a legitimate and bona fide use under the Policy (see Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016). However, this is generally not the case if the registrant – as is the case here – provides false contact details. In addition, although the domain names registered by the Respondent at first appearance consist of generic or descriptive terms, sometimes in a fantasy spelling (such as "domux" instead of "domus"), at least some of these domain names include terms which appear to be identical or similar to a third party's trade mark or to band names.
On balance of these circumstances, the Panel finds that the Domain Name has been registered in bad faith.
With regard to bad faith use, the fact that the Domain Name at this stage does not appear to resolve to an active web site does not imply a lack of bad faith. As set out in the WIPO Overview 2.0, paragraph 3.2, the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and recently HUGO BOSS Trade Mark Management GmbH & Co. KG, HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith.
In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Name:
- the probability that the Respondent was aware or should have been aware of the Complainant's rights in the Trade Marks;
- The non-dictionary nature of the Domain Name such that the Respondent cannot claim to have "accidentally" registered a domain name that happens to correspond to the Trade Marks;
- the lack of a formal Response of the Respondent;
- an apparent offer by a person behind the Respondent's e-mail address to sell the Domain Name for EUR 3,000;
- the fact that the Respondent has registered over one hundred domain names in 2016;
- the use of the same false contact information in all these registrations.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.
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, <domuxhome.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: December 4, 2016