WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Esselunga S.P.A. v. Wang Lian Feng

Case No. D2018-0967

1. The Parties

The Complainant is Esselunga S.P.A. of Milan, Italy, represented by Studio Legale Associato Barzano & Zanardo, Italy.

The Respondent is Wang Lian Feng of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <esselunga.tech> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2018. On May 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2018, 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.

May 11, 2018, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On May 14, 2018, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 May 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 7, 2018.

The Center appointed Sok Ling MOI as the sole panelist in this matter on June 14, 2018. 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 an Italian retail store chain founded in 1957. It has more than 150 points of sale and boasts of a revenue of EUR 6.8 billion. It operates an online retail store on its website, "www.esselunga.it" and is active on social media, e.g., through its Facebook account at "www.facebook.com/Esselunga/".

The Complainant is the registered proprietor of the following trade mark registrations:

Jurisdiction

Trade Mark

Registration No.

Registration Date

Class

Italy

ESSELUNGA

0000890665

May 7, 2003

3, 6, 8, 9, 16, 21, 28, 29, 30, 31, 32, 33, 42

Italy

ESSELUNGA & ribbon device

0001002680

April 11, 2006

1-45

European Union

ESSELUNGA BIO & device

003370202

May 4, 2005

5, 29, 30, 31, 32, 33

The Complainant is also the registered proprietor of the following domain names:

- <esselunga.it>

- <esselunga.eu>

The disputed domain name <esselunga.tech> was registered on March 29, 2018. According to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain name does not resolve to any active website and appears never to have done so in the past.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to its trade mark(s). The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and requested that English be the language of the proceeding. The Respondent did not respond on this issue.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters rather than Chinese script;

(b) the top-level extension of the disputed domain name comprises the English word "tech" which is the commonly accepted abbreviation for "technology";

(c) the email address of the Respondent comprises English words; and

(d) the Respondent has registered other domain names (e.g., <vitasoy.site>, <viablue.tech>, <volkswagen.tech>, and <valentino.tech>) which are in Latin characters, some of which also comprise English words.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in ESSELUNGA by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant's trade mark ESSELUNGA in its entirety. The addition of the generic Top-Level Domain ("gTLD") ".tech" does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade mark.

Consequently, the Panel finds that the disputed domain name <esselunga.tech> is identical to the Complainant's trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, 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; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974).

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the ESSELUNGA trade mark or to seek registration of any domain name incorporating the ESSELUNGA trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term "esselunga".

As the disputed domain name does not resolve to any active website, there is no evidence to suggest that the Respondent is using or has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent did not file a response and has thus failed to offer any explanation for its registration of the disputed domain name, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark 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 Panel notes that, according to the evidence submitted by the Complainant and as of the date of this decision, the disputed domain name does not resolve to any active website. Nevertheless, as noted by many previous UDRP panels, passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.2.

The Complainant's retail store has been in operation since 1957 while its trade mark ESSELUNGA has been registered in Italy since 1980. Being a fanciful term, "esselunga" is indeed distinctive. The Complainant has submitted evidence to show that it enjoys an active online presence. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the ESSELUNGA trade mark and its use by the Complainant. As such, a presumption arises that that the Respondent was aware of the Complainant and its trade marks when it registered the disputed domain name, particularly given that the disputed domain name is identical to the Complainant's mark. Registration of a domain name that incorporates a complainant's well-known trade mark suggests opportunistic bad faith.

As the Respondent had also registered several other domain names comprising trade marks belonging to other well-known brands (such as Valentino, VitaSoy and Volkswagen), there is prima facie evidence that the Respondent is engaged in a pattern of cybersquatting and has registered the disputed domain name in order to prevent the Complainant from reflecting its trade mark in a corresponding domain name.

The Center was not able to reach the Respondent at the physical address and email address recorded with the Registrar, which strongly suggests that the Respondent had provided false contact details at the time of registering the disputed domain name. The Panel considers this an attempt by the Respondent to conceal its identity which further suggests a lack of bona fides.

The Respondent has not categorically denied the Complainant's allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 <esselunga.tech> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: July 9, 2018