WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amissima Assicurazioni S.p.A. and Amissima Vita S.p.A., v. Contact Privacy Inc. Customer 0152823533 / Ada De Francia
Case No. D2019-0148
1. The Parties
The Complainant is Amissima Assicurazioni S.p.A of Milan, Italy and Amissima Vita S.p.A. of Genoa, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Contact Privacy Inc. Customer 0152823533 of Toronto, Ontario, Canada /
Ada De Francia of Palmi, Italy.
2. The Domain Name and Registrar
The disputed domain name <amissimassicurazioni.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2019, 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 January 24, 2019 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 January 28, 2019.
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 January 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2019.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on March 5, 2019. 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 Complainants Amissima Assicurazioni S.p.A. and Amissima Vita S.p.A. are part of the Amissima Insurance Group.
The first one, Amissima Assicurazioni S.p.A. operates in the field of assets and people protection, providing services to families and small/medium enterprises while the second operates in the field of social security and savings protection, making use of its shareholders’ wide experience for managing investments and distributing its insurance products.
The Complainants are the owners, among others, of the following registrations for the trademarks:
- AMISSIMA European Union Trademark Registrations (“EUTM”) Registration. No. 014711675 registered on February 8, 2016, in classes 35, 36 and 38;
- AMISSIMA Italy Registration No. 302015000028093 registered on February 5, 2016, in classes 35, 36 and 38;
- AMISSIMA asset management & insurance solutions - EUTM Registration No. 014711709, registered on December 16, 2016 in classes 35, 36 and 38;
- AMISSIMA asset management & insurance solutions” Italy - Registration No. 302015000033700, registered on June 19, 2017 in class 36.
Moreover, the Complainants are also the owners, among the others, of the domain names:
The disputed domain name was registered on October 1, 2018. At the time the Complaint was filed the disputed domain name resolved to an inactive site. Prior to the Complaint, the disputed domain name connected to a website reproducing the Complainants’ trademark and business name, in which the Respondent offered insurance services for cars.
5. Parties’ Contentions
The Complainants argue that the disputed domain name is almost identical to the Complainants’ trademarks and domain names.
The disputed domain name reproduces exactly the Complainants trademarks and domain names.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainants must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the term “amissima”, which is identical to Complainants’ registered trademarks AMISSIMA.
It is clear that the disputed domain name incorporates in its entirety the AMISSIMA trademark to which the descriptive term “assicurazioni” has been added.
It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. See e.g., eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307.
Moreover, is well established that the generic Top-Level Domains (“gTLD”) “.com”, being a necessary component of a domain name, may be disregarded for the purpose of comparison under this ground. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds the first element of the Policy has been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not in any way affiliated with the Complainants, nor have the Complainants authorized or licensed the Respondent to use their trademarks, or to seek registration of any domain name incorporating their trademarks.
The Respondent has not made any submissions on any demonstrated that it has rights or legitimate interests in the disputed domain name.
The Complainants contend that the disputes domain name does not correspond to the name of the Respondent, which is not commonly known as “Amissimassicurazioni”.
In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that: “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Panel concludes, also noting the Panel’s findings below, that the Respondent lacks any rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has, therefore, been met.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, whichconstitute evidence of bad faith. This list is not exhaustive, but merely illustrative.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, the [Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on its web site or location.”
The Panel retains that the term “assicurazioni” (the Italian word for “insurances”) is related to Complainants’ core business. Thus, the public is likely to believe that the disputed domain name <amissimassicurazioni.com> is related to a website from which the Complainants’ branded products can be purchased. The Panel finds that the addition of the descriptive word “assicurazioni” does not serve to sufficiently distinguish or differentiate the disputed domain name from Complainants’ AMISSIMA trademarks.
Based on the record the Panel considers that the Respondent, by registering and using the disputed domain name incorporating the Complainant’s well-known registered trademarks AMISSIMA, is in effect attempting to attract the customers to she web page. The Panel notes in this regard, that the Respondent’s website could be easily confused with the Complainant’s website and that Internet users may be led to disclose confidential information. (The Panel notes that the website at the disputed domain name whilst active, was most likely being used fraudulently as part of a phishing scam (The Panel notes that Complaint, Annex H).
The Panel finds this probably as Internet users were provided with the option of giving their personal and financial information through the form that was inserted at the end of each webpage of the Domain Name.
The Panel finds it likely that Internet users and consumers think that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.
For all the foregoing reasons, the Panel concludes that the Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <amissimassicurazioni.com> be transferred to the first Complainant: Amissima Assicurazioni S.p.A.
Date: March 19, 2019