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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Mediolanum S.p.A. v. Carlo Pascarella, Carlo Pascarella

Case No. D2020-0161

1. The Parties

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

The Respondent is Carlo Pascarella, Carlo Pascarella, Italy.

2. The Domain Name and Registrar

The disputed domain name <bancamediolanum.info> 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 22, 2020. On January 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 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 January 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 24, 2020, the Respondent submitted three informal communications to the Center. The Complainant filed an amended Complaint on January 28, 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 January 31, 2020. On January 31, 2020, the Center received an email communication from the Respondent. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2020. The Response was filed with the Center on February 19, 2020.

The Center appointed Luca Barbero as the sole panelist in this matter on February 26, 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 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.

The Complainant is the owner of several trademark registrations for the trademark MEDIOLANUM, including the following, as per trademark certificates submitted as Annexes to the Complaint:

- European Union trademark registration No. 004671764 for MEDIOLANUM (word mark), filed on October 7, 2005 and registered on October 3, 2006, in classes 35, 36, and 38;

- European Union trademark registration No. 013598065 for MEDIOLANUM (figurative mark), filed on December 22, 2014 and registered on May 18, 2015, in classes 09, 16,18, 25, 35, 36, 38, and 41;

- European Union trademark registration No. 013822911 for M MEDIOLANUM (figurative mark), filed on March 13, 2015 and registered on August 14, 2015, in classes 09, 16, 18, 25, 35, 36, 38, and 41;

- European Union trademark registration No. 015131551, for BANCA MEDIOLANUM (figurative mark), filed on February 2, 2016 and registered on July 13, 2016, in classes 09, 18, 25, 35, 36, and 41;

- European Union trademark registration No. 015131551 for BANCA MEDIOLANUM (word mark), filed on February 22, 2016 and registered on July 13, 2016, in classes 09, 18, 25, 35, 36, and 41;

- European Union trademark registration No. 014747059, for BANCA MEDIOLANUM (figurative mark), filed on October 30, 2015 and registered on March 9, 2016 in classes 09, 18, 25, 35, 36, and 41;

The Complainant is also the owner of the domain name <bancamediolanum.it>, which was registered on April 1, 1998 and is used by the Complainant to promote its services under the trademark BANCA MEDIOLANUM, as well as of other MEDIOLANUM-formative domain names, including the following: <mediolanumcorporateuniversity.it>; <mediolanumprivatebanking.it>; <mediolanumfiduciaria.it>; <mediolanumassicurazioni.it>; <mediolanumgestionefondi.it>; <mediolanuminternationalfunds.it>, <mediolanumvita.it>; and <fondazionemediolanum.it>.

The disputed domain name <bancamediolanum.info> was registered on August 30, 2019 and currently resolves to a landing parking page indicating that the disputed domain name is reserved.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <bancamediolanum.info> is identical and in any case confusingly similar to the trademark BANCA MEDIOLANUM in which the Complainant has rights, as it reproduces the trademark in its entirety with the mere addition of the generic Top Level Domain (“TLD”) “.info”.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that in no way has it ever authorized or somehow given consent to anyone to register and use the disputed domain name. In addition, the Complainant states that the Respondent is not known and cannot be known by the disputed domain name, and that it cannot claim to have any rights or legitimate interests in the disputed domain name, because it is based on the Complainant’s trademark BANCA MEDIOLANUM. Moreover, the Complainant underlines that the Respondent is an individual based in Italy, where the trademark BANCA MEDIOLANUM is extremely well known.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the disputed domain name resolves to a parking page which announces that the disputed domain name is reserved and points out that, the very fact that the registration of the disputed domain name has been carried out by an entity that has no relationship to that trademark, is in itself evidence of bad faith registration. The Complainant also emphasizes that, due to the renown of the trademark BANCA MEDIOLANUM, it is unlikely that the Respondent could have registered the disputed domain name without having the trademark in mind. As a further circumstance evidencing bad faith, the Complainant highlights that the disputed domain name has never been used in relation to an active website and is therefore being passively held by the Respondent, thus also causing a likelihood of confusion as to the source, sponsorship and affiliation of its website.

The Complainant underlines that the highly regulated banking and financial activities of the Complainant under the trademark BANCA MEDIOLANUM render implausible any good faith by the Respondent in registering and using the disputed domain name.

Lastly, the Complainant asserts that the fact that the Respondent’s details were not initially available in the WhoIs database and that the disputed domain name is currently inactive is to be seen in itself an act of bad faith by the Respondent.

B. Respondent

The Respondent does not deny the confusing similarity between the disputed domain name and the Complainant’s trademark, nor does it question the notoriety of the Complainant’s trademark. He does however put forward the following arguments with regards to the possibility of causing confusion as to the source, sponsorship and affiliation of the disputed domain name with the Complainant’s trademark.

The Respondent in fact claims that is it highly unlikely that the Internet user should be “confused” by the disputed domain name for the following reasons:

- the disputed domain name does not have a Content Management System (“CMS”“) installed on it;

- the disputed domain name is not indexed on any Search Engine Result Pages (“S.E.R.P.”);

- the disputed domain name does not have any content indexed in any browser, therefore unless the exact domain Uniform Resource Locator (“URL”) is typed in any browser search engine, it will not appear in any search results;

- the disputed domain name does not have any Search Engine Marketing (“SEM”) campaigns related to it;

- the disputed domain name does not have any redirection of its DNS (“Domain Name Server”) to any other website or Application (“app”).

The Respondent further argues that there is a clear difference between a trademark and a domain name and that whilst it is highly likely that a trademark owner would want to register domain names containing the registered trademark, it does not mean that such ownership should imply that all other domain names registered in the same name and in all existing TLD variations, should necessarily be transferred to the trademark owner by right.

With reference to rights or legitimate interests in respect of the disputed domain name, the Respondent disagrees with all the arguments set forth by the Complainant for the following reasons:

- the Respondent owns a web design and digital marketing agency in Italy, so he works with websites, domain names and clients in Italy and worldwide on a daily basis; he also owns a large domain name portfolio which it collects partly as a hobby and partly for passion, purportedly to protect companies such as the Complainant (of which he is also a client), from ill-intentioned hackers which instead, may want to register the disputed domain name to carry out illegal phishing and/or other fraudulent activities.

The Respondent also disagrees with the arguments set forth by the Complainant with regards to the circumstances evidencing bad faith, for the following reasons:

- the Respondent is not redirecting any traffic from its domain to any other website, app or other domain name in its name, with the intent to gain financially from it;

- the disputed domain name, in no way harms the Complainant’s reputation, as it is not being used for any commercial use but is simply stored in the Respondent’s domain name portfolio;

- the Respondent does not have any business motivation or unfair competition purpose in mind, nor is it asserting to be involved in the banking market niche;

- the Respondent is not selling any products or services related to the trademark or profiting in any way from the use of the disputed domain name;

- the Respondent never contacted or tried to extort money from the Complainant in order to sell the disputed domain name and has no intention to engage in such conduct;

- the Respondent believes that as the Complainant already owns several domain names encompassing its trademarks, if the Complainant had wished to also own the disputed domain name, it should have registered it before. Therefore, the Respondent asserts that the Complainant cannot have thought that the disputed domain name would have been relevant to them or their business;

- the Respondent never tried to sell the disputed domain name to any third party either, to make a profit out of it;

- the Respondent never installed any website or app in the disputed domain name;

- the disputed domain name is simply “stored” in the Respondent’s portfolio, for the reasons mentioned above.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark BANCA MEDIOLANUM based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex 13 to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In the case at hand, the Complainant’s trademark BANCA MEDIOLANUM is entirely reproduced in the disputed domain name, with the mere addition of the generic TLD “.info”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.

Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.

Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Carlo Pascarella, might be commonly known by the disputed domain name. The Respondent also asserted to have registered the disputed domain name to purportedly “…protect companies such as BANCA MEDIOLANUM (of which he is also a client), from ill-intentioned hackers who instead, may want to register the domain name to carry out illegal phishing and/or other fraudulent activities”. The Panel notes that, besides such unsubstantiated assertion, the Respondent has not submitted any evidence to demonstrate any possible legitimate interest in the disputed domain name.

Also, as highlighted above, the disputed domain name has been pointed to a mere landing page indicating that the disputed domain name is reserved. The Panel finds that the Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name without intention to misleadingly divert the consumers or to tarnish the Complainant’s trademark.

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.

Finally, the Panel notes that the disputed domain name is passively held. In view of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where the Panel found that “Absent some contrary evidence from Respondent, passive holding of a domain name does not constitute “legitimate noncommercial or fair use””. See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195, noting that respondent was a passive holder of the domain name <crateandbarrel.org> in that “the domain name does not resolve to a site” and ruling that, “given that the domain name has been registered since mid-March, 2000, it is fair to infer that the respondent has not made, nor taken any preparatory steps to make, any legitimate use of the domain name”; and Netcentives Inc. v. B W Brody Co, WIPO Case No. D2000-0672, finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the domain name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant’s mark.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

As to bad faith at the time of registration, the Panel notes that, in light of the widely known character of the Complainant’s trademark, the Respondent was more likely than not aware of the Complainant’s trademark. Indeed, in light of the fact that the Respondent has not denied knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name, that the Complainant’s trademark is a coined term and that the Respondent stated that it is withholding the disputed domain name with the intent of allegedly “protecting” the Complainant – of which it would be allegedly client - from possible hackers who may want to profit from the sale or use of the disputed domain name, the Panel finds that the Respondent obviously registered the disputed domain name with the Complainant’s trademark in mind.

Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its very selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.

In addition to the above, in view of: i) the distinctiveness and reputation of the Complainant’s trademark BANCA MEDIOLANUM; ii) the Respondent’s registration of a domain name identical to the Complainant’s prior trademark; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iv) the implausibility of any good faith use to which the disputed domain name may be put, the Panel finds that the current passive holding of the disputed domain name by the Respondent supports a finding of bad faith registration and use. See Section 3.3 of WIPO Overview 3.0.

In view of the above, the Panel finds that the Complainant has demonstrated that the Respondent registered and used the disputed domain name in bad faith according 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 <bancamediolanum.info> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: March 11, 2020

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