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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Mediolanum S.p.A. v. Privacy protection service, whoisproxy.ru, / Florina-Simona Cretu

Case No. D2020-0169

1. The Parties

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

The Respondent is Privacy protection service, whoisproxy.ru, Russian Federation / Florina-Simona Cretu, Romania.

2. The Domain Name and Registrar

The disputed domain name <mediolanumconto.com> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2020. On January 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 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 29, 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 February 3, 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 February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. Due to a Notification error, the Response due date was extended until March 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed with panel appointment on March 31, 2020.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 2, 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 the Mediolanum Group, which provides banking, financial and insurance products and services, operating in Italy and other countries, since 1997. It is the owner, amongst others, of the following trademark registrations (Annex 13 to the Complaint):

- European Union Trade Mark registration No. 004671764 for MEDIOLANUM registered on October 3, 2006, successively renewed, in classes 35, 36, and 38; and

- European Union Trade Mark registration No. 14747059 for BANCA MEDIOLANUM registered on March 29, 2016, in classes 9, 18, 25, 35, 36, and 41.

The disputed domain name <mediolanumconto.com> was registered on July 23, 2019. Presently, no active webpage resolves from the disputed domain name, but it was used in connection with a webpage reproducing the Complainant’s trademarks and official website layout (Annex 16 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be a leading provider of a wide range of services including accounts, debit and credit cards, mortgages and loans, saving investments solutions, as well as insurance, retirement and real estate products and services.

According to the Complainant, as of 2018, it counted with 2,270 employees, 1,249,881 customers, and EUR 74,085 million assets under management, as well as a net income of EUR 255,7 million. One of its services is the “Conto Mediolanum” that identifies a bank account service (Annex 5 to the Complaint), heavily promoted and advertised (Annexes 7-12 to the Complaint).

The disputed domain name, under the Complainant’s view, is confusingly similar to its MEDIOLANUM trademarks, which are extensively used in particular for banking and financial services, because it fully incorporates them, only adding the generic term “conto” which translates as “bank account” and is therefore linked with the Complainant’s business and services.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:

(i) the Complainant has not authorized nor somehow given its consent to anyone to register and use the disputed domain name;

(ii) the Respondent is not known and could not be known by the disputed domain name which clearly refers to the Complainant and its trademarks;

(iii) the Respondent holds no applications or registrations for trademarks corresponding to the disputed domain name (Annex 18 to the Complaint); and

(iv) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name has been used to redirect Internet users to a website used in connection with phishing activities that reproduced the Complainant’s trademarks and official website (Annex 16 to the Complaint).

The Complainant further contends that the Respondent registered the disputed domain name evidently aware of the Complainant in view of the reproduction of the Complainant’s trademark and layout of the Complainant’s official website given the phishing scheme perpetrated by the use made of the disputed domain name (Annex 16 to the Complaint), intentionally attempting to attract for commercial gain Internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

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

(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 Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the MEDIOLANUM trademark duly registered in several jurisdictions around the world (Annex 13 to the Complaint).

In this Panel’s view the addition of the dictionary term “conto” to the Complainant’s trademark in the disputed domain name does not prevent a finding of confusing similarity, especially considering the Complainant’s trademarks and activities.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial 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.

As the evidence submitted clearly indicates (Annex 16 to the Complaint), the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name given that the disputed domain name has been used in connection with what appears to be a fraudulent scheme depicting the Complainant’s logo and a website designed to appear as an official website of the Complainant in an effective attempt to obtain sensitive data from the Complainant’s customers. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.

In that sense, the Complainant indeed states that it has not authorized nor somehow given its consent to anyone to register and use the disputed domain name.

Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

This case presents the following circumstances, which indicate bad faith registration and use of the disputed domain name:

i) the disputed domain name was registered on July 23, 2019, which is long after the Complainant was founded and started using its trademark (1997);

ii) there are indications that the disputed domain name has been used in connection with fraudulent scams;

iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

iv) the Respondent evidently was aware of the Complainant and its trademark in view of the contents of the website that resolved from the disputed domain name; and

v) the absence of any reply to the Complaint by the Respondent.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <mediolanumconto.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: April 16, 2020

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