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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Monte dei Paschi di Siena S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Matteo Santangeli

Case No. D2020-1908

1. The Parties

The Complainant is Banca Monte dei Paschi di Siena S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Matteo Santangeli, Italy.

2. The Domain Name and Registrar

The disputed domain name <banca-mps-italia.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 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 July 30, 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 amendment to the Complaint on August 3, 2020.

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 August 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2020.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 9, 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 one of the world’s oldest banks and one of the largest commercial and retail banks in Italy, with 2,000 branches, 26,000 employees and 5.1 million customers worldwide. The Complainant’s activity ranges over many fields, from traditional banking to asset management and private banking (mutual funds, wealth management, pension funds, and life insurance policies), and from investment banking to innovative business financing (project finance, merchant banking, and financial counseling).

The Complainant has a large number of branches, offices and subsidiaries not only in Italy but also in many countries around the world, including China, Russian Federation, India, Turkey, and others.

The Complainant also offers online banking services (for instance, through the website “www.mps.it” and its English version “www.gruppomps.it/en”, allowing its customers to consult their bank accounts and make bank transactions via Internet.

The Complainant has proven to be the owner of several trademarks consisting of the wording “mps”, alone or in combination with other wordings (hereinafter also referred to as the “MPS trademarks”): “mps” is indeed the acronym of Monte dei Paschi di Siena.

The Complainant is inter alia the owner of:

- International trademark registration no. 824744, MPS, registered on April 14, 2004;
- Italian Trade Mark registration no. 0000813814, GRUPPO BANCARIO MPS, registered on May 18, 2000;
- European Union Trade Mark registration no. 003975381, MPS BANCA PER L’IMPRESA, registered on December 2, 2005;
- European Union Trade Mark registration no. 006539282 MPS INVESTMENTS, registered on November 23, 2009.

Moreover, the Complainant is also the owner of several “mps” domain names, including the domain names <mps.it>, <mpsbank.com>, <bancamps.com>, and <bancamps.it>.

The disputed domain name <banca-mps-italia.com> was registered on March 29, 2020. The disputed domain name does not resolve to an active website.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(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.

A. Identical or Confusingly Similar

The Complainant has established rights in the MPS trademark as well as in several trademarks consisting of the wording “mps”, in combination with other wordings specifically referring to financial activities.

The disputed domain name <banca-mps-italia.com> consists of the MPS mark with the mere addition of the terms “banca” (“bank” in English) and “Italia”, which are descriptive of the main field of activity of the Complainant and of its country of origin (and its main place of business).

This Panel agrees with the Complainant’s assertion that the addition of these terms, “banca” and “Italia”, does not avoid a finding of confusing similarity with the MPS trademarks.

In fact, it has already been held by previous UDRP panels that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity between a domain name and a complainant’s trademark. Indeed, the Complainant’s trademark is clearly recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions to claim any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the MPS marks when the Respondent registered the disputed domain name.

In fact, the Complainant’s trademarks are renowned particularly in Italy where the Respondent resides. They have been registered for many years and have been used for centuries, and thus they long predate the disputed domain name’s registration. Therefore, in the absence of evidence to the contrary, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business, and that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name.

As previously mentioned, the disputed domain name effectively creates the impression of an association with the Complainant.

Moreover the Panel notes the following:

This Panel agrees with the Complainant that considering that the disputed domain name results from the combination of “mps”, the Complainant’s most famous and most-used trademark, the Italian word “banca”, which corresponds to the Complainant’s core business, and the word “Italy”, which is the country where the Complainant is best known, the choice to register the disputed domain name cannot be a coincidence.

This is even more true considering that the Respondent appears to reside in Italy.

Another inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in this proceeding. It is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name then the Respondent would have responded.

Further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service. It also appears that the Respondent’s postal address is, at the least, incorrect (and/or not updated). While the use of a privacy service does not in and of itself constitute bad faith under the Policy, the manner in which such service is used in the present case is deemed to contribute to a finding of bad faith.

Finally, the Panel finds that the passive holding of the disputed domain name in the circumstances of the case can be also considered an inference of bad faith registration and use.

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15 of the Rules, the Panel orders that the disputed domain name <banca-mps-italia.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: September 23, 2020

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