WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Amissima Assicurazioni S.p.A. and Amissima Vita S.p.A. v. Luca Di Zio
Case No. D2020-2383
1. The Parties
The Complainants are Amissima Assicurazioni S.p.A., Italy and Amissima Vita S.p.A., Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Luca Di Zio, Italy.
2. The Domain Name and Registrar
The disputed domain name <amissima.cloud> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2020. On September 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 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 Complainants on September 22, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on September 22, 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 September 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2020. The Respondent sent an email communication on October 20, 2020.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on October 23, 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 Complaint has been jointly filed by Amissima Assicurazioni S.p.A. and Amissima Vita S.p.A., two Italian companies operating in the insurance field. Both companies are part of the Amissima Insurance Group.
The Complainants are the owners of the following trademark registrations:
- AMISSIMA, European Union Trade Mark registration No. 014711675 applied on October 23, 2015 and registered on February 8, 2016, in classes 35, 36 and 38;
- AMISSIMA, Italian trademark registration No. 302015000028093, filed on June 26, 2015 and registered on December 16, 2016, in classes 35, 36 and 38;
- AMISSIMA ASSET MANAGEMENT & INSURANCE SOLUTIONS, European Union Trade Mark registration No. 014711709, filed on October 23, 2015 and registered on February 5, 2016, in classes 35, 36 and 38;
- AMISSIMA asset management & insurance solutions, Italian trademark registration No. 302015000033700 filed on July 14, 2015 and registered on June 19, 2017, in class 36.
The Complainants are also the owners of the following domain names: <amissima.it>, <amissimavita.it>, <amissimagruppo.it> and <amissimaholdings.it>.
The disputed domain name was registered on August 12, 2020 and redirects to a pornographic website.
On October 20, 2020, after the Center notified the Respondent’s default, the Respondent sent to the Center an email in Italian as follows: “Good morning, I inform you that the undersigned, Luca Di Zio has no more to do with the domain name “ampissima.cloud”. The domain name is no longer in my property. I kindly ask you not to send me any longer threatening communications on possible proceedings against me. Luca di Zio”.
5. Parties’ Contentions
The Complainants maintain that the disputed domain name is identical to the Complainants’ trademark AMISSIMA and is confusingly similar to the trademark AMISSIMA ASSET MANAGEMENT & INSURANCE SOLUTIONS, with which it shares the most distinctive portion of the mark, AMISSIMA.
The Complainants further maintain that the Respondent lacks rights and legitimate interests in the disputed domain name as the Complainants never authorized the Respondent to register their AMISSIMA trademark as a domain name, and there is no relationship whatsoever between the Respondent and the Complainants. Furthermore, the name of the Respondent is not “AMISSIMA” and, to the best of the Complainants’ knowledge, the Respondent does not appear to be commonly known by the disputed domain name. Lastly, according to the Complainants, the Respondent is not making a fair or noncommercial use of the disputed domain name.
In respect of bad faith, the Complainants argue that in view of the distinctive character and reputation of the Complainants’ trademarks, the Respondent was aware or should have been aware of these trademarks at the time of the registration of the disputed domain name. Therefore, it is likely that the Respondent would not have registered the disputed domain name if it were not for the Complainants’ trademarks.
In addition, the Complainants contend that the Respondent use the disputed domain name to access a website containing pornographic contents and sponsored links offering pornographic items. This use of the disputed domain name does not amount to a use in connection with a bona fide offering of goods or services. Instead, the use of the Complainants’ AMISSIMA trademark by the Respondent is causing dilution to, and is tarnishing the Complainants’ marks and image. For these reasons, the Complainants conclude that the disputed domain name was registered and has been used in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainants’ trademark AMISSIMA, as it fully reproduces this mark without further elements apart from the generic Top-Level Domain (“gTLD”) “.cloud”, which has no relevance is the assessment of the condition set forth in paragraph 4(a)(i) of the Policy.
Therefore, the Panel is satisfied that the first condition under the Policy is met.
B. Rights or Legitimate Interests
While the overall burden of proof rests with the complainant, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant must make a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
The Panel finds that the Complainants never authorized the Respondent to register and use a domain name containing their AMISSIMA trademark and that there is no relationship between the parties that could allow such registration and use. Furthermore, the name of the Respondent does not coincide with the disputed domain name and nothing in the file indicates that the Respondent is known by the disputed domain name.
The above-mentioned circumstances are sufficient for the Panel to conclude that the Complainants have made at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent could have offered its arguments in reply to the Complainants’ allegations, but deliberately decided not to do so, by omitting to file a Response.
Hence, the Panel is satisfied that also the second condition under the Policy is met.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainants that their AMISSIMA trademark is distinctive in relation to the claimed goods and services and enjoys a certain degree of reputation in the insurance field. Furthermore, the Complainants have shown that a Google search targeting the keyword “amissima” provides results only linked to the Complainants.
The Respondent is an Italian citizen. It is therefore likely that, at the time of the registration of the disputed domain name, the Respondent was aware of the fact that AMISSIMA was a trademark belonging to the Complainants, or at least ought to be aware of this.
The unauthorized registration of a domain name corresponding to a third party’s trademark lacking any right or legitimate interest amounts to registration in bad faith.
As far as use in bad faith is concerned, at the time of the filing of the Complainant, the disputed domain name led to a website containing pornographic images and videos. The use of the AMISSIMA trademark without rights or legitimate interests to provide pornographic services dilutes the value of the Complainants’ trademark and damages their image and reputation. The Respondent could have solved the matter amicably when he received the Complaint, or could have filed a Response explaining his reasons for the use and registration of the disputed domain name. Instead, he simply replied that he was no longer the owner of the disputed domain name and did not want to be bothered by communications threatening legal procedures against him.
All the aforesaid circumstances lead the Panel to conclude that the Respondent registered and is being using the disputed domain name in bad faith.
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 <amissima.cloud> be transferred to the Complainant Amissima Assicurazioni S.p.A.
Date: November 6, 2020