WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unipol Gruppo S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Edejoro Ekoko
Case No. D2021-0190
1. The Parties
Complainant is Unipol Gruppo S.p.A., Italy, represented by Bugnion S.p.A., Italy.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Edejoro Ekoko, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <unipolbancacredit.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 January 22, 2021. On January 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2021, 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 Complainant on January 24, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 27, 2021.
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 Respondent of the Complaint, and the proceedings commenced on January 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on March 31, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on April 21, 2021. 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
Complainant is an Italian group of companies operating in the areas of insurance, financial services and real estate. It is the proprietor of several trademark registrations for the UNIPOL and UNIPOL BANCA marks, including the following:
- Italian Trademark No. 0000877020 for UNIPOL BANCA (device mark), registered on November 18, 2002 for services in class 36;
- International Trademark No. 1102188 for UNIPOL (device mark), registered on November 16, 2011 for goods and services in classes 9, 16, 35 and 36;
- European Union (“EU”) Trade Mark No. 017611674 for UNIPOL (device mark), registered on April 24, 2018 for services in class 36.
The disputed domain name was registered on July 19, 2020. It resolves to a website to which access is blocked for security purposes. The record contains screenshots of an active website through which banking services were offered.
5. Parties’ Contentions
Complainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it is the second insurance group on the Italian market and among the top ten insurance providers in Europe. It is a publicly traded company since 1990, has over 12,000 employees and serves about 16 million customers. It operates through the largest agency network in Italy. In 2019, Complainant sold its Unipol Banca unit, which has ceased to exist as a separate entity. Complainant continues to operate its own financial services company under a different name. Complainant was ranked as the top Italian company in the financial sector in 2018 by the Reputation Institute. The disputed domain name includes Complainant’s UNIPOL and UNIPOL BANCA marks followed by a generic English term that refers to money loaned.
Under the second element, Complainant has not authorized Respondent to register or use the disputed domain name.
Under the third element, Complainant states that the UNIPOL mark is highly distinctive and is widely known in the insurance and financial sector. Respondent cannot credibly claim to have been unaware of the mark. The disputed domain name resolves to a website offering banking services and listing an entity called “UBC Bank” with an address in Modena, Italy, close to where Complainant’s head office is based. Complainant was not able to find any information on this entity. The disputed domain name was registered and used primarily for the purpose of disrupting the business of a competitor.
Complainant requests transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the UNIPOL BANCA mark through registration in Italy, and rights in the UNIPOL mark through registrations in at least the EU and internationally. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
In comparing Complainant’s UNIPOL BANCA mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with Complainant’s mark. The disputed domain name contains Complainant’s mark in its entirety. Complainant’s trademark is recognizable within the disputed domain name, and the addition of the descriptive term “credit” does not prevent the confusing similarity.
It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) 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.
The circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s UNIPOL BANCA mark together with the descriptive term “credit”, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by the trademark owner. Such use does not establish rights or legitimate interests in the domain name. See, for example, Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.
The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. The circumstances of the case prevent the inference of any rights nor legitimate interests on the part of Respondent. The Panel notes, in particular, the visibility of Complainant’s mark in the disputed domain name and the use of the disputed domain name for a website offering services similar to those offered by Complainant. Such use of Complainant’s mark cannot confer rights or legitimate interests on Respondent.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant’s trademark rights predate the registration of the disputed domain name by several years, and the descriptive term “credit” indicates a link with Complainant’s business. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name. Furthermore, Respondent has concealed its true identity by using a privacy service. There is no plausible actual or contemplated use of the disputed domain name that would not be illegitimate. The use of the disputed domain name to resolve to a website offering services similar to those offered by Complainant is indicative of bad faith, as Respondent is deliberately attempting to use the disputed domain name to attract Internet users for commercial gain. Such registration and use create a presumption of bad faith that Respondent has not rebutted. See, for example, Netbet Enterprises Ltd, Technospin Limited v. Host Master, 1337 Services LLC, WIPO Case No. D2021-0364 and the WIPO Overview 3.0, section 3.2.1 and cases cited thereunder.
Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
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 <unipolbancacredit.com> be transferred to Complainant.
Date: May 1, 2021