WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2021-0394

1. The Parties

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

Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / roberto caso, Italy.

2. The Domain Name and Registrar

The disputed domain name <gruppo-montepaschi.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 February 9, 2021. On February 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 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 February 15, 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 February 16, 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 February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 18, 2021.

The Center appointed Andrea Mondini as the sole panelist in this matter on March 29, 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 one of the world’s oldest banks. With 2,000 branches, 26,000 employees and 5.1 million customers it is one of the largest Italian banks.

Complainant owns, inter alia, the Italian Trademark MONTEPASCHI (Registration No. 914822, registered on October 27, 2003) in International Class 36.

Complainant also holds several domain names, including the domain name <gruppomontepaschi.it>.

The disputed domain name was registered on June 12, 2020.

The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

The disputed domain name is confusingly similar to the MONTEPASCHI trademark in which Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the descriptive word “gruppo” (which means “group” in Italian) is not sufficient to avoid confusing similarity.

Respondent has no rights or legitimate interests in respect of the disputed domain name. The mark MONTEPASCHI is associated with Complainant, since it has been used to identify the banking services rendered by Complainant for decades if not centuries. Respondent has not been authorized by Complainant to use this trademark.

The disputed domain name was registered and is being used in bad faith because it is obvious that Respondent had knowledge of both Complainant and its trademark at the time it registered the disputed domain name and because the lack of use of a domain name that is not backed up by any trademark and that coincides with a well-known trademark owned by someone else constitutes use in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(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 Panel is satisfied that Complainant owns a trademark registration for its MONTEPASCHI trademark.

The Panel notes that the disputed domain name incorporates in its entirety the MONTEPASCHI trademark. The addition of the descriptive word “gruppo” (which means “group” in Italian) does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s mark MONTEPASCHI.

The first element of paragraph 4(a) of the Policy has been met.

B. Rights or Legitimate Interests

Complainant states it has not authorized Respondent to use the trademark MONTEPASCHI. The Panel does not see any contrary evidence from the record.

In the view of the Panel, Complainant has succeeded in raising a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.

Furthermore, the nature of the disputed domain name, comprising Complainant’s trademark and a descriptive term also used in a domain name operated by Complainant, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

The second element of paragraph 4(a) of the Policy has been met.

C. Registered and Used in Bad Faith

Complainant has shown to the satisfaction of the Panel that it is a major Italian bank, and that its MONTEPASCHI trademark is well-known.

In the view of the Panel, it is inconceivable that Respondent could have registered the disputed domain name without knowledge of Complainant’s well‑known trademark. Further, the Panel notes that Complainant uses the domain name <gruppomontepaschi.it> for its legitimate online services. In the circumstances of this case, this is evidence of registration in bad faith.

The disputed domain name does not resolve to an active website. However, Respondent’s passive holding of the disputed domain name qualifies as use in bad faith in this case (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In this regard, the Panel notes the reputation of Complainant’s trademark, particularly in Italy where Respondent is located, and Respondent’s failure to submit a response or provide any evidence of actual or contemplated good‑faith use. Furthermore, it is inconceivable that Respondent could make any good faith use of the disputed domain name.

The Panel thus finds that the disputed domain name was registered and is being used in bad faith.

The third element of paragraph 4(a) of the Policy has been met.

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, <gruppo-montepaschi.com> be transferred to Complainant.

Andrea Mondini
Sole Panelist
Date: April 6, 2021