WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Mediolanum S.p.A. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Angelo Passseri

Case No. D2021-1068

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Angelo Passseri, Italy.

2. The Domain Name and Registrar

The disputed domain name <db-bancamediolanum.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 April 8, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 the Complainant on April 15, 2021 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 April 19, 2021.

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 April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2021.

The Center appointed Anna Carabelli as the sole panelist in this matter on May 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

The Complainant is the parent company of Mediolanum Group, which provides banking, financial and insurance products and services in Italy and other countries.

As evidenced in Annexes 12 and 13 to the Complaint, the Complainant owns numerous trademark registrations consisting of or including the term “MEDIOLANUM”, including the following European Union Trademark registrations:

- European Union trademark registration No. 004671764 for MEDIOLANUM (word mark), filed on October 7, 2005 and registered on October 3, 2006, in classes 35, 36, and 38;

- European Union trademark registration No. 013598065 for MEDIOLANUM (figurative mark), filed on December 22, 2014 and registered on May 18, 2015, in classes 9, 16,18, 25, 35, 36, 38, and 41;

- European Union trademark registration No. 013822911 for M MEDIOLANUM (figurative mark), filed on March 13, 2015 and registered on August 14, 2015, in classes 9, 16, 18, 25, 35, 36, 38, and 41;

- European Union trademark registration No. 015131551, for BANCA MEDIOLANUM (word mark), filed on February 22, 2016 and registered on July 13, 2016, in classes 9, 18, 25, 35, 36, and 41;

- European Union trademark registration No. 014747059, for BANCA MEDIOLANUM (figurative mark), filed on October 30, 2015 and registered on March 29, 2016 in classes 9, 18, 25, 35, 36, and 41;

The disputed domain name was created on March 1, 2021. As shown by the undisputed evidence provided by the Complainant, the disputed domain name does not resolve to an active website, but simply points to a web page displaying the following error message: “We’re sorry, but something went wrong. The issue has been logged for investigation. Please try again later.”

5. Parties’ Contentions

A. Complainant

The Complainant alleges and contends that:

- It was established in Italy in 1997 as a multi-channel bank and in 2000 started the process of expansion abroad by acquiring Fibanc banking group in Spain, where it now operates as Banco Mediolanum. The growth in Europe continued in 2001 with the acquisition of Bankhaus August Lenz & Co. in Germany and Gamax Holding AG in Luxembourg and Western International Life Insurance Company Ltd, which then changed its name to Mediolanum International Life and concentrates on developing products under Irish law, especially life policies, which are then distributed on the European market through branches in Italy, Spain and Germany;

- In 2014 the Complainant has been awarded the Italian Banking Association (ABI) prize for innovation in banking services;

- With over 2,300 employees, more than 1,300,000 customers, assets under administration/management for a value of EUR 78,102 million and a net income of EUR 255.7 million, the Complainant nowadays is an undisputed leading group of companies that provides a wide range of services through user-friendly solutions based on new technologies, including current accounts, debit and credit cards, mortgages and loans, saving investments solutions, but also insurance, retirement, and real estate products and services

- The Complainant’s trademark BANCA MEDIOLANUN and the MEDIOLANUM family of marks are protected in several countries through numerous registrations;

- In addition to the corporate website at “www.bancamedionalum.it”, the Complainant operates other official websites through other domain names incorporating the term MEDIOLANUM, such as <mediolanumprivatebanking.it>, <mediolanumfiduciaria.it>, <mediolanumassicurazioni.it>, <mediolanumgestionefondi.it>, <mediolanuminternationalfunds.it>, <mediolanumvita.it>, <fondazionemediolanum.it>;

- The Complainant’s trademark BANCA MEDIOLANUM is distinctive and renowned and largely pre-dates the registration of the disputed domain name;

- The disputed domain name is confusingly similar to the Complainant’s trademark and trade name BANCA MEDIOLANUM, and the addition of the prefix “db” followed by a dash (“-“) has no impact on the overall impression of the dominant part of the disputed domain name “bancamediolanum”;

- The Respondent does not have any rights or legitimate interests in respect of the disputed domain name;

- The Respondent is an Italian individual or an individual based in Italy, where the trademark and trade name BANCA MEDIOLANUM are extremely well-known;

- The disputed domain name has been registered and is being used in bad faith, as the Respondent knew or should have known of the Complainant’s trademark;

- The disputed domain name resolves to a page showing an error message and the Respondent has set up MX-records, which could be used to send fraudulent emails in the name of the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) The disputed domain name is identical or confusingly similar to a 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

As disclosed in Annex 13 of the Complaint, the Complainant is the owner of trademark registrations for BANCA MEDIOLANUM.

The disputed domain name contains the Complainant’s BANCA MEDIOLANUM mark in its entirety and this is a sufficient element to establish confusing similarity, as held by previous UDRP panels (e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955, Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409).

In the Panel’s view, the addition of the pre-fix “db” followed by a dash does not obviate confusing similarity because the Complainant’s trademark is clearly recognizable within the disputed domain name and Internet users would be led to see <db-bancamediolanum.com> as a domain name of the Complainant.

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

B. Rights or Legitimate Interests

The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark. The Complainant asserts that the Respondent is not known by the disputed domain name and cannot have any rights or legitimate interests in the disputed domain name because it is entirely built on the Complainant’s trademark and trade name BANCA MEDIOLANUM which are extremely well-known in Italy, where the Respondent is based.

The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1).

In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith.

The disputed domain name incorporates the Complainant’s trademark BANCA MEDIOLANUM with a minor and insignificant variation (the addition of the prefix “db” followed by a dash). Given the well-established reputation of the Complainant’s trademark (also recognized in Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; Banca Mediolanum S.p.A. v. Carlo Pascarella, Carlo Pascarella, WIPO Case No. D2020-0161), it is not conceivable that the Respondent did not have in mind the Complainant’s trademark when registering the disputed domain name.

Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2) with a deliberate intent to create an impression of an association with the Complainant.

The lack of active use of a domain name does not as such prevent a finding of bad faith (see Arla Foods Amba v. Joan P Evans, WIPO Case No. D2016-0473; Vertu Corporation Limited v. David Szn and Jun Luo, WIPO Case No. D2015-0185; Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; McGrigors LLP v. Fraser Coutts, WIPO Case No. DCO2011-0022).

Moreover, as the MX-records are active for the disputed domain name, the Respondent could be using it to send fraudulent emails containing spam and phishing attempts, trying to pass off the Complainant. As held by previous UDRP panels, the use of an email address associated with the disputed domain name, to send a phishing email for the purposes of dishonest activity is in itself evidence that the disputed domain name was registered and is being used in bad faith (see Kimley-Horn and Associates, Inc. v. Abrahim Hashim WIPO Case No. DCO2019-0017; BHP Billiton Innovation Pty Ltd. v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364; National Westminster Bank plc v. Sites / Michael Vetter, WIPO Case No. D2013-0870).

According to paragraph 3.3 of the WIPO Overview 3.0, the Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. In the Panel’s view the circumstances of the present case (namely: reputation of the Complainant’s trademarks, no response to the Complaint, impossibility of conceiving a good faith use of the disputed domain name, configuration of MX-records) clearly show the Respondent’s bad faith.

Based on the above, the Panel concludes that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

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 <db-bancamediolanum.com> be transferred to the Complainant.

Anna Carabelli
Sole Panelist
Date: June 2, 2021