WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unipol Gruppo S.p.A. and Unipolsai Assicurazioni S.p.A. v. Anonymouse Domains s.r.o.
Case No. D2021-2563
1. The Parties
The Complainant is Unipol Gruppo S.p.A. and Unipolsai Assicurazioni S.p.A., Italy, represented by Bugnion S.p.A., Italy.
The Respondent is Anonymouse Domains s.r.o., Czech Republic.
2. The Domain Name and Registrar
The disputed domain name <unipolsaispa.com> is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 August 12, 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 August 16, 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 September 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 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.
The Registrar confirmed that the language of the Registration Agreement is English.
4. Factual Background
The Complainant Unipol Gruppo S.p.A. is the second insurance group on the Italian market and among the ten largest in Europe. The Complainant Unipol Gruppo S.p.A. has 12,337 employees and serves about 16 million customers. The Complainant’s group operates in the insurance services sector mainly through the Complainant UnipolSai Assicurazioni S.p.A., which is one of the leaders in Italy in Non-Life Business, in particular in Motor Vehicle TPL.
The Complainant Unipol Gruppo S.p.A. has registered several trademarks consisting of the term “unipol” including the International trademark registration No. 1102188 registered on November 16, 2011, for goods and services in International Classes 9, 16, 35, and 36. The Complainant UnipolSai Assicurazioni S.p.A. has registered several trademarks consisting of the terms “unipol” or “unipolsai” including the International Trademark Registration for UNIPOLSAI No. 1158882 registered on January 25, 2013 for goods and services in international classes 9, 16, 35, 36.
The Complainant UnipolSai Assicurazioni S.p.A. is also the owner of the domain names <unipolsai.it> and <unipolsai.com> respectively, registered on March 8, 2012 and November 20, 2012.
The disputed domain name was registered on November 30, 2020. As per the evidence in the case file, the disputed domain name was used for a website promoting transportation services and the rental of transportation vehicles. At the date of the decision the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainants argue that the disputed domain name is confusingly similar with the Complainants’ trademarks and company names, as it incorporates the core part of the said trademarks and company names. The addition of the generic word “spa” which is short for joint stock company in Italian does not have an impact on the overall impression of the disputed domain name and does not avoid the confusing similarity between the disputed domain name and the Complainants’ trademarks.
With respect to the second element, the Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name and allege that the disputed domain name was used to point to an active website promoting transportation services and the rental of transportation vehicles and that the same services are provided by the Complainant Unipolsai Assicurazioni. The Complainants argue that they sent a cease-and-desist letter to the Respondent for the unauthorized use of the trademarks UNIPOL and UNIPOLSAI and after the letter was sent, the website at the disputed domain name pointed to an inactive website.
As regards the third element, the Complainants argue that their trademarks are famous and the Respondent must have been aware of such trademarks, especially since the website at the disputed domain name offered the same services as those of the Complainant Unipolsai Assicurazioni. The fact that the website at the disputed domain name displayed the Complainants’ trademarks with the addition of UK means not only that the Respondent was aware of the Complainants’ trademarks, but this also suggests an association with the Complainants.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
No communication has been received from the Respondent in this case. However, given that the Complaint was sent to the relevant address disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a) of the Policy directs that the Complainants must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Multiple Complainants
The Complaint was filed by Unipol Gruppo S.p.A. and UnipolSai Assicurazioni S.p.A., both companies alleging trademark rights over the UNIPOL or UNIPOLSAI trademarks.
According to section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.
It is well accepted that a single complaint may be brought under the Policy by multiple complainants where the multiple complainants have a common grievance against the respondent and that one example of a common grievance entitling consolidation of complainants is where the complainants share an interest in trademarks allegedly affected by the respondent’s registration of the disputed domain name. In this case, the Complainants allege trademark rights and a corporate connection. Under this circumstance, the Panel will accept both Complainants as party to the proceedings.
B. Identical or Confusingly Similar
The Complainants have provided evidence of their rights over the UNIPOL and UNIPOLSAI trademarks. The trademarks are reproduced in their entirety in the disputed domain name. The addition of the word “spa” does not prevent a finding of confusing similarity with the Complainants’ trademarks, which are recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0.
It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.
This Panel concludes that the disputed domain name is confusingly similar to the Complainants’ trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case, the Complainants have established a prima facie case that they hold rights over the trademarks UNIPOL and UNIPOLSAI and claim that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Also, there is no evidence that the Respondent is commonly known by the disputed domain name. The undisputed record shows that the disputed domain name was used for a website offering services similar to those offered by the Complainants which does not vest the Respondent with a legitimate interest in the disputed domain name.
By not replying to the Complainants’ contentions, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name carries a high risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainants. See section 2.5.1 of the WIPO Overview 3.0.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainants must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
According to the unrebutted assertions of the Complainants, their UNIPOL and UNIPOLSAI trademarks were largely used in commerce well before the registration of the disputed domain name. The Panel therefore finds that the Respondent was in all likelihood aware of the Complainants and their rights in the terms “unipol” and “unipolsai” at the time of registration of the disputed domain name.
In this case, the above conclusion is also supported by the similarity of the disputed domain name with the trademarks of the Complainants and by the evidence in the case file showing that the disputed domain name was used for a website offering services similar to those offered by Complainants. This Panel finds that by using the disputed domain name in such a way the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, within the meaning of paragraph 4(b)(iv) of the Policy. Such registration and use create a presumption of bad faith that Respondent has not rebutted as the Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.
In the Panel’s view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.
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 <unipolsaispa.com> be transferred to the Complainant Unipolsai Assicurazioni S.p.a.
Date: November 4, 2021