WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alitalia - Società Aerea Italiana S.p.A. v. Privacy Administrator, Anonymize, Inc. / Loony Foodies
Case No. D2021-2810
1. The Parties
The Complainant is Alitalia - Società Aerea Italiana S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Privacy Administrator, Anonymize, Inc., United States of America / Loony Foodies, India.
2. The Domain Name and Registrar
The Domain Name <wwwalitalia.com> (the “Domain Name”) is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 30, 2021, the Registrar transmitted by email to the Center its verification responses, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 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 amendment to the Complaint on September 8, 2021.
The Respondent sent an informal communication to the Center on September 12, 2021, seeking a suspension of the proceedings to allow time for settlement negotiations with the Complainant. On September 14, 2021, the Complainant sent a communication to the Center rejecting the suspension of proceedings.
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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021.
On September 27, 2021, the Center received a request from the Respondent to extend the Response date due to Covid-19 and other reasons. The Center (exceptionally) extended the due date to October 16, 2021, under paragraph 5(b) and (e) of the Rules.
The Respondent did not file any Response by October 16, 2021, and on November 4, 2021 the Center advised the parties that it would proceed to Panel Appointment.
The Center appointed Warwick Smith as the sole panelist in this matter on November 16, 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
Until recently, the Complainant was the Italian flagship airline. It was based in Rome, and it had its own terminal at the city’s Fiumicino Airport. However, its principal website shows that it is now in receivership, and that its last flights were scheduled for October 14, 2021.
The Complainant had operated worldwide under the mark ALITALIA from 1947, and it says that by the summer of 2019 it was serving 27 Italian destinations and 73 international destinations, with 4,300 weekly flights and 150 routes. Revenues in the year to July 2019 are said to have reached 295 million EUR, and the airline carried over 21 million passengers in that year. While it was carrying on business as an airline, the Complainant was a member of the SkyTeam alliance, and it had trans-Atlantic joint venture arrangements with Air France-KLM and Delta Airlines. Those alliances provided it with access to an extensive global network, with more destinations and frequencies, and greater connectivity.
The Complainant is the proprietor of numerous word and figurative ALITALIA marks in a number of jurisdictions around the world. It is not necessary to refer to them all for the purposes of this decision. Reference to two registrations will suffice.
First, the Complainant has been the proprietor of the word mark ALITALIA in the European Union, (application No. 000900829. for transport and travel arrangements in International Class 39, and for a range of other services in Classes 37, 39, and 42, for over 20 years, application date August 7, 1998, registration date December 21, 1999).
Secondly, the Complainant provided a schedule showing that it is the proprietor of the ALITALIA word mark in India, where the Respondent appears to carry on business (application No. 1527872, for services in International Class 39, registered on February 5, 2007).
In addition to its service marks, the Complainant has been the owner of over 60 domain names which included its ALITALIA mark. Its main website has been at “www.alitalia.com”, which it began operating in the late 1990s. Most of the Complainant’s websites redirected to the principal website at “www.alitalia.com”.
The Domain Name was registered on July 26, 2021. According to the Complaint, it resolves to “ever changing pages, leading alternatively to different types of parking pages, including one with hyperlinks in relation to the Complainant’s area of business.”
The Complainant produced a screenshot of one of these pages, which contained click-on links that included: “Book Flight Tickets”, “Flights to Italy”, “Flight Schedules”, and “Flight Search”. Another page produced by the Complainant contained sponsored links to sites concerned with forex trading. Some of the pages to which the Domain Name has been directed are said to have contained “infected pages”.
5. Parties’ Contentions
A. Complainant
The Domain Name is confusingly similar to the Complainant’s ALITALIA marks. The “Alitalia” part of the Domain Name is identical with the Complainant’s mark and company name, and the prefix “www” does not provide any effective differentiation. The acronym “www” marks the beginning of most Internet addresses, and is therefore a sign that is commonly and widely used.
The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent could not be known by the Domain Name, and a database search run by the Complainant shows that there are no “Alitalia” trade marks that are owned by the Respondent. The Complainant has never licensed or authorized the Respondent to register or use the Domain Name.
The Domain Name has been registered and is being used in bad faith. Because of the Complainant’s intensive use of the ALITALIA mark around the world the Respondent must have known of the mark before it registered the Domain Name. Further, there is no connection between the Respondent and the expression “Alitalia”.
The Domain Name has not been used for any bona fide offering of goods or services, or for any legitimate commercial or non-commercial use, without the intention of misleading the Complainant’s customers, or infringing the Complainant’s ALITALIA mark. The Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the Complainant’s ALITALIA mark, to attract Internet users to the websites to which the Domain Name has resolved, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. In so doing, the Respondent has deprived the Complainant of the possibility of registering contested domain names in which it might have a legitimate interest.
Alternatively, and to the extent that the Respondent may be regarded as passively holding the Domain Name, that passive holding constitutes bad faith registration and use of the Domain Name.
B. Respondent
The Respondent did not file any Response to the Amended Complaint.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a Complainant is required to establish each of the following
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the registered proprietor of a number of ALITALIA marks in numerous jurisdictions. Its registrations include the word mark ALITALIA, which is registered in the European Union and in India. Those registrations sufficiently establish that the Complainant has rights in those marks for the purposes of paragraph 4(a)(i) of the Policy.
Turning to the “identical or confusingly similar” aspect of paragraph 4(a)(i) of the Policy, the “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement, and as such is not taken into account in the comparison required by the paragraph 4(a)(i) of the Policy1 . The only issue to be decided under paragraph 4(a)(i) is whether the “wwwalitalia” part of the Domain Name is confusingly similar to one or more of the Complainant’s ALITALIA marks.
The Complainant’s ALITALIA word mark is incorporated in full within the Domain Name, and it is clearly recognizable within it. The WIPO Overview 3.0 states at section 1.8:
“Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”
In this case, the additional term “www” does nothing to eliminate or mitigate the confusing similarity caused by the incorporation of the Complainant’s ALITALIA mark in the Domain Name. The term, which is the common abbreviation for the “world wide web”, generally appears immediately before a “dot” and a domain name, and it marks the beginning of most website addresses. It is therefore commonly and widely used. Such a term could have little or no utility in distinguishing the Domain Name from the Complainant’s ALITALIA mark.1
For those reasons, the Panel concludes that the Domain Name is confusingly similar to the ALITALIA mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual business or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue.
WIPO Overview 3.0 states the following on the burden of proof under paragraph 4(a)(ii) of the Policy:3
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 this case, there is nothing to suggest that the Respondent (or any entity associated with it) has been commonly known by the Domain Name, and the Complainant has not licensed or authorized the Respondent to use its marks, whether in a domain name or otherwise. There appears to be no possible claim to a right or legitimate interest in the Domain Name under paragraph 4 (c)(ii) of the Policy.
Nor is there any evidence of the Respondent having used (or made demonstrable preparations to use) the Domain Name, or any name corresponding to it, in connection with any bona fide offering of goods or services. The Domain Name appears to have been used only to derive revenue from pay-per-click (“PPC”) parking pages, by misleading Internet users into believing that any website at the Domain Name will be associated with the Complainant, thus exploiting the Complainant’s well known ALITALIA mark. Such use could never amount to a bona fide offering of goods or services.4
Nor, on the evidence produced, could the Respondent’s use of the Domain Name support a claim to rights or interests based on a “legitimate” noncommercial, or “fair”, use of the Domain Name under paragraph 4(c)(iii) of the Policy. Deliberate, unauthorized use of a trade mark owner’s mark in a domain name for commercial gain could not, at least in normal circumstances, amount to a “fair” use of a disputed domain name, and nor could such use be described as a legitimate noncommercial use. There does not appear to be any arguable right or legitimate interest under paragraph 4(c)(iii) of the Policy.
For those reasons, the Panel is satisfied that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, sufficient to move the onus of showing that some right or legitimate interest exists to the Respondent. In the absence of a Response, that onus has not been discharged, and the Complainant’s prima facie proof remains unrebutted. The Panel therefore finds for the purposes of paragraph 4(a)(ii) of the Policy that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) The holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) The holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
The Panel is satisfied that the Complainant has also proved this element of the Policy.
First, the Domain Name is confusingly similar to the Complainant’s ALITALIA mark, and the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel accepts that the Respondent must have known about the Complainant and its ALITALIA mark before it registered the Domain Name. The Complainant enjoyed a worldwide reputation in its ALITALIA mark (in respect of transport and other services) over a lengthy period, and the Complainant’s mark has been registered in India, where the Respondent apparently carries on business. The Complainant is also the owner of the <alitalia.com> domain name, and even if the Respondent had previously been unaware of the Complainant and its ALITALIA mark the Panel considers it implausible that anyone would register a “.com” domain name incorporating the abbreviation “www” as the first three letters without first checking who owned the same “.com” domain name minusthose three letters. Any visit to the website at “www.alitalia.com” before the Domain Name was registered would quickly have informed the Respondent that ALITALIA was a mark already being used by a major international airline, and that registration of the Domain Name would be likely to cause confusion with that mark.
The Respondent has offered no explanation for its registration of the Domain Name, and use of “www” in a domain name immediately before a the Complainant’s trade mark is a fairly common cybersquatting technique, used by some registrants to wrongfully exploit trade mark owners’ reputations and goodwill in their marks. There was an immediate suspicion that the Respondent may have chosen the Domain Name for precisely that purpose, and that suspicion has been effectively confirmed by the use to which the Domain Name has been put since it was registered: it has been pointed to at least one website containing links to third party sites offering flights, and other services related to air travel, those being among the services covered by the Complainant’s ALITALIA marks. Those links could only have been provided for the purpose of generating commercial gain in the form of PPC or similar revenue.
Those circumstances fall squarely within paragraph 4(b)(iv) of the Policy. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to websites to which the Domain Name has resolved, by creating a likelihood of confusion with the Complainant’s ALITALIA mark as to the source, sponsorship, affiliation or endorsement of those websites or the services offered through them.
That is sufficient to resolve the Amended Complaint in the Complainant’s favor, and there is no need to consider the various other arguments made by it. There will be an order transferring the Domain Name to the Complainant.
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 Domain Name, <wwwalitalia.com>, be transferred to the Complainant.
Warwick Smith
Sole Panelist
Date: November 26, 2021
1 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.11.1.
2 That view has been expressed by a number of UDRP panels. For example, in BJ’s Wholesale Club v Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer, WIPO Case No. D2015-1601, the panel said: “The addition of “www” does not differentiate the disputed domain name from the Complainant’s mark since it is a non-distinctive element which stands for “world wide web”, and precedes many domain names in URL addresses. Prior UDRP panels have held that the letters “www” do not have distinguishing capacity and are insufficient to avoid confusion with a complainant’s trademark.”
3 WIPO Overview 3.0, section2.1.
4 WIPO Overview 3.0 states at section 2.9:
“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation of the complainant’s mark or otherwise mislead Internet users…..”