WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unipol Gruppo S.p.A., Unipolsai Assicurazioni S.p.A. v. is DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot / DOMAIN ADMINISTRATOR, DOMAIN IS FOR SALE AT WWW.DAN.COM ----
Case No. D2021-3749
1. The Parties
The Complainants are Unipol Gruppo S.p.A. and Unipolsai Assicurazioni S.p.A., Italy, represented by Bugnion S.A., Italy.
The Respondent is DOMAIN IS FOR SALE AT WWW.DAN.COM ---- c/o Dynadot, United States of America / DOMAIN ADMINISTRATOR, DOMAIN IS FOR SALE AT WWW.DAN.COM ----, Cayman Islands, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <unipolmove.com> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2021. On November 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2021, the Registrar transmitted by email to the Center its verification response, 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 Complainants on November 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on November 11, 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 November 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on December 9, 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. Procedural issue: Consolidation of Multiple Complainants
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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 4.11.1).
The Panel notes the following features of the Domain Name in favor of the consolidation:
- both Complainants are part of the same group of companies;
- per Complaint, the Second Complainant, provides the insurance services of the group, while both Complainants maintain the trademarks and domain names of the group;
- both Complainants have a common grievance against Respondent as the Domain Name targets the trademarks of their group of companies;
- it would be equitable and procedurally efficient to permit the consolidation.
The Panel finds that this Complaint consists of multiple Complainants that should, for the reasons discussed above, be permitted to have their Complaints consolidated into a single Complaint for the purpose of the present proceeding under the Policy. Respondent has not objected to the consolidation. The Panel therefore finds that it would be equitable and fair to permit the consolidation.
5. Factual Background
Per Complaint, the First Complainant (Unipol Gruppo S.p.A.) is the second biggest insurance group on the Italian market, the first in Non-Life Business, and among the top ten in Europe. Since 1990, its ordinary shares have been listed on the Italian Stock Exchange and are included in the FTSE MIB index. The First Complainant counts 12,337 employees and serves about 16 million customers. It operates through the largest agency network in Italy, with around 3,000 insurance agencies and over 5,700 sub-agencies distributed across Italy, through which it offers a full range of insurance products and services. The Group operates in the insurance services sector, mainly through the Second Complainant (UnipolSai Assicurazioni S.p.A.), also listed on the stock exchange and leader in Italy in Non-Life Business, in particular in Motor Vehicle. It operates also in the financial services sector in the field of management of non-performing loans and in the real estate sector. According to the 2018 Italy RepTrak® ranking, First Complainant was the Italian company with the best reputation in the financial sector (banking & insurance).
Complainants own trademark registrations for UNIPOL, including the Italian trademark registration No. 1470143, UNIPOL (device), filed on May 27, 2011 and registered on December 7, 2011 for goods and services in international classes 9, 16, 35 and 36; and International Trademark Registration No. 1102188, UNIPOL (device), registered on November 16, 2011 for goods and services in international classes 9, 16, 35 and 36.
Complainants also own domain name registrations for UNIPOL, including <unipol.it> registered on February 5, 1998 and <unipol.com> registered on February 10, 2007.
The Domain Name was registered on December 1, 2020 and at the time of filing of the Complaint lead to a parking page, which indicated that the Domain Name was for sale for USD 990, for lease for USD 330 per month and inviting to make an offer. Currently it is being offered for sale at “www.dan.com”.
As Complainants demonstrated, Respondent registered the Domain Name on the exact same day (December 1, 2020), as Complainants’ application for the registration of the trademark “UNIPOLMOVE” before the Italian and European Union trademark offices. Per Complaint, the data of the “owner”, in particular a correct contact and email address, are missing from the WhoIs details of the Domain Name. On October 7, 2021, Complainants sent a warning letter to Respondent, to which Respondent did not reply.
6. Parties’ Contentions
Complainants assert that they have established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainants’ contentions.
7. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements that Complainants must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) 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 Domain Name incorporates Complainants’ trademark UNIPOL in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the word “move”, does not avoid a finding of confusing similarity as Complainants’ mark remains recognizable within the Domain Name (WIPO Overview 3.0, sections 1.8).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the ground that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the UNIPOL mark of Complainants.
Complainants have established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainants, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainants demonstrated, the Domain Name resolved to a page, where it was being offered for sale.
Furthermore, the Domain Name consists entirely of Complainants’ trademark UNIPOL together with the word “move”, a combination which is identical to Complainants’ application for the registration of the trademark “UNIPOLMOVE”, and thus carries a risk of implied affiliation (WIPO Overview 3.0, section 2.5.1).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainants have established Policy, paragraph 4(a)(ii).
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 the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainants who are the owners of the trademark or service mark or to a competitor of Complainants, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owners 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the 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 Complainants’ 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 concludes that Respondent has registered and used the Domain Name in bad faith.
Because the UNIPOL trademark had been used and registered by Complainants before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainants’ rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainants’ nature of business, provided also online (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, Respondent registered the Domain Name on the exact same day (December 1, 2020), as Complainants’ application for the registration of the trademark “UNIPOLMOVE” before the Italian and European Union trademark offices, which is also evidence of knowledge of Complainants and their trademarks.
Complainants have demonstrated that the Domain Name is being offered for sale. This, in view of the finding that Respondent has no right to or legitimate interest in the Domain Name, constitutes evidence of bad faith use (Aygaz Anonim Şirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1).
Under these circumstances and on this record, the Panel finds that Respondent registered and used the Domain Name in bad faith.
Complainants have established Policy, paragraph 4(a)(iii).
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, <unipolmove.com>, be transferred to the Second Complainant.
Date: December 23, 2021