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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WIDIBA S.p.A. v. Privacy Service Provided by Withheld for Privacy ehf / De Apostle, Ap Tech

Case No. D2021-4154

1. The Parties

The Complainant is WIDIBA S.p.A., Italy, represented by Trevisan & Cuonzo Avvocati, Italy.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / De Apostle, Ap Tech, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <bkwidiba.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 13, 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 December 21, 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 December 21, 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 the Respondent of the Complaint, and the proceedings commenced on January 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2022.

The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on February 22, 2022. 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 in this administrative proceeding is WIDIBA S.p.A. an Italian banking institution founded on November 8, 2013, and commonly known as the online bank of Monte dei Paschi di Siena, an historical Italian credit institution dating back 1472, one of the oldest banks in operation and also believed to be the longest-running in the world.

Monte dei Paschi di Siena, together with the other companies of the group, is one of the world’s oldest banks and the fourth largest commercial and retail bank in Italy with 2,000 branches, 26,000 employees and 5.1 million customers all over the world. Its activity ranges over many fields, from traditional banking activity to asset management and private banking (mutual funds, wealth management, pension funds, and life insurance policies), from investment banking to innovative business financing (project finance, merchant banking, and financial counseling).

Specifically, the Complainant offers banking services, from investment banking to innovative business finances (project finance, merchant banking, and financial counseling).

The Complainant owns the following trademarks:

WIDIBA and design EUTM No. 015200884 filed on 10/03/2016 and registered on 26/07/2019 in classes 9, 16, 18, 20, 36 and 38.

WIDIBA and design EUTM No. 018127633 filed on 24/09/2019 and registered on 15/01/2020 in classes 9, 36, 38

BANCA WIDIBA and design EUTM No. 1580036 filed on 26/10/2020 and registered on 26/10/2020 in classes, 9, 16, 36, 38 and 41

The Complainant has its official website at the domain name <widiba.it> and has other domain names such as <widiba.com> and <bancawidiba.it>.

According to the Registrar’s verification response, the Respondent in this administrative proceeding is “De Apostle, Ap Tech”.

The Disputed Domain Name was registered on September 23, 2021. The Disputed Doman Name resolves to an error page.

5. Parties’ Contentions

A. Complainant

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The Complainant argues that the Disputed Domain Name is confusingly similar to its WIDIBA trademarks. The Disputed Domain Name incorporates the Complainant’s trademark in its entirety. The Complainant is one of the largest financial services in Italy. With the use of the name WIDIBA in the Disputed Domain Name, the clear impression is made that the Disputed Domain Name refers to the Complainant’s WIDIBA trademark. Through the Disputed Domain Name, customers expect to reach a website belonging to the Complainant or one of its subsidiaries.

The use of the Disputed Domain Name <bkwidiba.com> for financial services also implies that the Respondent belongs to the Complainant specially with the letters bk.

The Complainant argued that the Disputed Domain Name <bkwidiba.com> is confusingly similar to the Complainant’s trademarks, due to the fact that the disputed domain name incorporates the trademark WIDIBA in its entirety, as the predominant part and, therefore, will likely be associated with the Complainant’ business.

According to the Complainant, the complement of the Disputed Domain Name “bk”, in combination with the trademark WIDIBA does not bring any distinctiveness from the trademark, which is very well known for financial services.

The Complainant argues that the addition of the Top-Level Domain (“TLD”) “.com” does not have any impact on the overall impression of the dominant portion of the Disputed Domain Name and is therefore irrelevant to determine the confusing similarity of the trademark and the Complainant has adequately proven that the Complainant has rights in the mark. When confronted with the Disputed Domain Name a user is very likely to think that the Respondent is affiliated somehow with the Complainant, when in fact no such relationship exists.

The Complainant argues that Internet users would be easily led to think that the Disputed Domain Name <bkwidiba.com> is owned by the Complainant or some way linked to it, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent holds no trademark registrations of the WIDIBA trademark and has no received a license, authorization or any consent of any form from the Complainant to use the WIDIBA trademarks.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the Respondent registered the Disputed Domain Name in bad faith, provided that in no way the Respondent appears to be commonly known by the name “BKWIDIBA”. Moreover, the Complainant has never provided a third party with whatsoever authorization to register and/or use the Disputed Domain Name or other domain names comprising the term “widiba” or other words similar thereto.

The Complainant argues that the Disputed Domain Name does not resolve to a website from which any interest in its use by the Respondent may be inferred. The Disputed Domain Name is not in use but this is not a reason to believe that there is a fair use or a noncommercial use.

Considering this scenario, the Complainant affirms that the Respondent’s sole intention is to take unfair advantage of the well-known trademark WIDIBA, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant argues that it is clear that the Respondent’s use of the Disputed Domain Name cannot be considered in good faith. The Respondent is not making a bona fide offering of services through its website, but has rather registered it for possible scamming purposes.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

In order to prove the first element of the Policy, the Complainant must first establish that there is a trademark or service mark in which it has rights. In the present case, the Complainant has established the ownership of WIDIBA trademarks. The trademarks have been registered and used in connection to the Complainant’s services and products.

The Disputed Domain Name <bkwidiba.com> reproduces the Complainant’s WIDIBA trademark in its entirety. The addition of the letters “bk” before the Complainant’s WIDIBA trademark does not prevent a finding of confusing similarity.

In the present case, the WIDIBA trademark is recognizable in the Disputed Domain Name.

As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. In this case, the Panel finds that the Complainant’s WIDIBA trademark is clearly recognizable within the Disputed Domain Name.

Additionally, it is well established that the TLD (in this case “.com”) is generally disregarded when considering whether a disputed domain name is confusingly similar to the trademark in which the complainant has rights (see section 1.11 of the WIPO Overview).

In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s WIDIBA trademark. Accordingly, the Complainant has complied with the first of the three elements of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

The Panel notes that there is no evidence that the Respondent has been commonly known by the Disputed Domain Name. The Respondent does not seem to have acquired trademark or service mark rights, noting WIDIBA is a well-known trademark owned by the Complainant. The Complainant has not authorized the registration and use of the Disputed Domain Name by the Respondent.

Moreover, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Disputed Domain Name is not being used in connection to an active website.

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been refuted by the Respondent.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant has complied with the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith.

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith namely:

“(i) circumstances indicating that you [the registrant] have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

In the present case, the Panel finds it is hard to believe that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name on September 23, 2021, many years after the registration and use of the well-known trademark of the Complainant. In conclusion, the Disputed Domain Name includes the Complainant’s distinctive and well-known WIDIBA trademark in its entirety with the letters “bk”.

The Panel notes that the Complainant trademark WIDIBA is well known in the financial services. Thus, the Respondent knew or should have known of the Complainant’s WIDIBA trademark at the time of registration of the disputed domain. See section 3.2.2 of the WIPO Overview 3.0.

Recognizing the well-known nature of the WIDIBA trademark in the financial services, the Panel finds that the Respondent registered the Disputed Domain Name in order to capitalize somehow on the Complainant’s goodwill and reputation. Moreover, the Panel finds that the composition of the Disputed Domain Name suggests sponsorship or endorsement by the Complainant in the financial services such as banking, since some may see the “bk” prefix as a shortening of the term “bank”.

At the time of the filing of the Complaint and at the time of the decision, the Disputed Domain Name resolved to an inactive website.

It has been established in various UDRP decisions that passive holding under the appropriate circumstances does not prevent a finding of bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it was found that in order to establish that the registrant was using a domain name in bad faith it was not necessary to find that it had undertaken any positive action in relation to the domain name. Indeed, in circumstances of inaction (“passive holding”), this behavior falls within the concept of the domain name “being used in bad faith”. See also, section 3.3 of the WIPO Overview 3.0. From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.

In the present case, the Panel finds that the Disputed Domain Name is being used in bad faith due to the following factors: (i) the reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response, (iii) the Respondent’s concealing its identity behind a privacy service, and (iv) the implausibility of any good faith use to which the Disputed Domain Name may be put.

For all the foregoing reasons the Panel finds that the Disputed Domain Name <bkwidiba.com> has been registered and used in bad faith.

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 <bkwidiba.com> be transferred to the Complainant.

Ada L. Redondo Aguilera
Sole Panelist
Date: March 3, 2022

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