WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Unipol Gruppo Finanziario S.p.A. v. admin

Case No. D2017-0263

1. The Parties

The Complainant is Unipol Gruppo Finanziario S.p.A. of Bologna, Italy, represented by Bacchini Mazzitelli Law Firm, Italy.

The Respondent is admin of Daegu, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <unipol.com> is registered with Gabia, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2017. On February 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, providing the Respondent’s contact details, and indicating that the language of the Registration Agreement is Korean.

On February 17, 2017, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On the same date, the Complainant requested for English to be the language of the proceeding. On February 18, 2017, the Respondent requested for Korean to be the language of the proceeding.

The Center verified that 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 in English and Korean of the Complaint, and the proceedings commenced on February 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2017. The Response was filed with the Center on March 15, 2017.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 31, 2017. 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, Unipol Gruppo Finanziario S.p.A., is an Italian investment holding and services company whose shares have been listed on the Italian Stock Exchange since 1990. Its core business is complemented by its presence in the banking sector and real estate sector, and diversified activities that extends to the hotel and industries.

The Complainant owns many trademark and domain name registrations, all having the component “unipol” in common. The earliest registration was filed and registered in 1989 in Italy. The UNIPOL trademark has acquired immense goodwill and reputation worldwide as a result of the Complainant’s long and extensive use of said mark.

The Respondent filed its Response to the Complaint on March 15, 2017.

The disputed domain name <unipol.com> was registered by the Respondent on February 10, 2007. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name should be transferred to the Complainant because:

1) the disputed domain name <unipol.com> is confusingly similar to the Complainant’s UNIPOL trademark. The Complainant claims that it has exclusive rights over the UNIPOL trademark through both its trademark registrations and extensive and continuous use of the UNIPOL marks.

2) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no relationship whatsoever with the Respondent and has never licensed, authorized, nor permitted the Respondent to use the mark UNIPOL. As a consequence of the Respondent’s registration, the Complainant has been deprived of reflecting its mark in a domain name.

3) the disputed domain name was registered and is being used in bad faith. The Complainant has used the UNIPOL trademark for its services since 1989, which long predates the Respondent’s registration of disputed domain name in 2007. The Complainant also claims that the disputed domain name does not resolve to an active website and that it has never been used by the Respondent.

Further, the Complainant claims that the Respondent registered the disputed domain name without the Complainant’s authorization despite being aware of the Complainant’s exclusive rights to the “UNIPOL” marks and its global reputation. The Complainant also argued that the Respondent appears to be a dealer in domain names, since Internet search results show that the Respondent’s email address is associated with 3,985 domains and, thus, the Respondent must have registered the disputed domain name in order to prevent the Complainant’s trademark from reflecting in a corresponding domain name.

B. Respondent

The Respondent claims that it registered the disputed domain name legally by legitimate procedures ten years ago in 2007, and that it caused the disputed domain name website to appear as a blank page. The Respondent also argues that the Complainant is a typical reverse cyber-squatter because it lodged this action many years after – some 10 years after – the Respondent’s registration of the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (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.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules.

A. Language of the Proceeding

The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.

Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account:

1) The Complaint has been submitted in English and it would cause undue delay and expense if the Complainant were required to translate the Complaint into Korean;

2) The Complaint was notified to the Respondent in both English and Korean;

3) Many domain names which are associated with the Respondent resolve to websites that include links in English, which shows that the Respondent understands English; and

3) The Complainant and the Respondent use different languages, and neither of them understand the language of the other party. The Complainant is Italian and the Respondent is Korean. Therefore English would be the fair language for both Parties.

In light of these circumstances, the Panel concludes that it will (1) accept the Complaint as filed in English; and (2) issue a decision in English.

B. Identical or Confusingly Similar

This elements consists of two parts; first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

The Panel finds that the Complainant has established registered rights in the mark UNIPOL through its numerous domestic and international registrations, and through its extensive and continuous use of the UNIPOL mark. The Panel also finds that the disputed domain name <unipol.com> is identical to the Complainant’s trademark UNIPOL. The disputed domain name comprises the Complainant’s trademark UNIPOL in its entirety. Also, the generic Top-Level Domain (“gTLD”) “.com” is typically disregarded and does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) since use of a gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name. Therefore, “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

The Respondent, in responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. The Respondent mentioned in its response that it registered the disputed domain name legally via legitimate procedures ten years ago in 2007 and that it made the disputed domain name website appear as a blank page. This alone, however, does not demonstrate that the Respondent has any rights or legitimate interests in respect of the disputed domain name.

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case provided that they have not been denied by the Respondent.

The evidence suggests that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademarks, which is not descriptive or generic as it relates to the insurance and banking business. The Panel finds that this conduct does not provide a right or legitimate interest in the disputed domain name under paragraph 4(a)(ii) of the Policy (see, e.g., American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592).

The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the name UNIPOL.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that it has a widespread reputation in the UNIPOL trademark and that it is not conceivable that the Respondent would not have had actual knowledge of the Complainant’s trademark rights at the time of the registration of the disputed domain name.

The Respondent’s Response does not show any evidence to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

The Panel finds that the Complainant’s registered trademark, UNIPOL, is widely known and that it has been used by the Complainant for almost 28 years. Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent likely knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant’s trademark UNIPOL and prevented the Complainant from reflecting the mark in a corresponding domain name. Despite filing a response, the Respondent has failed to explain how it chose to register a domain name identical to the Complainant’s mark or what legitimate interests it may have in the disputed domain name. As evidenced by the Complainant, the Respondent has a history of registering domain names incorporating third-party trademarks. Under the present circumstances, the Panel finds that the Respondent’s passive holding of the disputed domain name does not prevent a bad faith finding.

The conduct described above falls squarely within paragraph 4(b)(i) and (ii) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). Moreover, the Complainant’s delay in bringing the Complaint does not itself prevent being able to succeed under the Policy where the Complainant has satisfied the requisite Policy elements.

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 <unipol.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: April 18, 2017