The Complainant is Unipol Gruppo Finanziario S.p.A. of Bologna, Italy, represented by Studio Legale Associato BMLEX, Italy.
The Respondent is Cenk Erdogan, Trnames Domain Name Services of Ankara, Turkey.
The disputed domain name <unipoltobe.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2016. On June 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center notified the Complainant on June 17, 2016 that the Complaint was administratively deficient. The Complainant filed an amended Complaint on June 21, 2016.
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 June 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2016.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on July 15, 2016. 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.
Unipol Gruppo Finanziaro S.p.A., the Complainant, is the parent company of the Unipol Group, created in 1962, which is one of the largest insurance groups in Italy.
The Complainant’s activities primarily consist of investment. Activities also extend to the banking and real estate sectors.
The Complainant is the owner of numerous UNIPOL trademarks, including:
- International Trademark No. 1102188, registered on November 16, 2011 and covering goods and services in classes 9, 16, 35 and 36;
- International Trademark No. 1101912, registered on November 16, 2011 and covering goods and services in classes 9, 16, 35 and 36;
- European Union Trademark No. 013634431, filed on January 12, 2015 and duly registered on May 8, 2015, designating goods and services in classes 9, 16, 35 and 36.
The Complainant also owns several domain names, including:
- <unipol.mobi>, registered on September 7, 2006 and duly renewed;
- <unipolinsicurezza.it>, registered on September 4, 2009 and duly renewed.
The disputed domain name <unipoltobe.com> was registered on April 29, 2016 and currently resolves to a page under construction.
Firstly, the Complainant argues that the disputed domain name is confusingly similar to its UNIPOL trademark and is identical to its UNIPOLTOBE trademark.
According to the Complainant, the UNIPOL trademark benefits from a favorable reputation, including in Turkey, where the Respondent is located. Consequently, the domain name creates confusion with the aforesaid trademark, which induces Internet users to believe that the disputed domain name is associated with or recommended by the Complainant.
The Complainant contends that the generic Top-Level Domain (“gTLD”) “.com” should be disregarded when the similarity between a trademark and a domain name is assessed.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests relating to the disputed domain name.
The Complainant asserts that it has been using the UNIPOL trademark since 1989. The Complainant never licensed, authorized nor otherwise permitted the Respondent to use the UNIPOL trademark.
The Complainant also indicates that the disputed domain name was registered on April 29, 2016, the same day on which the Complainant filed a European Union trademark application for “UNIPOLTOBE”.
Further, the Complainant argues that the Respondent is selling the disputed domain name at auctions through the registrar’s website.
According to the Complainant, the Respondent has no legitimate interest in the disputed domain name, has registered it in bad faith and has no legitimate reason to use the term “UNIPOLTOBE” for his business activity.
Thirdly, regarding the criteria of bad faith, the Complainant contends that its UNIPOL trademark benefits from a widespread reputation, relating to the products and services covered.
Thus, the Complainant deems that it is obvious that the Respondent has registered the domain name with the knowledge of the Complainant’s trademark rights, especially considering its extensive media coverage and in view of the registration of the UNIPOL trademarks in several countries.
The Complainant also states that the Respondent has registered the domain name with the sole purpose of creating an impression of association with the Complainant’s trademark. Furthermore, being aware of the identical character of the domain name with the Complainant’s UNIPOLTOBE trademark, his only intention was to sell it, rent it, or otherwise transferring it to the Complainant.
Therefore, the Complainant requests the Panel to order that the disputed domain name <unipoltobe.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions and is therefore in default.
Paragraph 4(a) of the Policy provides that to obtain the transfer of a disputed domain name, the Complainant shall prove the following three elements:
(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.
As a preliminary remark, the Panel notes that the European Union trademark application for “UNIPOLTOBE” has been filed by one of the Complainant’s parent companies, Unipolsai Assicurazioni S.p.A. Therefore, this trademark application is not taken into consideration by this Panel when assessing confusing similarity between the disputed domain name and the Complainant’s trademarks, since the Complainant does not own the trademark application. As a result, the Panel will disregard the said trademark application in the analysis of Paragraph 4(a)(i) of the Policy.
After this first observation, the Panel may proceed with an analysis of the risk of confusion which could arise between the disputed domain name and the Complainant’s earlier rights.
In this respect, the Complainant has demonstrated that it owns trademark rights to the UNIPOL mark.
The UNIPOL trademark is also reflected through the registration of domain names by the Complainant, such as <unipol.mobi>.
In the present case, the disputed domain name <unipoltobe.com> fully incorporates the verbal elements of the Complainant’s UNIPOL trademark. Although the UNIPOL trademarks owned by the Complainant are stylized, bearing a particular font, the verbal element “UNIPOL” is still immediately perceivable.
Previous UDRP Panels have held that when a domain name entirely incorporates a complainant’s registered trademark, this fact might be sufficient to establish confusing similarity for purposes of the Policy (see e.g. RapidShare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin, WIPO Case No. D2010-1059; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150).
Further, the “UNIPOL” word is followed by the generic terms “to” and “be” which are not sufficient to dispel the likelihood of confusion, as they do not evoke an idea which could distinguish the disputed domain name from the Complainant’s trademark. Although the “UNIPOL” word has no meaning in the English language, the words “to” and “be” are commonly used in the English language and are not sufficient to avoid the likelihood of confusion. Therefore, the “UNIPOL” word constitutes the most distinctive part of the disputed domain name.
It is well established that gTLD names such as “.com” should be disregarded in asserting whether or not the disputed domain name is identical or confusingly similar to a complainant’s trademark (see e.g. Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893).
In light of the above, the Panel considers that the Complainant has demonstrated that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Prior UDRP panels have stated that it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of proof to the Respondent (see e.g. Crédit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).
In the present case, the Complainant has made a prima facie case showing that the Respondent does not benefit from a license nor from an authorization granted by the Complainant to use the UNIPOL trademark.
Also, although the Complainant does not itself have rights to the European trademark application for “UNIPOLTOBE” No. 015389117, as this application was filed by one of its parent companies, the fact that the disputed domain name was registered by the Respondent on the same day that the aforesaid application was filed is likely to indicate that the Respondent had the Complainant’s group of companies and the trademark application in mind when registering the disputed domain name.
Furthermore, there is no business relationship between the Complainant and the Respondent and the Respondent is not commonly known under the name “UNIPOL”.
At the time the complaint was filed, the disputed domain name was offered for sale at auctions on GoDaddy’s website or for immediate purchase at a price of 950 USD. The Panel finds that the Respondent tried to profit from the goodwill and reputation attached to the UNIPOL trademark. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services (see e.g. Bayerische Motoren Werke AG v. Masakazu/Living By Clue Co., Ltd., WIPO Case No. DMW2015-0001).
The Respondent has not filed a response to the Complainant’s contentions in order to try and demonstrate a possible legitimate interest or right in the disputed domain name. The Respondent has not provided evidence of the circumstances set in paragraph 4(c) of the Policy.
Consequently, the Panel considers that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(a)(iii) of the Policy requires that the Complainant must also show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of registration and use of a domain name in bad faith.
As stated above, the disputed domain name fully incorporates the Complainant’s UNIPOL trademark. Thus, the disputed domain name is confusingly similar to this trademark.
The Complainant’s trademark rights to the “UNIPOL” sign preceded the registration of the disputed domain name by several years.
Also, as a subsidiary element, the Respondent registered the disputed domain name on the same day that Unipolsai Assicurazioni S.p.A, a parent company of the Complainant, filed a European Union trademark application for the sign “UNIPOLTOBE”.
The above elements demonstrate that the Respondent was fully aware of the Complainant and of its trademark when registering the disputed domain name and suggest registration in bad faith (see e.g. Crédit Agricole S.A. v. Donghui, WIPO Case No. D2015-0472).
Therefore, the Panel concludes that the Respondent has registered the domain name in bad faith.
Currently, no positive use is made of the disputed domain name, which resolves to a blank page only displaying the phrase “UNDER CONSTRUCTION”.
However, passive holding does not preclude a finding of use in bad faith and can constitute use in bad faith, as recognized by Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003:
The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
The Panel concludes that the Respondent has registered the domain name in bad faith, to exploit the goodwill attached to the Complainant and its trademark.
Additionally, at the time the Complaint was filed, the Respondent put his domain name up for auction on GoDaddy’s website or for immediate purchase for the price of USD 950.
The Panel considers that this suggests that the disputed domain name was solely used for the purpose of being sold to the Complainant. Therefore, this intent constitutes use in bad faith of the disputed domain name.
Consequently, although the Panel would have appreciated further elaboration in the Complaint regarding the requirement of use of the disputed domain name in bad faith, the Panel finds that the Respondent uses the disputed domain name in bad faith.
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 <unipoltobe.com> be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: July 29, 2016