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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Monte dei Paschi di Siena S.p.A. v. Privacy service provided by Withheld for Privacy ehf / Julius Boyler

Case No. D2021-2296

1. The Parties

The Complainant is Banca Monte dei Paschi di Siena S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Julius Boyler, Italy.

2. The Domain Name and Registrar

The disputed domain name <mps-banking.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 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 July 19, 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 July 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 July 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2021.

The Center appointed Federica Togo as the sole panelist in this matter on August 30, 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

The Complainant is the registered owner of several trademarks worldwide consisting and/or containing the term “mps” e.g. International trademark registration No. 824744 MPS registered on April 14, 2004 for “Bank and financial services” in class 36 and designating several countries (Basic registration: IT, April 14, 2004, 927149). This trademark has been duly renewed and is in force.

It results from the information disclosed by the Registrar that the disputed domain name was registered on March 3, 2021; and it resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

It results from the Complainant’s undisputed allegations that it is one of the world oldest bank 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). It has a large number of branches, offices and subsidiaries not only in Italy but also in in many countries around the world, such as China, Russian Federation, India, Turkey.

In addition, the Complainant operates the domain names <mps.it>, <mpsbank.com> and <gruppomps.it> in order to promote its products and services, also offering online banking services.

The Complainant contends that its trademark MPS is worldwide well-known for bank services.

The Complainant further contends that the disputed domain name <mps-banking.com> is identical or confusingly similar to the Complainant’s trademark MPS, since it results from the combination of the wording “mps”, identical to the Complainant’s MPS trademarks and “banking” which is a common word corresponding to the Complainant’s core business.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, it has never provided a third party with whatsoever authorization to register and/or use the disputed domain name or however domain names comprising the term “mps” plus the word “banking” or other words similar thereto. In addition, the disputed domain name does not resolve to a website from which any interest in its use by the Respondent may be inferred.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. In fact, the disputed domain name reproduces, without any authorization or approval, the Complainant’s well-known trademark MPS. The information concerning the origin of the Respondent (i.e. Italy) is the conclusive evidence of the Respondent’s bad faith; the Respondent was 100% aware about the existence of the Complainant and its trademarks since the Complainant is one of the most famous Italian banks, having in Italy its registered office as well as running there more than 1.500 branches.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the mark MPS. Reference is made in particular to International trademark registration No. 824744 MPS registered on April 14, 2004 for “Bank and financial services” in class 36 and designating several countries (Basic registration: IT, April 14, 2004, 927149). This trademark has been duly renewed and is in force.

UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g. Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / William Douglas WIPO Case No. D2021-0774; Compagnie Générale des Etablissements Michelin v. Milen Radumilo, WIPO Case No. DCO2020-0090; LEGO Juris A/S v. ken Teo, WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter, WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark MPS is fully included in the disputed domain name, followed by a hyphen and the term “banking”. Furthermore, it is the view of this Panel that the addition of the term “banking” (and the hyphen) in the disputed domain name cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the Complainant’s trademark is clearly recognizable in the disputed domain name.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark MPS, e.g., by registering the disputed domain name comprising the said trademark entirely.

Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.

In addition, no content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered as a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraphs 4(c)(i) and (iii) of the Policy (see, e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, supra; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320). Moreover, the Panel notes that the disputed domain name is clearly constituted by the Complainant’s registered trademark MPS and the term banking, which clearly refer to the Complainant’s core business, tending to suggest sponsorship or endorsement by the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain name with the intent to attract Internet users for commercial gain.

It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

Based on the evidence submitted by the Complainant, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s trademark when it registered the disputed domain name. This is underlined by the fact that the disputed domain name is clearly constituted by the Complainant’s registered trademark MPS and the term banking, which clearly refer to the Complainant’s core business (being the Respondent located in Italy where the Complainant has its registered office). Registration of the disputed domain name in awareness of the MPS mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.

The disputed domain name does not resolve to an active website. In this regard, the Panel notes that the current passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In fact, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use; (2) the Respondent originally used a privacy service hiding its identity; and (3) the implausibility of any good faith use to which the disputed domain name may be put (see WIPO Overview 3.0 at section 3.3).

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <mps-banking.com> be transferred to the Complainant.

Federica Togo
Sole Panelist
Date: September 12, 2021

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