The Complainant is Fideuram – Intesa Sanpaolo Private Banking S.p.A. of Roma, Italy represented by Perani Pozzi Associati, Piazza Italy.
The Respondent is Laura Yun, Offshore Hosting Solutions Ltd. of Victoria, Seychelles.
The disputed domain name <fideuramgtbank.com> (the “Domain Name”) is registered with OnlineNic, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2016. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2016, 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 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 of the Complaint, and the proceedings commenced on August 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2016.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on September 19, 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.
The Complainant specializes in the production, management and distribution of financial products and services in Europe since 1968. The Complainant is the owner of numerous FIDEURAM trademarks worldwide, inter alia, International Registration No. 586547 which was registered on April 22, 1992 and designated in class 16 and 36. The Complainant is also the owner of the domain names <bancafideuram.com> and <fideuram.com> amongst other domain names incorporating the FIDEURAM trademarks.
The Domain Name was registered on June 2, 2016 and is resolved to a website with sponsored links to financial and other banking services when the Panel renders this decision. Two of the sponsored links on the website are titled as “Fideuram” and “Banca fideuram online” respectively.
The Complainant contends that the Domain Name is confusingly similar to its trademarks. The Complainant is one of the top asset management groups throughout Europe, and its FIDEURAM trademarks are distinctive and well-known. The Domain Name is confusingly similar to the trademarks FIDEURAM owned by the Complainant, as the Domain Name is comprised of the trademarks FIDEURAM, the term “gt” (probably being the acronym for “Guaranty Trust”), and the generic term “bank”, which is descriptive of services provided by the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, since the Respondent is not connected to the Complainant or authorized by the Complainant to use the trademarks. Besides, the Domain Name does not correspond to the name of the Respondent, and the Complainant does not find any fair or noncommercial use of the Domain Name by the Respondent.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Respondent knew of the Complainant’s trademarks at the time of registration of the Domain Name due to the distinctiveness and fame of the trademarks, therefore the Domain Name was registered in bad faith. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Furthermore, the Domain Name was registered and is being used to redirect Internet users to websites of competing organizations, constituting bad faith registration and use under the Policy. The Respondent’s failure to comply with the Complainant’s request in the cease and desist letter is another indication of its bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has successfully established its rights over the trademarks FIDEURAM, among others, International Trademark Registration Number 586547 which was registered on April 22, 1992 and designating on banking and financial services in class 36.
The Domain Name <fideuramgtbank.com> comprises “fideuramgt” and the generic term “bank”, apart from the generic Top-Level Domain suffix “.com”. The first part “fideuramgt” includes the Complainant’s trademark FIDEURAM and “gt”. The UDRP jurisprudence has established that incorporation of a complainant’s distinctive trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the complainant’s trademark. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323. The addition of “gt” to the Complainant’s trademark FIDEURAM, whether it be the acronym of “guaranteed trust” or not, is not sufficient to distinguish it from the Complainant’s trademark. Neither is the addition of the generic term “bank” sufficient to avoid confusion between the Domain Name and the trademark. See ACCOR v. VVNW Inc., WIPO Case No. D2005-0026. As such, the Panel holds that the Domain Name is confusingly similar to the Complainant’s trademark.
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name, and the burden of production is hence shifted to the Respondent to rebut the Complainant’s contentions. In this case, the Respondent’s failure to submit a response to rebut the Complainant’s prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
The Panel notes that the registration of the Complainant’s FIDEURAM trademark much predates that of the Domain Name. It is suggestive of the Respondent’s knowledge about the Complainant and its trademark at the time of registration of the Domain Name since the Respondent choose a domain name that incorporates the Complainant’s mark with the term “bank”, descriptive of the Complainant’s industry. Two sponsored links on the website incorporating the Complainant’s trademark further enhances the Respondent’s awareness with one link being titled as “Fideuram” and the other as “Banca fideuram online”. “Banca fideuram” means “fideuram bank” in English and is identical to the distinctive part of one of the domain names owned by the Complainant, <bancafideuram.com>. The registration of a domain name with knowledge of the complainant’s trademark registration amounts to bad faith. See Herbalife International, Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765. Therefore this Panel holds that the Domain Name was registered in bad faith.
As mentioned, the sponsored links on the website to which the Domain Name resolved are connected to banking and financial services or nonfinancial services such as recruitment, English education institutions or company registration services. On the website there is also a search bar with a “Search Ads” button. It can reasonably be inferred that the Respondent has likely entered into commercial agreements whereby it benefits financially from visitors to the website who click on the advertising links. The Respondent’s selection of the Domain Name enhances confusion and the use of the Domain Name aims at creating traffic to its website and unfairly trading on the reputation of the Complainant’s trademark. Hence paragraph 4(b)(iv) of the Policy is satisfied.
Separately, the Panel notes that the Respondent continues to use the Domain Name in the above mentioned manners in spite of the cease and desist letter sent by the Complainant, which can be another indication of the Respondent’s bad faith in registration and use of the Domain Name considering the absence of response from the Respondent.
For the reasons above, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fideuramgtbank.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Date: October 10, 2016