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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Exor N.V. v. Registration Private, Domains By Proxy, LLC / Badri Bar On

Case No. D2018-1648

1. The Parties

Complainant is Exor N.V. of Amsterdam, Netherlands, represented by Allen & Overy LLP, Netherlands.

Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Badri Bar On of Lod, Israel.

2. The Domain Name and Registrar

The disputed domain name <exortrade.com> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2018. On July 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 20, 2018, the Registrar transmitted by email to the Center its verification response providing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 25, 2018 providing the registrant and contact information disclosed by the Registrar, and requesting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 26, 2018.

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 Respondent of the Complaint, and the proceedings commenced on August 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 24, 2018.

The Center appointed Robert A. Badgley as the sole panelist in this matter on August 30, 2018. 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

Complainant is a provider of business management, banking, financial, communications, and other services. Since 1993, Complainant has held international trademark registrations for the mark EXOR in connection with its services (International Registration No. 601097, registered on May 19, 1993). Complainant also owns the domain name <exor.com> and uses it to host its main website.

The Domain Name was registered on July 30, 2017. Until July 17, 2018, the Domain Name resolved to a website offering services largely identical to those offered by Complainant. At the website, Respondent stated: "ExorTrade was founded in 2012 by the leading investment company Exor NV in Milan, Italy." The website stated further that the CEO of ExorTrade previously worked for Complainant. Complainant asserts that these and other statements made at Respondent's site are false. Since July 17, 2018, the website is inactive.

5. Parties' Contentions

A. Complainant

Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

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

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the mark EXOR through registration and use. The Panel finds that the Domain Name is confusingly similar to the EXOR mark. The Domain Name merely adds the dictionary word "trade" to the mark, which does nothing to prevent the confusing similarity between the mark and the Domain Name.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to articulate or defend his motives in registering the Domain Name. It is undisputed that Respondent is unaffiliated with Complainant and has not been authorized by Complainant to use the EXOR mark. Respondent's unauthorized offering of services identical to those offered by Complainant reflects an effort by Respondent to pass himself off as Complainant, and clearly is not a bona fide offering of goods and services.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it obvious that Respondent had Complainant's EXOR mark in mind when registering the Domain Name. Respondent makes reference to Complainant and to a former officer of Complainant, and hence Respondent clearly was aware of Complainant's company and its EXOR mark.

The Panel also finds that Respondent has used the Domain Name in bad faith within the meaning of Policy paragraph 4(b)(iv), quoted above. The undisputed record in this case shows that Respondent has attempted, for commercial gain, to confuse consumers into believing that Respondent is somehow affiliated with or endorsed by Complainant. This is a clear case of cyber piracy.

Currently, the Domain Name does not resolve to an active website. In the circumstances, this is further evidence of Respondent's bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Name <exortrade.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist
Date: September 3, 2018

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