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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alitalia - Società Aerea Italiana S.p.A. v. Perfect Privacy, LLC / Milen Radumilo

Case No. D2019-3055

1. The Parties

The Complainant is Alitalia - Società Aerea Italiana S.p.A., Italy, represented by Società Italiana Brevetti S.p.A., Italy.

The Respondent is Perfect Privacy, LLC, United States of America / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <alitaliaairline.com> is registered with Nameselite, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2019. On December 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2019, 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 December 17, 2019 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 amended Complaint on December 17, 2019.

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 December 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2020.

The Center appointed Peter Burgstaller as the sole panelist in this matter on January 15, 2020. 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 a major airline transport service provider and well known worldwide under its tradename and trademark ALITALIA.

The Complainant has registered various trademarks containing the mark ALITALIA including der European Union Trade Mark (word) ALITALIA (Registration No. 000900829) registered on December 21, 1999; the International figurative trademark (Registration No. 378816) designating especially for Austria, Benelux, China, France, Georgia, Romania, Portugal, Switzerland, and Spain, registered on May 6, 1971; and the United States of America figurative trademark (Registration No. 1885318) registered on March 21, 1993 (Annex 8 to the Complaint).

Additionally, the Complainant is the registrant of several domain names including (entirely) the trademark ALITALIA, especially <alitalia.com> and <alitalia.eu> as well as numerous other domain names including the trademark ALITALIA, both under various generic Top Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) (Annex 11 to the Complaint).

The disputed domain name was registered by the Respondent on April 5, 2019 (Annex 1); the Respondent did not submit a Response.

The disputed domain name <alitaliaairline.com> resolves to a parking page using pay-per-click links (PPC) in the airline market as well as to websites with surveys or current economic articles and news (Annex A to the Complaint); the disputed domain name also was made available for purchase for at least USD 688.

5. Parties’ Contentions

A. Complainant

The Complainant is the Italian flagship airline that has been operating worldwide under the mark ALITALIA since its first flight in 1947. Alitalia is based in Rome, where it has its own terminal at Fiumicino Airport. As part of its 2019 summer schedule, the Complainant flies to 100 destinations, including 27 Italian and 73 international destinations, with 4,300 weekly flights and 150 routes; as per July 2019 the Complainant achieved revenues of EUR 295 million and carried 2,124,356 passengers.

The Complainant is a member of the SkyTeam alliance and is part of the Transatlantic Joint Venture alongside Air France-KLM and Delta Air Lines.

The Complainant is the owner of the trademark ALITALIA which is registered in many countries and is well known worldwide in connection to the airline transport services. Moreover, the Complainant is the owner of more than 60 domain names containing the trademark ALITALIA including the domain name <alitalia.com> which refers to the Complainant’s main website.

The disputed domain name is confusingly similar to the Complainant’s trademark ALITALIA and the Respondent has no rights or legitimate interests in respect of the dispute domain name.

The disputed domain name <alitaliaairline.com> has been registered and is being used in bad faith since it is merely used in order to attract current and potential customers of the Complainant and mislead them to other websites not connected to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(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 with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s registered wordmark ALITALIA since it entirely contains this trademark and only adds the mere dictionary term “airline”.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Finally, it has also long been held that suffixes such as a ccTLD or gTLD cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks ALITALIA in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.

The disputed domain name was registered 2019; the Complainant has trademark rights for the mark ALITALIA since 1971 (international figurative trademark registration) and since 1999 (European Union word trademark registration). The Complainant’s trademark ALITALIA is well known throughout the world since years.

The Panel therefore is convinced that it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights; this is especially supported by the fact that the Respondent used a suffix to the Complainant’s trademark which refers to the Complainant’s main business (“airline”).

These facts lead the Panel to the conclusion that the disputed domain name was registered in bad faith by the Respondent.

The disputed domain name moreover resolves to a webpage using pay-per-click links (PPC) in the airline market as well as to websites with surveys or current economic articles and news; all these sites are not connected to the Complainant. The disputed domain name <alitaliaairline.com> also was made available for purchase for USD 688; the Respondent therefore acquired the disputed domain name also for the purpose of selling the disputed domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of pocket costs directly related to the disputed domain name.

The Respondent “free rides” on the reputation of the Complainant’s name and trademark ALITALIA and thus the use of the disputed domain name is suited to divert or mislead potential web users from the website they are actually trying to visit (Complainant’s site); moreover there is no plausible reason for authorized future active usage with regard to the disputed domain name by the Respondent.

On the basis of these facts, it is for the Panel incontestable that the disputed domain name is also being used in bad faith.

The Panel therefore finds that the Complainant has satisfied 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 <alitaliaairline.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: January 22, 2020

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