Complainant is Banca Sella Holding S.P.A., Italy, represented by Studio Barbero, Italy.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, Panama.
The disputed domain name <bancasella.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2020. On April 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 3, 2020, 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 Complainant on April 8, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 9, 2020.
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 Respondent of the Complaint, and the proceedings commenced on April 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2020.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 20, 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.
Complainant is an Italian bank with roots dating back to 1886. Complainant is the parent company of Sella Group, one of the leading banking companies in Italy. For decades, Complainant has used the marks BANCA SELLA and SELLA to promote its banking and financial services. Complainant owns numerous trademark registrations for its BANCA SELLA mark, including United States Registration No. 2434572, registered on March 13, 2001, and International Registration No. 1244216, registered on December 24, 2014. Complainant also owns several registrations for its SELLA mark, including International Registration No. 716208, registered on June 16, 1999, and United States Registration No. 2443739, registered on April 17, 2001.
The Disputed Domain Name was registered on April 4, 2000. In November 2000, the Disputed Domain Name was transferred to Complainant’s subsidiary following the decision Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157. Complainant’s subsidiary inadvertently failed to renew the registration for the Disputed Domain Name in April 2007 and thereby lost control over the Disputed Domain Name.
Respondent acquired the Disputed Domain Name some time after April 2007, although the exact date is unknown. The Disputed Domain Name redirects to a pay-per-click website with links relating to financial services and Complainant’s BANCA SELLA mark. On January 15, 2020, Complainant sent a cease-and-desist letter to Respondent, requesting that Respondent transfer the Disputed Domain Name to Complainant. Complainant then sent a follow-up letter to Respondent on January 23, 2020. Respondent did not respond to either communication from Complainant.
Complainant alleges that the Disputed Domain Name is identical to its BANCA SELLA mark. Additionally, Complainant states that the Disputed Domain Name incorporates the entire SELLA mark and the descriptive term “banca,” which translates in English to “bank.” Thus, according to Complainant, the Disputed Domain Name is confusingly similar to Complainant’s SELLA mark.
Complainant further alleges that Respondent lacks rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent is not commonly known by the Disputed Domain Name. To Complainant’s knowledge, Respondent has not used or made demonstrable preparations to use the Dispute Domain Name in connection with a bona fide offering of goods or services. Further, Complainant has not authorized or licensed Respondent’s use of Complainant’s BANCA SELLA mark in the Disputed Domain Name.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith. According to Complainant, there is no conceivable use of the Disputed Domain Name that does not create a likelihood of confusion with Complainant’s marks. Complainant asserts that Respondent’s use of the Disputed Domain Name to redirect users to a pay-per-click page featuring links for banking and other financial services, including services offered by Complainant’s competitors, demonstrates Respondent’s bad faith. As further evidence of Respondent’s bad faith, Complainant points to Respondent’s failure to reply to the communications sent by Complainant in January 2020.
Respondent did not reply to Complainant’s contentions.
The Panel finds that Complainant has demonstrated its rights in the BANCA SELLA mark by way of its trademark registrations. The Disputed Domain Name incorporates the BANCA SELLA mark in its entirety. Thus, the Panel finds the Disputed Domain Name is identical to Complainant’s mark.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
Complainant has established a prima facie case as to Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, which Respondent has not rebutted. Complainant has not authorized Respondent’s use of the BANCA SELLA mark in the Disputed Domain Name. Additionally, there is no evidence that Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services. Respondent’s use of the Disputed Domain Name to host a parked page comprising pay-per-click links relating to financial services and Complainant’s BANCA SELLA trademark is not a bona fide use. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9. Moreover, there is no evidence on record showing that Respondent is commonly known by the disputed domain name.
Complainant has satisfied paragraph 4(a)(ii) of the Policy.
For the purposes of assessing bad faith registration, the Panel considers Respondent’s bad faith as of the date on which Respondent acquired the Disputed Domain Name some time after April 2007. WIPO Overview 3.0, section 3.9.
Complainant has supported with evidence its allegation that it was well known long before Respondent registered the Disputed Domain Name in 2007. Respondent has not denied this allegation, which the Panel finds credible. Moreover, Respondent includes a link to Complainant’s website on the website associated with the Disputed Domain Name. The Panel finds that Respondent registered the Disputed Domain Name in bad faith.
The Panel also finds that Respondent is using the Disputed Domain Name in bad faith to redirect Internet visitors to a pay-per-click parking page featuring links for competitor’s banking services and Complainant’s BANCA SELLA trademark. By using the Disputed Domain Name in this manner, Respondent has intentionally created a likelihood of confusion with Complainant’s trademark for Respondent’s financial gain. Further, Respondent’s failure to respond to Complainant’s communications dated January 15 and 23, 2020 supports an inference of bad faith use.
Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <bancasella.com> be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Date: June 3, 2020