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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Monte dei Paschi di Siena S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Angelo Ceci

Case No. D2020-1828

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 WhoisGuard Protected, WhoisGuard, Inc, Panama / Angelo Ceci, Italy.

2. The Domain Name and Registrar

The disputed domain name <montepaschi-siena.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 13, 2020. On July 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 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 the Complainant on July 20, 2020 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 22, 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 the Respondent of the Complaint, and the proceedings commenced on July 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2020.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on August 31, 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 one of the largest commercial and retail banks in Italy. Founded in 1472 in Siena, Italy, where its principal office is still located, it operates internationally through 2,000 branches and 26,000 employees and offers its services to 5.1 million customers worldwide.

The Complainant owns numerous trademarks containing the wordings “montepaschi”, “monte dei paschi”, alone or in combination with other words, among which the name of the Italian town “Siena”. The Complainant provided full details of some of these trademarks, among which:

- MONTEPASCHI (word), Italian registration No. 0000538309, filed on June 14, 1990, registered on December 28, 1990, and duly renewed, for services in class 36;

- MONTE DEI PASCHI DI SIENA DAL 1472 (figurative), Italian registration No. 814005, filed on December 5, 1997, registered on May 18, 2000, duly renewed, for services in class 36;

- MONTE DEI PASCHI DI SIENA BANCA DAL 1472 MONTIS PASCORUM (figurative), European Union registration No. 2044675, filed on January 9, 2001 and registered on February 15, 2002, duly renewed, for goods and services from classes 1 to 42.

The Complainant is also the owner of various domain names including the word “montepaschi”, either alone or combined with other elements, such as <montedeipaschidisiena.com> and <montedeipaschidisiena.it> (registered on July 9, 2001), <montedeipaschi.com> (registered on April 14, 1998), and others.

The disputed domain name was registered on March 12, 2020 and is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is identical or at least very similar to the Complainant’s trademarks, domain names, and company name.

The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name as it never authorized third parties to register and/or use the disputed domain name, or a domain name including the word “montepaschi”, alone or in combination with the geographical term “siena” or other similar terms. Furthermore, a worldwide search among trademarks including “montepaschi” did not reveal any significant evidence of the existence of registered trademarks that could justify the registration and use of the disputed domain name. Finally, the disputed domain name does not resolve to a website that could reveal the Respondent’s interest in the use of the disputed domain name. The Complainant contacted the Registrar of the disputed domain name to report the abusive registration and the Registrar promptly suspended the disputed domain name, which is further evidence of the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name.

In relation to the bad faith requirement, the Complainant points out that “montepaschi” is a fanciful expression, which the Complainant uses on an exclusive basis since 1472. The Complainant’s trademarks have thus acquired worldwide reputation for bank services. It is therefore inconceivable that the Respondent was not aware of the Complainant and of its trademarks at the time of the registration of the disputed domain name. This is also confirmed by the fact that the Respondent is a resident of Italy. According to the Complainant, the Respondent registered the disputed domain name in order to take an unfair advantage from the reputation of the Complainant and of its trademarks. The fact that the disputed domain name does not lead to an active website, cannot prevent a finding of bad faith. On the contrary, the lack of use of a domain name that coincides with a third party’s renowned trademark, coupled with the Respondent’s lack of rights and legitimate interests is a clear indication of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s earlier trademarks since it entirely reproduces the Complainant’s trademark MONTEPASCHI, along with the geographical term “siena”, which is also part of the figurative Italian trademark MONTE DEI PASCHI DI SIENA DAL 1472, and of the figurative European Union registration MONTE DEI PASCHI DI SIENA BANCA DAL 1472 MONTIS PASCORUM, mentioned under paragraph 4 above. The addition of the geographical term “siena” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

In light of the foregoing, the Complainant is satisfied that the first requirement of the Policy is met.

B. Rights or Legitimate Interests

The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain name.

While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant must make a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.

The Panel finds that the Respondent is not a licensee of the Complainant, and nothing in the file shows that the Complainant ever authorized the Respondent to reflect its trademark in a domain name. Furthermore, the Respondent does not own any trademark that might support a finding of rights or legitimate interests in the disputed domain name and does not appear to be commonly known by the disputed domain name. To the best of the Panel’s knowledge, the Respondent has never used the disputed domain name in connection with a bona fine offering of goods or services, nor has made any preparations for such use. The Respondent is passively holding the disputed domain name and is therefore not making a legitimate noncommercial or fair use of it.

All of the above is sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. As the Respondent did not file a Response in order to rebut the Complainant’s arguments and evidence, the Panel is satisfied that the second requirement under the Policy is met.

C. Registered and Used in Bad Faith

In the Panel’s view, it is beyond any doubt that the Complainant and its trademarks enjoy extensive reputation in the banking field, at least in Italy. The Complainant has a long history and is one of the major players in the Italian banking system at least. The word “montepaschi” is intrinsically and univocally connected to the Complainant and its activity. The name of the Italian city “Siena” is usually associated with the term “montepaschi” as it is the place of origin of the Complainant since its creation in 1472, and it is still the location of its registered office.

The fact that the Respondent registered a domain name comprising both the term “montepaschi” and the geographical term “siena” is clear evidence of the fact that the disputed domain name was registered having the Complainant and its trademarks in mind. This is even more so considering that the Respondent appears to be a resident of Italy.

The unauthorized registration of a domain name confusingly similar to a third party’s well-known trademark amounts to registration in bad faith.

The disputed domain name does not lead to an active website. In line with the general opinion of previous UDRP panelists, the Panel finds that the lack of use of the disputed domain name cannot per se exclude a finding of bad faith under the doctrine of the passive holding. In order to evaluate whether the disputed domain name has been used in bad faith, in accordance with the requirement set forth in paragraph 4(a)(iii), it is necessary to evaluate the general circumstances of the case, taking into account (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put (see paragraph 3.3. of the WIPO Overview 3.0).

In the instant case, the Complainant’s earlier marks are highly distinctive and enjoy strong reputation. Furthermore, the Respondent failed to submit a response or to provide any evidence that could justify the legitimate registration of the disputed domain name. In addition, there is no plausible good faith use to which the disputed domain name may be put. Indeed, any use of the disputed domain name by the Respondent would mislead the Complainant’s consumers and could result in scamming, phishing, or other illegitimate activities. For this reason, as soon as the Complainant informed the Registrar of the illegitimate registration of the disputed domain name, the same was suspended.

For all the reasons set forth above, the Panel concludes that the Respondent registered and uses the disputed domain name either to draw an unfair economic advantage from the reputation of the Complainant’s trademark or for other illegitimate reasons, and therefore in bad faith.

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 <montepaschi-siena.com> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: September 8, 2020

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