WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banca d’Intermediazione Mobiliare IMI S.p.A v. H
Case No. D2007-1097
1. The Parties
The Complainant is Banca d’Intermediazione Mobiliare IMI S.p.A., Milan, Italy, represented by Studio Legale Perani, Italy.
The Respondent is H, Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2007. On July 27, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. On August 3, 2007, OnlineNic, Inc. d/b/a China-C 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on September 14, 2007. 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, created in 1998, is one of the main financial brokers in Italy, and is fully owned by Intesa Sanpaolo, a leading Italian banking group.
The Complainant is the owner of several registrations for the trademark “BANCA IMI”, including:
- Community trademark n. 2459089 BANCA IMI, filed on November 12, 2001, and granted on February 14, 2003, for the services of classes 36 and 38; and
- Community trademark n. 2459071 BANCA IMI & DEVICE, filed on November 12, 2001, and granted on January 9, 2003, for the services of classes 36 and 38.
5. Parties’ Contentions
A. Complainant
The domain name is identical to the trademarks in which the Complainant has rights.
The domain name, registered on April 17, 2002, exactly reproduces the trademark BANCA IMI.
The Respondent has no rights or legitimate interests in respect of the domain name.
The Respondent is not commonly known as “Banca Imi”.
The Complainant has never licensed or otherwise authorized the Respondent to use its BANCA IMI name and mark in its commercial activities.
There are no fair non-commercial uses of the domain name at stake.
The domain name was registered and is being used in bad faith.
It is clearly indicated in the web site that the domain name is for sale. Thus, the present case is a typical example of “cybersquatting”.
If may be inferred from the mere offering for sale that the price to be negotiated would exceed the registration costs.
The Respondent registered a domain name exactly reproducing the Complainant’s trademark with the purpose of selling the same, since a public offer to sale is placed in the page connected to the domain name with the indication of a contact e-mail address for making an offer.
The Respondent has attempted to conceal its true identity.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Moreover, under Paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as it considers appropriate (see Paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) the 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 Complainant is the owner of several registrations for the trademark BANCA IMI. The domain name wholly incorporates the Complainant’s distinctive trademark and as such creates sufficient similarity to be confusingly similar (Paragraph 4(a) of the Policy).
Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s trademark pursuant to the Policy Paragraph 4(a)(i).
B. Rights or Legitimate Interests
According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several decisions of WIPO Panels have held that “once a complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.
The Respondent has not submitted a proper response. Therefore, it has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under Paragraph 4(c) of the Policy.
Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration cost is evidence that a domain name was registered and being used in bad faith (see Adidas-Saloman AG v. Vincent Stipo, WIPO Case No. D2001-0372). The Respondent’s website stated, “This domain name is for sale”. The Panel finds, in the absence of rebuttal by the Respondent, that the Complainant has adequately supported the inference that the Respondent’s actions satisfy the “intent to sell” requirement of paragraph 4(b)(i).
Although no direct evidence is provided that the Respondent offered to sell the domain name specifically to the Complainant or its competitors, or that the sale price would exceed the registration costs, it is the Panel’s view that requisite elements of the Policy may be inferred from the circumstances, including the nature of the domain name (its incorporation of the Complainant’s famous and specific trademark) and the manner in which the domain name has been advertised for sale. (see WIPO Case No. D2002-0787, Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Ins.).
Accordingly, the Panel finds that the domain name was registered and used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Thomas P. Pinansky
Sole Panelist
Dated: September 28, 2007
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