The Complainant is UniCredit S.p.A. of Rome, Italy, represented by Carlo Piana, Italy.
The Respondent is Mr. Felice Gaiba, CerTeam Studio Associato of Imola, Italy. 2. The Domain Name and Registrar
The disputed domain name (also referred to herein below as the Domain Name) is registered with T. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2010. On October 27, 2010, the Center transmitted by email to T. a request for registrar verification in connection with the Domain Name. On October 29, 2010 and November 14, 2010, T. 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” 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2010.
The Center appointed Anna Carabelli as the sole panelist in this matter on December 14, 2010. 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 well-known European bank group (one of the largest in Europe) into which Clarima s.p.a. merged.
The Complainant has provided evidence of trademark registration for the mark CLARIMA (annex 3 to the Complaint), covering various countries including Italy, with a priority date in Italy as of May 15, 2001.
The Respondent’s Domain Name was registered on October 17, 2003 as shown by a copy of the Registrar’s WhoIs database (annex 1 to the Complaint). The Domain Name is not linked to a website (annex 5 to the Complaint). 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- the CLARIMA mark is well-known and firmly associated with the Complainant;
- the Domain Name is identical to its registered trademark CLARIMA;
- the Respondent has no rights or legitimate interests in the Domain Name and was already respondent in another domain name dispute with the Complainant that ended with the transfer to the latter of domain names (annex 4 to the Complaint). The registration of the Domain Name is therefore within a pattern of registration targeting the banking market and Unicredit Group;
- the Domain Name was registered and used in bad faith in order to prevent the Complainant from reflecting the mark CLARIMA in a corresponding domain name. 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 basis 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.
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; and
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registration for the mark CLARIMA (annex 3 to the Complaint).
The Domain Name is identical with the Complainant’s trademark, as it incorporates CLARIMA and the addition of the gTLD “.info” has no legal significance when comparing the Domain Name and the Complainant's trademark.
Accordingly the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
After reviewing the case record, the Panel is of the opinion that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name in relation to the three circumstances identified in paragraph 4(c) of the Policy, namely: (i) bona fide prior use; (ii) common association with the domain name; and (iii) legitimate noncommercial use.
As stressed by many UDRP decisions, when a complainant makes a prima facie case that the respondent does not have rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683).
Because Respondent has failed to submit an answer to the Complaint there is no evidence before the Panel showing that the Respondent has rights or legitimate interests in the Domain Name.
Accordingly the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the circumstances of this case, the Panel finds that in all likelihood the Respondent was aware of the Complainant’s CLARIMA trademark at the time it registered the Domain Name. The fact that the Respondent has engaged in the past in a pattern of registering domain names identical or confusingly similar to other trademarks of the Complainant’s (see annex 4 to the Complaint), further corroborates the above conclusions.
Based on the above, the Panel agrees that the Respondent has registered the Domain Name in bad faith.
The fact that at the Domain Name is not linked to a website raises the issue of actual use in bad faith, according to the Rules, paragraph 4(a)(iii).
According to Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which was followed by several consistent UDRP decisions, “the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, under certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s present passive holding of the Domain Name meets the requirement of paragraph 4(a)(iii) that the Domain Name “is being used in bad faith” by the Respondent based on the following circumstances:
(i) the Complainant’s trademark is well-known and firmly associated with the Complainant;
(ii) the Respondent has provided no evidence whatsoever of its actual or contemplated good faith use of the Domain Name;
(iii) the fact that the Respondent has registered in the past other domain names incorporating other trademarks of the Complainant’s suggests the intent to profit from the activity of others (Stella D’Oro Biscuit Co. Inc. v.The Patron Group Inc, WIPO Case No. D2000-0012; Nabisco Brands co. v.The Patron Group Inc.,WIPO Case No.D2000-0032; Parfums Christian Dior V. 1 Network Inc., WIPO Case No.D2000-0022; J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035);
(iv) the fact that such domain names had never been used by the Respondent just as is the case with the Domain Name, suggests the Respondent’s intention to disrupt the Complainant’s business and to prevent the Complainant as holder of the trademark CLARIMA from reflecting the mark in a corresponding domain name;
(iv) the Respondent has no rights or legitimate interests in the Domain Name, as established under section 6(b) above and the Panel is of the opinion that,the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate.
In view of all the foregoing the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy. 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.
Anna Carabelli
Sole Panelist
Dated: December 28, 2010
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