The Complainant is Consorzio Bancomat of Rome, Italy, represented by Fiammenghi-Fiammenghi, Italy.
The Respondent is Cardidea International L of Milan, Italy, represented by Studio Legale Cannizzaro & Selgi, Italy. 2. The Domain Names and Registrar
The disputed domain names , and are registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2014. On July 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 9, 2014, the Registrar 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 July 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2014. The Response was filed in Italian and English with the Center on July 31, 2014.
The Center appointed Richard Hill as the sole panelist in this matter on August 13, 2014. 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 disputed domain name was registered in 2005. The disputed domain names and were registered in 2000.
The Complainant’s marks BANCOMAT and PAGO BANCOMAT with corresponding design elements were registered in 1997 and 1998 respectively, and are used to promote the Complainant’s online banking and related services. The marks are well-known in Italy where both parties are located. They were assigned to the Complainant by the original owner, the Associazione Bancaria Italiana (ABI).
The Respondent does not have any license or other authorization to use the Complainant’s mark or to sell its products or services.
The Respondent is using the disputed domain names to resolve to a website which solicits user information for what appears to be online banking services. 5. Parties’ Contentions A. Complainant
The Complainant states that it “manages the domestic payment schemes BANCOMAT and PagoBANCOMAT” and is proprietor of the related trademarks BANCOMAT and PAGO BANCOMAT, whose registrations date back to 1997 and 1998 respectively. It provides evidence to that effect, including evidence of the assignment to it of those marks by the original owner. The Complainant owns other registered trademarks and numerous domain names incorporating those marks. The Complainant states also that it “supervises and analyses the e-money market and a number of innovative payment channels, as apart from the banking activities. It also manages the realization of technical infrastructure and platforms for payment card transactions, excluding the direct issue and acceptance of payment cards or other payment instruments”.
According to the Complainant, one of the disputed domain names is identical to its mark, and the other two incorporate its mark and merely add the common word “online”. Thus the disputed domain names are confusingly similar to the Complainant’s mark. The Complainant cites UDRP precedents to support its position.
The Complainant alleges that the Respondent is a foreign entity with an office in Italy operating in production and development of all kinds of card operations and promotion. It started its activities only in 2010. It is highly unlikely that the Respondent, operating in Italy, would not have known of the Complainant’s legal rights in the trademarks.
Further, says the Complainant, the Respondent does not have any rights or legitimate interests in respect of the disputed domain names because no license or authorization of any other kind has been given by the Complainant to the Respondent to use its trademarks.
The Complainant alleges that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy, given that the website used by Respondent in connection with the disputed domain names promotes services interfering with the Complainant’s activity. The text on that website gives an impression that it is in some way related to the services offered by the Complainant. Internet users who access that website are enticed to enter their personal information in order to gain access to the Respondent’s services, which the user might think are actually offered by the Complainant. B. Respondent
The Respondent alleges that the Complainant lacks standing in the instant proceedings because it has not provided any power of attorney on behalf of ABI (the Respondent does not itself explain who ABI is or why ABI should be involved in these proceedings).
The Respondent states that the Complainant’s domain names including the term “pagobancomat” were first registered in 2004, with only one () having been registered in 1999.
The Respondent also states that if a domain name has not been timely registered, it is available to be registered by other parties. Since the Respondent registered the disputed domain names prior to the Complainant attempting to do so, the Complainant’s claim should be dismissed. 6. Discussion and Findings
As a preliminary matter, the Panel addresses the Respondent’s allegation that the Complainant does not have standing in the instant case. The Respondent does not provide any evidence to support that allegation, nor does it explain how the cited third party ABI might be related to the case. The Panel also notes, for the sake of completeness, that the Respondent’s suggestion that the Complainant is not authorized to use the BANCOMAT marks because it is not the proper party in interest, are contradicted by the Complainant’s evidence which shows it to be the assignee of the BANCOMAT and PAGOBANCOMAT marks from ABI. On the basis of the evidence before it, the Panel dismisses the Respondent’s claim and finds that the Complainant, as the holder of the relevant trademark rights, does have standing in the instant case. A. Identical or Confusingly Similar
It is clear that the disputed domain names are confusingly similar (in the sense of the Policy) to the Complainant’s marks BANCOMAT and PAGOBANCOMAT, because they contain the marks and merely add the common word “online” to form the domain name. See PACCAR, Inc. v. Enyart Associates and T, LLC, WIPO Case No. D2000-0289 see also Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253
The Panel holds that the Complainant has satisfied its burden of proof for this first element of the Policy. B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant’s mark or to sell its products or services.
While the Panel notes that “bancomat” or “pagobancomat” may respectively be considered in some respects to be a generic term (in that it means “cash machine” or “pay cash machine” in Italian), the website at the disputed domain names is not providing information related to any such generic meaning, but rather presents a series of pages ultimately designed to solicit user information “from a limited sample of users” who are prepared to “present a valid identity document” and pay for access to what appears to be the Respondent’s proposed services. Thus the Respondent’s use of the Complainant’s marks in the disputed domain names appears to be an attempt to impermissibly trade off the Complainant’s reputation and goodwill by creating a likelihood of user confusion. The Respondent appears to be using the disputed domain names to offer services that interfere with and may compete with the Complainant’s services.
Therefore, the Panel finds, on the present record, that the Respondent is not making a bona fide offering of goods or services for purposes of the Policy. Where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937).
In its brief Response, the Respondent did not come forward with allegations or evidence demonstrating rights or legitimate interests in the disputed domain names.
Thus, on the record of this case as presented by the parties, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel holds that the Complainant has satisfied its burden of proof for this element of the Policy. C. Registered and Used in Bad Faith
As noted in Section B above, the Respondent must have been aware of the Complainant’s well-known marks when it registered and started using the disputed domain names. Its defense to the effect that the disputed domain names had not previously been registered by the Complainant is not relevant for the instant proceedings, which are based on the Policy. The Respondent is using the disputed domain names to resolve to a website that offers services that are related to online banking and thus may compete with or otherwise interfere with the services offered by the Complainant. The website in question invites users to enter their personal information. Users may do this thinking that they are providing the information to the Complainant, when in fact they are not. The text on the website to which the disputed domain names resolve does nothing to disclaim any impression that the Respondent may be in some way related to the official services offered by the Complainant.
Given that the Complainant’s mark appears to be well-known in Italy where both parties are located, and associated with Italian online banking services, use of the disputed domain names to point to a website that purports to offer related services will likely lead to consumer confusion. The Respondent, an apparent competitor of the Complainant, does not provide any explanation regarding why it chose to register domain names that incorporate the Complainant’s marks. Based on the evidence in the case, it furthermore appears clear to the Panel that the Respondent was aware of the Complainant’s predecessor ABI and its rights in a trademark corresponding to a financial market services (now held by the Complainant) when it registered the domain names corresponding to those marks.
Thus the Panel finds that the Respondent has registered and is using the disputed domain names to take advantage of the confusing similarity between the disputed domain names and the Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159.
The Panel holds that the Complainant has satisfied its burden of proof for this element 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 names , and be transferred to the Complainant.
Richard Hill
Sole Panelist
Date: August 15, 2014
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