The Complainant is Bper Banca S.p.A. of Modena, Italy, represented by Crea Avvocati Associati, Italy.
The Respondent is Laurent Marteau, Transeo of Paris, France represented by Féral-Schuhl / Sainte-Marie AARPI. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2018. On April 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2018, 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 Complainant filed an amended Complaint on May 3, 2018 to resolve an administrative formality.
The Center verified that the Complaint together with the amended 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 May 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2018. On May 19, 2018, the Respondent requested an automatic four-day extension of the due date for the Response. On the same day, the Center granted the requested extension and confirmed that the new due date for Response was May 28, 2018. On May 24, 2018, the Respondent requested an extension of the due date for the Response to June 1, 2018, and on May 25, 2018, the Complainant indicated its assent to the Respondent's request. On May 25, 2018, the Center confirmed that the new Response due date was June 1, 2018. The Response was filed with the Center on June 1, 2018.
On June 14, 2018, the Complainant submitted an unsolicited supplemental filing.
The Center appointed Warwick A. Rothnie, Angelica Lodigiani, and Gabriela Kennedy as panelists in this matter on June 21, 2018. The Panel finds that it was properly constituted. Each member of 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.
On June 26, the Respondent objected to reception of the Complainant's unsolicited supplemental filing and requested a right of reply if the supplemental filing was admitted. 4. Factual Background
The Complainant can trace its origins to the Banca popolare di Modena founded in 1867. In 1973, it began a process of acquiring other banks in the Emilia Romagna region until, in 1984, it changed its name to Banca Popolare dell'Emilia Romagna. In the later 1990s and 2000, it entered a further period of growth acquiring banking institutions in other parts of Italy. It now has some 1,300 branches throughout Italy and the group is the sixth largest banking group in Italy.
According to the Complaint, the Complainant has been using BPER as a trademark for the activities of its group since 1992 or possibly 1999. This is contested by the Respondent. A number of matters, however, are not in dispute.
On April 8, 1994, the Complainant registered in Italy the trademark BANCA POPOLARE DELL'EMILIA ROMAGNA in respect of banking and financial services in International Class 36.
On November 29, 1999, the Complainant, through a subsidiary, registered the domain name .
The Complainant has numerous registered trademarks based on BPER in both Italy and as European Union Trademarks, the earliest of which is an Italian registered trademark for BPERCARD which was registered from January 11, 2001. Its first registration for BPER alone is Italian Registered Trademark No. 1643585 which was filed on August 26, 2014 for services in International Class 36.
The Complainant changed its name to its current name by an Extraordinary General Meeting on November 26, 2016.
The disputed domain name was registered on February 20, 2000.
While the Respondent says there was some use of the disputed domain name initially in connection with a technology project the Respondent was undertaking, in March 2001 the disputed domain name resolved to a simple "coming soon" webpage. At some point thereafter (the Complainant says 2010) until about January 2017 the disputed domain name simply resolved a webpage offering the disputed domain name for sale. The webpage did not include any pay-per-click advertisements or any other relevant content. In January 2017, the disputed domain name began resolving to a website in French which appears to be about "water" and water recycling in urban environments.
On April 7, 2017, a representative of the Complainant approached the Respondent by email inquiring about buying the disputed domain name. The Respondent replied proposing a price of EUR 25,000 plus VAT (if applicable). Some further communications took place at the end of which the Complainant's representative offered to pay EUR 2,500, but was refused. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Admissibility of Complainant's Supplemental Filing
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent's position on a particular point was clear.
Paragraph 3 of the Complainant's proposed supplemental filing clarifies that the entity in whose name the domain name is registered is one of its subsidiaries. Apart from that, the points proposed to be made in the supplemental filing are not new or are in any event obvious from reviewing the record. The Panel therefore admits the supplemental filing only to the extent of paragraph 3. There is no need in the circumstances for the Respondent to make further submissions. B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in section 4 above. The Panel would also accept that the Complainant and many of its products are very well-known at least in Italy now by reference to the sign "BPER".
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain ("gTLD") component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the ".com" gTLD, the distinctive element of the Complainant's numerous trademarks based on BPER, such as BPERCARD, is "BPER". The acronym is plainly visible and recognizable within those marks. Accordingly, the Panel finds the disputed domain name is confusingly similar to them. The Panel also finds that the disputed domain name is identical to the Complainant's registrations for BPER alone.
The Panel accepts that BPER could be seen as an acronym for the Complainant's first registered trademark, BANCA POPOLARE DELL'EMILIA ROMAGNA. The process of derivation, in the circumstances of this case, however, is not sufficient to arrive at a conclusion that the disputed domain name is confusingly similar to that trademark. C. Registered and Used in Bad Faith
In the circumstances of this case, it is appropriate next to consider the third element under the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, the Complainant recognizes that its trademarks for BPER were registered after the registration of the disputed domain name. The Complainant says, however, that it has de facto use of BPER since 1992. It points out that the disputed domain name was registered very shortly after the Complainant's registration of and has not been used in "a real and concrete" sense since then. The Complainant relies on the registration of the disputed domain name in the ".com" gTLD "which represents a natural geographical area of expansion of Complainant's growing business" as a further sign of bad faith. It then relies on the offer to sell the disputed domain name for EUR 25,000.
The Respondent denies registering the disputed domain name with knowledge of the Complainant or its trademark. The Panel is unable to reject that denial in the circumstances of this case.
First, the disputed domain name is a four-letter acronym. As even the Complainant recognizes, many businesses even in France alone could have an interest in such an acronym.
Second, the disputed domain name was registered only three months after the Complainant registered the domain name . There is no evidence, however, that the Complainant's domain name was actually used before the Respondent registered the disputed domain name. At this point in time, the Wayback Machine does include a record for on March 3, 2000. The record simply reads "The request did not specify a valid virtual host." So, it is not possible at this time to say whether the domain name resolved to a website with any content on that date.
The next record on the Wayback Machine for is for June 19, 2000. This does show a website with content for a banking and financial services business under the banner "Banca popolare dell'Emilia Romagna". In the center of the footer, however, there is also another "logo": "BPER GROUP" around a stylized "G" with the tag line "SERVIZI ON LINE". Accordingly, it does appear that BPER Group was in use by this time.
Third, as noted above, the Complainant claims it has been using BPER to describe its activities since 1992. It refers to a number of pages of its own website to support that claim. They are current or recent documents, not documents objectively demonstrating actual use dating from the 1990s. The Panel accepts the Respondent's objection that such materials cannot be used to corroborate the claim of use.
The earliest objective corroboration is in fact the website archived on the Wayback Machine for June 19, 2000. As noted above, the Complainant did apply to register BPERCARD in January 2001. That application, however, does not demonstrate that the sign was in use before that date.
Further, the evidence before the Panel does not include information about the size or geographic extent of the Complainant's operations back in January / February 2000. The Complaint does include print outs of references to the Complainant as BPER Group (or the like) by a number of institutions, including French banks such as Exane SA and Societe Generale and in French publications including Le Figaro and LesE. The earliest of these included in the Complaint is dated May 2011.
These references do not demonstrate that the Complainant was using BPER before the Respondent registered the disputed domain name. Moreover, they do not provide a basis from which the Panel may infer that the Complainant was sufficiently well-known as BPER in February 2000, let alone well-known in France so that it is likely the Respondent was aware of the Complainant's usage of BPER.
Fourth, there is no evidence until 2017 that the Respondent ever used the disputed domain name to take advantage of the significance of the acronym as the Complainant's trademark. Even the claim to be paid EUR 25,000 for a four letter acronym cannot be characterized as necessarily or even likely referable to the Complainant's use. In any event, it is 17 years after the Respondent registered the disputed domain name and does not throw useful light on the Respondent's motives in 2000.
As a result, the nature of the disputed domain name and the evidence provided by the Complainant are not sufficient to contradict the Respondent's denial of knowledge of the Complainant's unregistered trademark at the time of the registration of the disputed domain name. Accordingly, the Panel finds that the Complainant has not established the disputed domain name was registered in bad faith. Therefore, the Complainant has not established the third requirement under the Policy. D. Rights or Legitimate Interests
As the Complaint must fail in light of the finding that the disputed domain name was not registered in bad faith, no good purpose would be served by considering the second element under the Policy. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Presiding Panelist
Angelica Lodigiani
Panelist
Gabriela Kennedy
Panelist
Date: July 9, 2018
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