The Complainant is Unipol Gruppo S.p.A., Italy, represented by Bugnion S.A., Italy.
The Respondent is Knock Knock WHOIS Not There, LLC. / Unipol Network, Switzerland. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2020. On January 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 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 February 5, 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 amended Complaint on February 7, 2020. 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 February 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 5, 2020. The Center appointed Knud Wallberg as the sole panelist in this matter on April 20, 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. Due to an administrative oversight and problems with the transmission of the Written Notice, the Center granted the Respondent an additional 10 days, through April 6, 2020, in which to indicate whether it wishes to participate in this proceeding. As no reply was received by the Respondent, the Center notified the Parties of the commencement of the Panel appointment process on April 7, 2020. 4. Factual Background The Complainant is Italy’s second largest insurance group and is among the ten largest in Europe. The Complainant operates not only in the insurance sector, but also in the banking, the financial and the real estate sectors, and currently employs more than 14,000 people serving more than 15 million customers. The Complainant has registered several trademarks consisting of the term “unipol” including International trademark registration No. 1102188 UNIPOL, registered on November 16, 2011, for goods and services in international classes 9, 16, 35, and 36. The disputed domain name The Complainant submits that the disputed domain name is confusingly similar to the trademarks in which it has rights. The disputed domain name incorporates the Complainant’s UNIPOL trademark in its entirety. The addition of the term “my” and the “.net” generic Top-Level Domain (“gTLD”) does not prevent a finding of confusing similarity under the UDRP. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been authorized or allowed by the Complainant to make any use of its UNIPOL trademark, in a domain name or otherwise. The Complainant further submits that searches in the Swiss Central Business Index and an Internet search engine reveal that the company listed as the registrant of the disputed domain name does not exist, supporting the contention that the Respondent registered the disputed domain name using false information in order to delay this proceeding. The Complainant submits that since the Complainant’s mark UNIPOL is widely known and since the Respondent not only registered the disputed domain name but also used the UNIPOL trademark in the registration of the disputed domain name in order to delay this proceeding, the Respondent had actual and constructive knowledge of the Complainant and its rights at the time of registration of the disputed domain name. Finally, the Complainant submits, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith use under the UDRP. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark UNIPOL because it contains the mark in its entirety with the addition of the common term “my”. The gTLD “.net” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark. Based on the case record the Panel finds that the Complaint has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. On the contrary, the Respondent has used what appears to be false contact information including the non-exiting company name “Unipol Network” when registering the disputed domain name. Furthermore, the composition of the disputed domain name, comprising the Complainant’s trademark and an additional term, carries a risk of implied affiliation with the Complainant and does not constitute a fair use in the circumstances of this case. See section 2.5.1 of the WIPO Overview 3.0. Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, including the evidence on record of the use of the Complainant’s trademark UNIPOL, and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name, which based on its composition could attract Internet users in a manner that is likely to create confusion for such users. The Panel therefore finds that the disputed domain name was registered in bad faith. The disputed domain name does currently not resolve to an active website. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP: “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, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See section 3.3 of the WIPO Overview 3.0 Noting that the disputed domain name incorporates the Complainant’s distinctive trademark UNIPOL, together with the common term “my” and the gTLD “.net”, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 Knud Wallberg
Sole Panelist
Date: May 4, 2020
Full & Egal Universal Law Academy