The Complainant is Banca Monte dei Paschi di Siena S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Paul Cambria, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2020. On December 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 December 11, 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 amendment to the Complaint on December 14, 2020. The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2021. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on February 11, 2021. 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 states that it is a commercial and retail bank in Italy with branches in many countries around the world. Its activities range over many fields, from traditional banking activity to asset management and private banking with a special vocation for “family” accounts and small and medium businesses. The Complainant further states that it also offers online banking services through its website “www. mps.it” and its English version “www.gruppomps.it”, allowing its customers to check their bank accounts and to proceed with bank transactions via the Internet. The Complainant also has several registered trademarks consisting of MONTEPASCHI and MONTE DEI PASCHI, alone or in combination with other words, including the word “banca” (the Italian translation of the English word “bank”). The Complainant relies on a number of trademarks in support of its Complaint as set out at Annex 5 of the Complaint and which include the following: Trademark Jurisdiction Registration No. International Class(es) (IC) MONTEPASHCHI Italy 0000914822 36 MONTE PASCHI United States 538308 36 CARTAMONTEPASHCI Italy 0001643340 35, 36, 38 GRUPPOMONTEPASCHI European Union 007229776 35, 36, 38 MONTEPASCHI RESTART Italy 0001643398 35, 36, 38 MONTEPASCHI BANCAFFE’ European Union 013456603 43 European Union 002232775 35, 36, 38 Tunisia TN/E/2006/979 36 European Union 00233744 25, 28, 36, 41 United Kingdom UK00001503708 36 India 1455761 36 The above trademark registrations are collectively referred to as the “MONTEPASCHI Marks”. The Complainant is also the registrant of several domain names comprising the MONTEPASCHI Marks or similar. These include: The disputed domain name The Complainant asserts its rights in the MONTEPASCHI Marks. The Complainant contends that the disputed domain name is confusingly similar to its MONTEPASCHI Marks resulting from the combination of its MONTEPASCHI Marks with the generic word “bank” (the Complainant’s main activity). The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Complainant states that it has retrieved no relevant information concerning the Respondent, including its name. Given that it has no knowledge of who the Respondent is, the Complainant states that it has never authorized or permitted in any way a third party to register or use the disputed domain name or to use its MONTEPASCHI Marks alone or in combination with the word “bank”, or other words similar thereto. Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith and in full knowledge of the Complainant’s rights. The Complainant asserts that the Respondent acquired the disputed domain name primarily for the purpose of reselling the domain name to the Complainant (or alternatively to one of its competitors), or alternatively, for the purpose of disrupting Complainant’s business and reputation. In this respect, the Complainant states that there is no evidence showing that, ever since registration, the Respondent has made any attempt to use the disputed domain name in a lawful manner. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, a Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding: (i) that the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence of its registrations in relation to the MONTEPASHI Marks in the European Union, India, Italy, Morocco, Tunisia, the United Kingdom, and the United States (see Annex 5 of the Complaint). The Complainant states its MONTEPASCHI Marks recall the company name of the Complainant (Banca Monte dei Paschi di Siena S.p.A.) and are registered and used for different services belonging in particular to International classes 36 and 38. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the MONTEPASCHI Marks. The Panel is also satisfied that the Complainant is well-known by its MONTEPASCHI Marks as a commercial and retail bank in Italy and elsewhere around the world. The Panel accepts that the disputed domain name is confusingly similar to the Complainant’s MONTEPASCHI Marks. Section 1.8 of WIPO Overview 3.0 states that where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel notes that when comparing the disputed domain name against the MONTEPASCHI Mark, only the descriptive term “bank” differs. The Panel also accepts that the term “bank” describes the main business activity of the Complainant. With respect to the “.com” generic Top-Level-Domain (“gTLD”), section 1.11.1 of the WIPO Overview 3.0 states that a TLD in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element. The Panel therefore accepts that the gTLD “.com” may be disregarded for the purpose of comparison under the first element. In summary, the Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s MONTEPASCHI Mark. Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain names, among other circumstances, by showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service rights; or (iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. There is no evidence of the existence of any of the rights or legitimate interests on the part of the Respondent pursuant to Paragraph 4(c). The Complainant has stated, and the Panel accepts, that it has not authorized or otherwise permitted any third party, including the Respondent, to use its MONTEPASCHI Marks. The Complainant has rights in the MONTEPASCHI Marks which precede the Respondent’s registration of the disputed domain name. Further, the Respondent has failed to show that it has acquired any rights or legitimate interests with respect to the disputed domain name. The evidence indicates that the domain name does not resolve to any website from which the Respondent has made a bona fide offering of goods and services. The evidence also indicates that the Respondent is not making any legitimate noncommercial use of the domain name for any other purpose. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s Complaint. The Panel therefore finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent, and accordingly finds paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith Paragraph 4(a)(ii) of the Policy provides the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons: (i) The Panel accepts the Complainant’s statement that the MONTEPASCHI Marks comprise the fanciful expression “montepaschi” which, since 1472, has been used on an exclusive basis by the Complainant to distinguish their activity and services. The Panel also accepts the Complainant’s evidence that the MONTEPASCHI Marks have acquired renown, goodwill, and reputation for bank services globally. The Panel is therefore satisfied that the Complainant’s MONTEPASCHI Marks are globally well-known in its industry. (ii) The Panel is also satisfied that the Respondent was, and is, aware of the Complainant and its MONTEPASCHI Marks. This is evidenced by the fact that the disputed domain name uses the MONTEPASCHI Mark in its entirety and includes the term “bank” which is descriptive of the Complainant’s main business activities. (iii) Paragraph 2 of the UDRP puts a burden on registrants where it states “by applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that […] to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of the third party […]. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” Even a most cursory trade mark or other online search or any online search of existing domain names prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its MONTEPASCHI Marks. See in this regard section 3.2.3 of the WIPO Overview 3.0. (iv) Further, in light of the facts established in the Complaint, the Panel finds that the Respondent has taken deliberate steps to hide its identity. The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons: (i) There is no evidence that the disputed domain name resolves to a website offering bona fide goods and services. There is also no evidence that the Respondent has offered to sell, rent or otherwise transfer the disputed domain name to the Complainant, a competitor of the Complainant, or any other person. (ii) However, inaction on the part of the Respondent does not prevent a finding in bad faith. Paragraph 4(b) of the Policy recognizes that inaction (e.g. passive holding) in relation to a disputed domain name registration can, in certain circumstances, constitute a domain name being used in bad faith (see Telstra Corporation Limited v Nuclear Marshmallows,WIPO Case No. D2000-0003). In the present case, the Panel is satisfied that the passive holding of the disputed domain name on the part of the Respondent constitutes use in bad faith. The particular circumstances which lead to this conclusion are: a. The Complainant’s MONTEPASCHI Marks have a strong reputation in the banking industry, and is widely known globally, as a result of their long-standing use since 1472. b. The Respondent has failed to respond to the Complainant’s Complaint. The Respondent has taken active steps to conceal its identity. c. Given the Complainant’s numerous registered MONTEPASCHI Marks, and its wide reputation in the banking industry worldwide, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 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 Andrew Brown Q.C.
And
TN/E/206/2133
Sole Panelist
Date: February 17, 2021
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