The Complainant is Banca Monte dei Paschi di Siena S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Paolo Dionisi, Italy. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2021. On March 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2021, 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 April 14, 2021 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 April 16, 2021. 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 April 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2021. The Center appointed Anna Carabelli as the sole panelist in this matter on May 21, 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 undisputed evidence submitted by the Complainant shows that the Complainant is the oldest or second oldest bank in the world and the fourth largest commercial and retail bank in Italy. The Complainant owns registrations for trademarks consisting or including the wording “MPS”, in Italy and in numerous other jurisdictions, including the international registration No. 824744 for MPS registered on April 14, 2004. Schedules of MPS Italian and international trademark registrations are attached to the Complaint as Exhibits 4 and 5. The disputed domain name was registered by the Respondent on September 10, 2020, using a proxy service. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant alleges and contends that: - It is the oldest bank in the world and the fourth largest commercial and retail bank in Italy, with 2,000 branches, 26,000 employees and 5.1 million customers all over the world. - The Complainant owns several trademark registrations consisting of or including the wording “MPS” (which is the acronym for Monte Paschi Siena) in Italy and several other jurisdictions. - The Complainant also owns several domain names consisting of or including MPS, among which the domain names -The Complainant offers online banking services through the website “https://www.mps.it” and its English version “https://www.gruppomps.it”. - The disputed domain name is identical with or confusingly similar to the Complainant’s trademarks since it results from the combination of “MPS” and “it” which is the country code for Italy, where the Complainant was founded and still has its registered office. - The disputed domain name does not resolve to an active website. - The Respondent does not have any rights or legitimate interests in respect of the disputed domain name. - The disputed domain name has been registered and is being used in bad faith, as the Respondent knew or should have known of the Complainant’s trademarks, particularly since the Respondent Paolo Dionisi is based in Italy, where the Complainant and its trademarks are extremely well known. 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 based on 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 disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of 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 disputed domain names for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar The Complainant has proved that it owns trademark registrations for MPS, in Italy and throughout the world. The disputed domain name contains exactly the trademark MPS and this is a sufficient element to establish confusing similarity, as held by previous UDRP panels (e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, WIPO Case No. D2020-1955, Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409). The addition of a dash followed by “it” does not obviate confusing similarity because the Complainant’s trademark is clearly recognizable within the disputed domain name. As recorded in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see WIPO Overview 3.0, section 2.1). The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademark MPS and asserts that the Respondent cannot have any rights or legitimate interests in the disputed domain name, as evidenced by the fact that the disputed domain name does not resolve to an active website. The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights provided for in paragraph 4(c) of the Policy applies. In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The disputed domain name incorporates the Complainant’s trademark MPS which is the acronym for Monte Paschi Siena. Given the distinctiveness and well-established reputation of the Complainant’s MPS trademark, it is not conceivable that the Respondent did not have it in mind when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2) with a deliberate intent to create an impression of an association with the Complainant. The combination of “it” (which is the country code for Italy where the Complainant was founded and still has its registered office) with the distinctive element MPS clearly increases confusion. The lack of active use of a domain name does not as such prevent a finding of bad faith (see Arla Foods Amba v. Joan P Evans,WIPO Case No. D2016-0473; Vertu Corporation Limited v. David Szn and Jun Luo,WIPO Case No. D2015-0185; Accor, So Luxury HMC v. Youness Itsmail,WIPO Case No. D2015-0287; McGrigors LLP v. Fraser Coutts,WIPO Case No. DCO2011-0022). According to paragraph 3.3 of the WIPO Overview 3.0, the Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. In the Panel’s view the circumstances of the present case (namely: distinctiveness and reputation of the Complainant’s trademarks, no response to the Complaint, impossibility of conceiving a good faith use of the disputed domain name, the Respondent’s attempt to conceal its identity by using a proxy service to register the disputed domain name) clearly show the Respondent’s bad faith. Based on the above, the Panel concludes that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied 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 Anna Carabelli
Sole Panelist
Date: June 3, 2021
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