The Complainant is Alitalia - Società Aerea Italiana S.p.A., Italy, represented by Società Italiana Brevetti, Italy.
The Respondent is Domains By Proxy, LLC, United States of America / Doneinco Inglese, United States of America. 2. The Domain Name and Registrar(s)
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 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 July 13, 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 July 14, 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 July 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2021. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 13, 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 is the Italian flagship airline that has been operating worldwide under the mark ALITALIA since its first flight in 1947. The Complainant obtained registrations for the trademark ALITALIA in several jurisdictions, including trademark No. 900829 for the European Union, registered on December 21, 1999; International Registration No. 378816, registered on May 6, 1971; and trademark No. 74410760 for the United States of America, registered on March 21, 1995. The disputed domain name The disputed domain name does resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical to a trademark in which the Complainant has rights. The disputed domain name reproduces entirely the Complainant’s trademark ALITALIA. The “.app” Top Level Domain (“TLD”) in the disputed domain name does not mitigate the confusion with the Complainant's trademark ALITALIA. The Complainant has recently launched a corporate software application (“app”) available on Apple Store and Google Play for a smart access to its services. When confronted with the disputed domain name, Internet users and consumers will inevitably focus their attention on the Complainant and immediately associate it with the Complainant’s identical trademark ALITALIA. The Complainant is the owner of more than 60 domain names containing the trademark ALITALIA. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known and cannot be known by the disputed domain name, which clearly refer to the trademark ALITALIA. A database search shows that there are no ALITALIA trademark applications / registrations in the name of the Respondent. The Complainant has neither authorized, nor somehow given its consent to the Respondent to register and / or use the disputed domain name. - The disputed domain name was registered and is being used in bad faith. At the time of registration by the Respondent of the disputed domain name, the Complainant’s business under the trademark ALITALIA was already well established. Considering the reputation of the Complainant’s trademark ALITALIA before the registration of the disputed domain name, it is clear that the Respondent "knew or should have known" about the Complainant. The disputed domain name reproduces, without any authorization or approval, the Complainant’s registered trademark ALITALIA and its company name. The disputed domain name, in fact, does not leads to any active site. Such passive holding of a domain name containing a well-known earlier trademark is a clear indication of bad faith. In registering the disputed domain name, the Respondent had knowledge or at any rate exercised a willful blindness of the Complainant’s earlier rights in and to the trademarks and trade name ALITALIA. The Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the Complainant’s trademark ALITALIA to attract Internet users to the websites related to the disputed domain name, creating a likelihood of confusion with the Complainant’s trademark and company name ALITALIA as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, depriving the Complainant of the possibility to register the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (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. A. Identical or Confusingly Similar The Panel has no doubt that ALITALIA is a trademark directly connected with the Complainant’s widely-known airline services. Annexes 8 and 9 to the Complaint shows trademark registrations for ALITALIA obtained by the Complainant as early as in 1971. The trademark ALITALIA is wholly encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s trademark ALITALIA merely by the addition of the TLD “.app”. It is already well established that the addition of a TLD such as “.app” may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition - “WIPO Overview 3.0”). As a result, the Panel finds that the disputed domain name is identical to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any reason to justify why the specific term “alitalia.app” was chosen to compose the disputed domain name. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered in 2021, the trademark ALITALIA was already widely known for decades and was already directly connected to the Complainant’s airline services. The disputed domain name encompasses the trademark ALITALIA. The addition of the TLD “.app” even enhances the risk of confusion in the present case, suggesting that the disputed domain name refers to an official software application (“app”) of the Complainant. According to the section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademarks and that the registration of the disputed domain name was a mere coincidence. Currently, no active website is linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith. In the Panel’s view, the circumstances in this case, including: (a) the Respondent not presently using the disputed domain name Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third 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 name Rodrigo Azevedo
(b) the Respondent not indicating any intention to use the disputed domain name;
(c) the Respondent not providing justifications for the registration of a domain name containing a third-party famous trademark; and
(e) the lack of any plausible good faith reason for the adoption of the term “ALITALIA” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case under the doctrine of passive holding.
Sole Panelist
Date: August 26, 2021
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