Complainant is Alitalia - Società Aerea Italiana S.p.A. in Amministrazione Straordinaria, Italy, represented by Società Italiana Brevetti S.p.A., Italy.
Respondent is Sidney K Houston, USA.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2021. On September 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 6, 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 Respondent of the Complaint, and the proceedings commenced on September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2021.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on October 8, 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 BackgroundComplainant is the Italian flagship airline that has been operating worldwide under the trade mark ALITALIA since its first flight in 1947. It is based in Rome, where it has its own terminal at Fiumicino Airport.
Complainant is the owner of numerous registrations for the trade mark ALITALIA (“Complainant’s Mark”) including the following:
Trade Mark
Country / Jurisdiction
Application No.
Registration Date
ALITALIA
European Union
900829
December 21, 1999
International
378816
May 6, 1971
United States of America
74410760
March 21, 1995
Italy
MI32459R
January 9, 2018
Complainant is the owner of more than 60 domain names containing Complainant’s Mark, with its main website operating at "www.alitalia.com".
According to the publicly available WhoIs, the Domain Name was registered on April 11, 2021. As at the date of the Complaint, it resolved to a page which is inactive.
5. Parties’ Contentions A. ComplainantComplainant states that the Domain Name is confusingly similar to Complainant’s Mark as it incorporates Complainant’s Mark in its entirety, with the addition of the generic term “club”. Further, Complainant contends that the addition of this term is likely to result in consumers being confused into believing that the Domain Name is connected to Complainant, as it gives the impression that it may refer to the loyalty program operated by most airlines.
Complainant asserts that there is no evidence to suggest that Respondent has ever used the Domain Name in connection with a bona fide offering of goods and services. Complainant goes on to assert that Respondent has never been in a relationship with Complainant, and Respondent is not licensed or otherwise authorized to register or use Complainant’s Marks.
Complainant concludes that Respondent has registered the Domain Name in bad faith by exploiting the reputation and distinctiveness of Complainant’s Mark to attract Internet users by creating a likelihood of confusion.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsComplainant has rights in Complainant’s Mark. It has operated an international airline business since 1947. Based in Rome, Complainant is Italy’s national flagship carrier. It has registered Complainant’s Mark in a number of jurisdictions around the world, including in its home country Italy and is the owner of more than 60 domain names containing Complainant’s Mark.
Complainant submits that the Domain Name is confusingly similar to Complainant’s Mark, as it incorporates Complainant’s Mark in its entirety, with the addition of the generic term “club”. The addition of the term “club”, commonly associated with airline frequent flyer or other associated loyalty programs does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The Domain Name is therefore confusingly similar to Complainant’s Mark. The first ground of the Policy is established.
B. Rights or Legitimate InterestsComplainant argues that Respondent lacks rights or legitimate interests in the Domain Name as it has not used the Domain Name in connection with a bona fide offering of goods and services, has no relationship with Complainant and is not licensed or otherwise authorized to register or use Complainant’s Mark. Given Respondent has registered a domain name which contains Complainant’s Mark in its entirety, that raises a prima facie case against Respondent under this ground and calls for a response. Respondent has chosen to not respond.
Further, Complainant contends that the use of Complainant’s Mark in the Domain Name in conjunction with the term “club” is likely to result in consumers being confused into believing that the Domain Name is connected to Complainant, as it gives the impression that it may refer to the loyalty program operated by most airlines. There is merit in this argument. Even though Respondent is passively holding and not actively using the Domain Name at present, if it did so it would be likely to mislead or deceive consumers into believing they were accessing Complainant or one of its affiliate’s websites, contrary to the fact.
Under the circumstances, the Panel concludes that the Domain Name was not registered and has not been used for any legitimate or fair purpose.
Accordingly, the second ground under the Policy is made out.
C. Registered and Used in Bad FaithUnder this ground, Complainant submits that Respondent has registered the Domain Name in bad faith by exploiting the reputation and distinctiveness of Complainant’s Mark to attract Internet users by creating a likelihood of confusion. The difficulty with this submission is that Respondent is passively holding the Domain Name and is not actively exploiting any reputation or distinctiveness as such. However, the Domain Name in Respondent’s hands is a blocking registration and it is certainly capable of being misleading or deceptive if the Domain Name is activated so as to resolve to an active website.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 sets out four factors that have been taken into account in applying the passive holding doctrine. Applying those factors to the present situation, the Panel finds: (1) Complainant’s Mark has a high degree of distinctiveness and reputation; (2) Respondent has failed to explain why it has chosen the Domain Name; (3) Respondent has concealed its identity; and (4) it is difficult to envisage any plausible good faith use to which the Domain Name could be put.
Complainant has therefore established the third ground under the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Clive L. Elliott
Sole Panelist
Date: October 26, 2021