The Complainants are Società Reale Mutua di Assicurazioni and Banca Reale S.p.A., Italy, represented by Buzzi, Notaro & Antonielli d'Oulx, Italy.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Andrea Pasolini, Italy, Matteo Tussiani, Italy, Marco Scardella, Italy, Aneglo Fitossi, Italy, and Andrea Galeazzi, Italy.
2. The Domain Names and RegistrarThe disputed domain names
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 disputed domain names. On September 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on September 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 11, 2021.
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 September 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2021.
The Center appointed Edoardo Fano as the sole panelist in this matter on October 18, 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.
The Panel has not received any requests from the Complainants or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual BackgroundThe Complainants are Società Reale Mutua di Assicurazioni and Banca Reale S.p.A., two Italian companies belonging to the Reale Group, operating in the field of insurance, banking and real estate, and having rights over several trademark registrations for BANCA REALE, REALE MUTUA ASSICURAZIONE, REALE GROUP and GRUPPO REALE MUTUA, including the following ones:
- Italian Trademark Registration No. 590566 for GRUPPO REALE MUTUA, registered on March 9, 1993;
- International Trademark Registration No. 603978 for GRUPPO REALE MUTUA, registered on March 9, 1993;
- Italian Trademark Registration No. 909697 for BANCA REALE, registered on September 26, 2003;
- International Trademark Registration No. 916233 for REALE MUTUA ASSICURAZIONE, registered on January 8, 2007;
- International Trademark Registration No. 1273162 for REALE GROUP and design, registered on December 17, 2014.
The Complainants also operate on the Internet owning several domain names, among which
The Complainants provided evidence in support of the above.
The disputed domain names were registered on the following dates:
Before the Complaint was filed, the website at the disputed domain names was used for phishing activities. On October 27, 2020, the Complainants reported the phishing activities to the Italian Postal and Communication Police (Cyber and Anti-fraud Department) and on December 10, 2020, a criminal complaint was filed with the Public Prosecutor’s Office at the competent Court of Turin. As a consequence, the website at the disputed domain names has been shut down by the Italian Police.
5. Parties’ Contentions A. ComplainantsThe Complainants state that the disputed domain names are identical or confusingly similar to its trademarks BANCA REALE, REALE MUTUA ASSICURAZIONE, REALE GROUP, and GRUPPO REALE MUTUA, as the disputed domain names wholly incorporate the Complainants’ trademarks, with the sole addition of hyphens and, to two of them, of the generic term “info” and the descriptive geographical term “italia”.
Moreover, the Complainants assert that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainants to register the disputed domain names or to use their trademarks within the disputed domain names, nor is the Respondent commonly known by the disputed domain names. The Complainants assert that the Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names since the website at the disputed domain names has been used for phishing activities.
The Complainants submit that the Respondent has registered the disputed domain names in bad faith, since the Complainants’ trademarks BANCA REALE, REALE MUTUA ASSICURAZIONE, REALE GROUP, and GRUPPO REALE MUTUA are distinctive and well known in the field of insurance, banking, and real estate, and the disputed domain names resolved to a website aimed to phishing activities. Therefore, the Respondent targeted the Complainants’ trademarks at the time of registration of the disputed domain names and the Complainants contend that the Respondent was intentionally attempting to generate profits by using the disputed domain names for phishing activities.
B. RespondentThe Respondent has made no reply to the Complainants’ contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288).
6. Substantive IssuesParagraph 4(a) of the Policy lists three elements, which the Complainants must satisfy in order to succeed:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Consolidation of Multiple RespondentsThe amendment to the Complaint was filed against five registrants, and the Complainants have requested consolidation of multiple respondents. No objection to this request was made by the Respondent.
Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names.
The Panel notes that all the disputed domain names redirected to the same website. The Panel finds that there is sufficient evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair and equitable to all Parties to accept the Complainants’ consolidation request. The Panel further notes that the Respondent did not object to the consolidation request. The Panel therefore accepts the Complainants’ consolidation request.
B. Identical or Confusingly SimilarThe Panel finds that the Complainants are the owners of the trademarks BANCA REALE, REALE MUTUA ASSICURAZIONE, REALE GROUP, and GRUPPO REALE MUTUA both by registration and acquired reputation and that the disputed domain names are identical or confusingly similar to the trademarks BANCA REALE, REALE MUTUA ASSICURAZIONE, REALE GROUP, and GRUPPO REALE MUTUA as these are recognizable in the disputed domain names.
Regarding the addition of hyphens and to two of the disputed domain names, of respectively the term “info” and the geographical term “italia”, the Panel notes that it is now well established that the addition of other terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; and America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713).
Regarding the addition of hyphens and, to two of the disputed domain names, of respectively the term “info” and the geographical term “italia”, does not therefore prevent the disputed domain names from being confusingly similar to the Complainants’ trademarks (see WIPO Overview 3.0, section 1.8).
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see WIPO Overview 3.0, section 1.11).
The Panel finds that the Complainants have therefore met their burden of proving that the disputed domain names are confusingly similar to the Complainants’ trademarks, pursuant to the Policy, paragraph 4(a)(i).
C. Rights or Legitimate InterestsThe Respondent has failed to file a Response in accordance with the Rules, paragraph 5.
The Complainants in their Complaint and as set out above have established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. They assert that the Respondent, who is not currently associated with the Complainants in any way, is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services, but instead the disputed domain names have been used for phishing activities.
According to the WIPO Overview 3.0, section 2.13:
“2.13.1 Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent […].”
The prima facie case presented by the Complainants is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation as they effectively impersonate or suggest sponsorship or endorsement by the Complainants (see WIPO Overview 3.0., section 2.5.1).
Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
D. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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”.
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainants’ trademarks BANCA REALE, REALE MUTUA ASSICURAZIONE, REALE GROUP, and GRUPPO REALE MUTUA in the field of insurance, banking, and real estate is clearly established and the Panel finds that the Respondent likely knew of the Complainants and deliberately registered the disputed domain names.
As regards the use in bad faith of the disputed domain names, the Panel finds that the fact that they resolved to a website aimed to phishing activities, a very common situation especially in the field of banking services, amounts to bad faith. The fact that the disputed domain names are currently inactive does not prevent a finding of bad faith.
The Panel finds that the Complainants have presented evidence to satisfy their burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that: the disputed domain names
Edoardo Fano
Sole Panelist
Date: October 27, 2021