ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Banca Ifis S.p.A. v. Super Privacy Service LTD c/o Dynadot / tanyeli tekin Case No. D2022-2392 1. The Parties The Complainant is Banca Ifis S.p.A., Italy, represented by GriffeShield S.r.l., Italy. The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / tanyeli tekin, Türkiye. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2022. On July 1, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 2, 2022, 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 4, 2022, 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 amended Complaint on July 5, 2022. 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 July 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 27, 2022. The Center appointed Marilena Comanescu as the sole panelist in this matter on August 1, 2022. 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. page 2 4. Factual Background The Complainant, founded in 1983, is an Italian credit institute that offers banking services for companies, professionals and individuals and specializes in the management of credits. The Complainant is active in Europe and is listed on the Milan Stock Exchange (Star management) since 2003. The Complainant owns trademark registrations for IFIS and IFIS FINANCE such as the following: - the European Union Trademark Registration No. 003559127 for the word IFIS, filed on December 19, 2003, and registered on November 3, 2005, for services in International Class 36; and - the European UnionTrademark Registration No. 018196474 for the mark with device IFISFINANCE, filed on February 13, 2020, and registered on May 27, 2020, for goods and services in International Classes 9, 35, 36, 37, 38, 39, 40, 41, 42 and 43. The Complainant owns various domain names including the IFIS mark, such as , and . The disputed domain name was registered on February 13, 2020, and, at the time of filing the Complaint, it was offered for public sale on a domain registrar website. The Complainant sent a cease-and-desist letter to the Respondent on April 14, 2022, which remained unaswered. Also, the Complainant claims that its representative made an offer to buy the disputed domain name via Dan.com and the price of the disputed domain name increased to the amount of USD 75,000. 5. Parties' Contentions A. Complainant The Complainant contends that the disputed domain name is identical and confusingly similar to its bank name and trademarks IFIS and IFISFINANCE, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith knowing the Complainant's trademark and business. The Complainant requests the transfer of the disputed domain name to it. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. page 3 The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Panel finds that the Complainant holds rights in the trademarks IFIS and IFISFINANCE. The disputed domain name reproduces the Complainant's trademark IFISFINANCE exactly and incorporates the Complainant's mark IFIS in its entirety. Further, it is well established in decisions under the UDRP that the generic Top-Level Domain ("gTLD") (e.g., ".com", ".info", ".one") may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Given the above, the Panel finds that the disputed domain name is identical to the Complainant's trademark IFISFINANCE and confusingly similar to the Complainant's trademark IFIS, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use its marks IFIS and IFISFINANCE, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services. Under the Policy, "where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element". See section 2.1 of the WIPO Overview 3.0. The Respondent has not replied to the Complainant's contentions and has not come forward with relevant evidence to rebut the Complainant's prima facie case. There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name. In fact, at the time of filing the Complaint the disputed domain name resolved to a parking website were it was offered for public sale. Although the practice such of registering a domain name for subsequent resale can be a legitimate activity, factors such the nature of the domain name and the distinctiveness of the trademark at issue are one of the relevant factors in assessing the good faith registration and use of the respective domain name. In this case, the disputed domain name reproduces exactly the Complainant's distinctive trademark IFISFINANCE and incorporates the Complainant's trademark IFIS in its entirety, and therefore such use of the disputed domain name cannot qualify as an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent's rights or legitimate interests in the disputed domain name, nor an activity from which rights or legitimate interests could arise. Furthermore, and without prejudice to the above, the nature of the disputed domain name, identical to the Complainant's trademark IFISFINANCE and which incorporates the Complainant's trademark IFIS in its entirety together with the term "finance" (related to the Complainant's area of business), carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. page 4 For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant holds trademark rights in IFIS trademark since at least 2005. The disputed domain name was registered in 2020 and reproduces exactly the Complainant's distinctive IFISFINANCE trademark and incorporates the Complainant's mark IFIS in its entirety. From the above and the available record, the Panel finds that the disputed domain name was registered by the Respondent in bad faith, with knowledge of the Complainant, its activities and targeting its trademarks. At the time of filing the Complaint, the disputed domain name was redirected on a third party website offering the domain name for sale. Such use can be considered as passive holding. From the inception of the UDRP, panels have found that the non-use of a domain name (including a blank or "coming soon" or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the complainant's mark and the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good faith use. See section 3.3 of the WIPO Overview 3.0. In the present matter, according to the Complainant's allegations unrebutted by the Respondent, the disputed domain name was offered for public sale and further the amount was increased to USD 75,000. The Panel finds that this amount likely exceeds the out-of-pocket costs directly related to the disputed domain name. Aditionally, the Respondent has been the subject of adverse decision in at least one another UDRP proceedings1. See Sennheiser electronic GmbH & Co. KG. v. tanyeli tekin, WIPO Case No. D2021-3550. The Respondent did not put forward any arguments in its favor in this proceeding, nor replied to Complinant's cease-and-desist letter. For all the above reasons, the Panel finds that the Respondent registered and is using the inherently misleading disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 be transferred to the Complainant. /Marilena Comanescu/ Marilena Comanescu Sole Panelist Date: August 10, 2022 1 See section 4.8 of the WIPO Overview 3.0 regarding Panel's powers to conduct limited searches.
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