ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Italo - Nuovo Trasporto Viaggiatori S.p.A. v. Mike Fuller Case No. D2025-1563 1. The Parties The Complainant is Italo - Nuovo Trasporto Viaggiatori S.p.A., Italy, represented by GriffeShield S.r.l., Italy. The Respondent is Mike Fuller, United States of America (“United States”), represented by Orrick, Herrington & Sutcliffe, LLP, United States. 2. The Domain Names and Registrar The disputed domain names , , , , and (each a “Disputed Domain Name” and together the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2025. On April 17, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 17, 2025, 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 (Registration Private, Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2025, 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 April 30, 2025. 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 May 2, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2025. On May 14, 2025, the Respondent asked for a 4-day automatic extension under paragraph 5(b) of the Rules. The due date for Response was then updated to May 26, 2025. The Response was filed with the Center on May 23, 2025.
page 2 The Center appointed Nick J. Gardner, Angelica Lodigiani, and W. Scott Blackmer as panelists in this matter on June 17, 2025. The Panel finds that it was properly constituted. Each member of 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 was incorporated in 2006. It is Italy’s first private high-speed rail operator and operates under the brand .ITALO. The Complainant offers 120 daily trips through a network of 58 stations and a team of over 1,400 employees. By 2024, the Complainant had served over 150 million passengers. The Complainant is the owner of a number of figurative trademark registrations for the sign .ITALO (the “.ITALO trademark”), including the following: − the European Union trademark .ITALO (figurative) with registration No. 007066699, registered on March 18, 2009 for goods and services in International Classes 16, 39, 42, and 43; and − the Italian trademark .ITALO (figurative) with registration No. 0001350123, registered on September 29, 2010 for goods and services in International Classes 16, 39, 42, and 43. The Complainant is also the owner of the domain name , which was registered on September 13, 2010 and resolves to its official website. The Respondent operates the website at the domain name , where he offers for sale train tickets of the Italian rail company “Trenitalia”, which is the Complainant’s main competitor, and of other European rail transportation companies. According to the information on the Respondent’s website, its business was launched in 2004 and has offices in Australia, Canada, the United Kingdom and the United States, and offers tickets for more than 80,000 high-speed and regional train routes in Europe, including Eurostar, Frecciarossa, Frecciargento, Frecciabianca InterCity & Eurocity, TGV, InterCity Express, Elipsos, Lyria, and Eurail & Interrail Passes. The Disputed Domain Names , , were each registered on January 3, 2010, the Disputed Domain Name was registered on June 16, 2011, and the Disputed Domain Name was registered on June 29, 2018. The Disputed Domain Name does not resolve to an active webpage. The other Disputed Domain Names all resolve to parking webpages of the Registrar. Those pages contain links to third party sites typically with rail or travel related content. This is not the first dispute under the Policy between the Parties. In 2022, they were involved in the proceeding in Italo - Nuovo Trasporto Viaggiatori S.p.A. v. Mike Fullerh, WIPO Case No. D2022-5026 (the “First Prior Proceeding”), in which the Complainant prevailed and obtained the transfer of the domain name , which now redirects to the Complainant’s official website. In 2024, they were involved in the proceeding in Italo - Nuovo Trasporto Viaggiatori S.p.A. v. Mike Fullerh, WIPO Case No. D2024-5225 (the “Second Prior Proceeding”), in which the Complainant again prevailed and obtained the transfer of the domain names and . Those domain names appear to still resolve to a landing page provided by the Registrar. The Respondent filed a response in the First Prior Proceeding but not in the Second Prior Proceeding. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Names.
page 3 The Complainant submits that the Disputed Domain Names are confusingly similar to its .ITALO trademark, because they incorporate it with the addition of the dictionary words “pass”, “rail”, “ticket”, “tickets”, and “tour”. According to the Complainant, the combination of its .ITALO trademark with these terms could improperly suggest to consumers that the Disputed Domain Names might be controlled or authorized by the Complainant. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, because it is not an authorized agent or distributor of the Complainant, and the Complainant has not authorized it to use the .ITALO trademark in the Disputed Domain Names or otherwise. The Complainant adds that the Respondent is not commonly known by the Disputed Domain Names and has no relevant trademark rights. According to the Complainant, the Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services and is not making any noncommercial or fair use of them. The Complainant contends that the Disputed Domain Names were registered and are being used in bad faith. According to the Complainant, it is unlikely that the Respondent didn’t know about the Complainant when registering the Disputed Domain Names, considering its business selling train tickets for the major Italian rail company Trenitalia, which is the Complainant’s main competitor. The Complainant submits that the Disputed Domain Names are not being actively used, but if the Respondent starts using them, that use would be commercial and would be detrimental to the Complainant’s business. The Complainant refers to the principles in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as applicable. It also says the linking of the Disputed Domain Names to parking pages containing Pay-Per-Click (“PPC”) links to third party websites is indicative of registration and use in bad faith. B. Respondent The following is a summary of the Respondent’s contentions in the Response. None of the Disputed Domain Names is identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent points out that the Complainant’s Annex 5 contains many trademarks that are irrelevant. It says that the Complainant does not have any trademarks for the term ITALO. Of the asserted trademarks that actually incorporate the term “ITALO”, all except one are logo marks incorporating “ITALO” in a stylized format, usually preceded by a “dot” and combined with a stylized device resembling a running rabbit. The Respondent says “Without the design elements, ‘Italo’ is merely a common dictionary term meaning ‘of or relating to Italy’ and ‘It is used descriptively in the Complainant’s marks to identify the location where the Complainant’s rail services are offered’”. The Respondent goes on to say that “Each of the Disputed Domains adds an additional word which renders the domain different from the claimed marks in appearance, sound, and overall impression. Complainant therefore cannot show that Respondent’s use of that term is likely to lead to a substantial level of confusion”. The Respondent says he possesses rights or legitimate interests in respect of the Disputed Domain Names. In this regard the Respondent describes his business and says that he or entities controlled by him own various domain names which are used for the purposes of this business and the Respondent defensively registered the Disputed Domain Names to protect these domains against potential cybersquatters. The Respondent says as follows “First, Respondent registered the domain names , , and corresponding to the ItaliaRail, ItaliaPass, and ItaliaTours brands. See Annex 6. The registration of these related domain names is evidence of Respondent’s legitimate interests in the Disputed Domain Names , , and only differ from the primary domain names associated with the Italia Entities’ brands by two letters, substituting one generic variant ‘italo’ for another (‘italia’). and combine the variant ‘italo’
page 4 with the generic term for the product ItaliaRail sells: train tickets”. The Respondent also relies upon the fact that his business has registered ITALIARAIL (United States Reg. No. 5629876) and a stylized logo for ITALIAPASS (United States Reg. No. 5629875). He says that these marks, both registered before this dispute, only differ from the Disputed Domain Names and by a few letters. The Respondent says that panels have recognized that a respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element. The Respondent says the Disputed Domain Names were not registered and are not being used in bad faith. He says that none of the factors listed under Policy paragraph 4(b) are applicable. The Respondent says it has passively held the Disputed Domain names for many years and there are material differences between the relevant facts in the present case and those applicable in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Specifically he says as follows: “1. Unlike in Telstra, where the panel found that ‘Complainant’s trademark [an ‘invented word’] has a strong reputation and is widely known’, Complainant has not asserted trademark registrations in the word ‘Italo’ alone and has not proven distinctiveness. Nor can it; as discussed below, ‘Italo’ is merely a common dictionary term. 2. In Telstra, ‘the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name’. Here, however, Respondent has submitted a response describing and evidencing its good faith use of the Disputed Domain Names, including his ItaliaRail business, Respondent and InterRail’s registration of related trademarks and domain names, and Respondent’s defensive registration of the Disputed Domains.… 3. In Telstra, ‘the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement’. Here, however, Complainant has not shown that Respondent used false contact details……. 4. As discussed above, Respondent has provided evidence of its good faith registration. Passively holding domain names similar to Respondent’s own domains to prevent cybersquatting is a good faith use.” The Respondent acknowledges that UDRP panels have declined to adopt the defense of laches under the Policy, but says the Complainant’s significant 15-year delay should be taken into account in considering whether the Complainant has met its burden of proof under the third element, including when considering any evidence submitted by the Complainant that is solely focused on each party’s activities today rather than at the time of registration of the Disputed Domain Names. 6. Discussion and Findings Under the Policy, the Complainant is required to prove in respect of each Disputed Domain Name on the balance of probabilities that: - the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and - the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns figurative registered trademarks for .ITALO (see above). The Respondent alleges that term “italo” is a simply a descriptive term meaning “Italian” and each Disputed Domain Name combines that term with a non-distinctive generic word and that this fact should detract from a finding of confusing similarity on the basis that the Disputed Domain Names do not inherently evoke the Complainant and would not confuse visitors. However, section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions,
Third Edition (“WIPO Overview 3.0”) makes clear that the first element
page 5 functions primarily as a standing/threshold requirement. The test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and each Disputed Domain Name; it is not the same as a likelihood of confusion test as under (national) trademark law. Where at least a dominant feature of the relevant mark is recognisable in a Disputed Domain Name, it will normally be considered confusingly similar to that mark for purposes of UDRP standing. Issues such as the composition of the Complainant’s mark and the nature of each Disputed Domain Name are decided under the second and third elements. Similarity between a domain name and a figurative mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v Jacob Foundation, WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v Nett Corp, WIPO Case No. D2001-0031. In the present case the term “italo” forms a prominent part of each of the .ITALO trademarks and each Disputed Domain Name includes that term. It is established that the addition of a descriptive term (such as here “ticket”, “tickets”, “pass”, “rail” and “tours”) to the Disputed Domain Names has little, if any, effect on a determination of legal identity between the Disputed Domain Names and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189). Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name: (i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to 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, even if the respondent has acquired no trade mark or service mark rights; 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 or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the .ITALO trademark. The Complainant has prior rights in the .ITALO trademark which precede the Respondents’ registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). The Respondent’s case is that he has a legitimate interest in each of the Disputed Domain Names because they are similar to the names of businesses in which he has an interest that include the name “Italia” (which of course is simply a country name). In this regard the Respondent points out that he registered the domain names , , and corresponding to the ItaliaRail, ItaliaPass, and ItaliaTours brands used by his business. He also says that InterRail, LLC, of which the Respondent is sole manager, holds a U.S trademark registration for the word mark ITALIARAIL (application and registration in 2018, long after the dates of registration of the Disputed Domain Names – other than ) and a registration for a figurative mark with the word ITALIAPASS (ditto). Note that these are both registered on the Supplemental Register. The Panel regards the claim to have registered the Disputed Domain Names as defensive registrations with scepticism — the Disputed Domain Names more closely resemble the Complainant’s marks (in that they all contain “Italo” rather than “Italia”). The Panel notes that in the First Prior Proceeding the domain names at issue also all contained the word “italo” and were all registered on
page 6 January 3, 2010. The Respondent’s case in that proceeding included a claim not to have known of the Complainant at the time he registered the domain names at issue. The Panel did not accept that argument and found that on the balance of probabilities the Respondent was aware of the Complainant. The present Panel notes that the Respondent no longer maintains a claim of lack of knowledge of the Complainant at the time he registered any of the Disputed Domain Names. The Panel does not consider that the term “italo” has a general meaning corresponding to “italian” or “italia” – see further below. The Panel thinks it more likely than not that the Respondent’s primary reason for registering the Disputed Domain Names was because they included a term, “italo”, which in effect corresponded to the Complainant’s trademark. Accordingly the Panel does not accept that the Respondent has established a legitimate interest in the Disputed Domain Names. For the above reasons, the Panel concludes that the Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises: (i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. The Respondent asserts that “Italo” is an ordinary word meaning “Italian”. This was an issue that was discussed at length in the First Prior Proceeding where the panel stated as follows: “The Panel’s view, informed by the Italian-speaking panelist, is that it is highly unlikely that Italian speakers would understand ‘italo treno’ as meaning ‘Italian train’. The Respondent has provided no evidence that ‘italo’ is remotely synonymous with ‘italiano’ and/or that it is a natural descriptive-type term for the Respondent to have selected for the Disputed Domain Name. For example, the Respondent has not submitted any English-Italian translation of ‘Italian train’ as ‘italo treno’. In the absence of convincing evidence from the Respondent in support of its contention, the Panel remains of the view that, in Italian, ‘italo’ is a somewhat rare adjective that the Respondent was unlikely to have chosen independently of the Complainant in this context” and “As to the Respondent’s assertion that it selected the disputed domain name based on its alleged descriptive meaning of ‘Italian train’, in PO1 the Panel set out its understanding, based on the views of the Italian- speaking panelist, that, while in both English and Italian the word ‘italo-‘ means ‘Italian’, it generally functions as a prefix in a compound word used in limited instances, usually coupled with another adjective referring to another country, such as say ‘italo-francese’ in Italian or ‘Italo-Austrian’ in English”. The Respondent nevertheless reiterates this argument in the present proceeding and the Panel (which includes the same Italian speaking panelist as in the First Prior Proceeding) again rejects it. The Respondent has annexed a list of dictionary definitions which he says support his argument that “italo” means (in US English) “Italian” but those definitions are in the opinion of the Panel entirely consistent with the view of the panel in the First Prior Proceeding. The Respondent’s evidence includes the following. “www.dictionary.cambridge.org” says italo means “of or connected with Italy” and gives the example of “an Italo-German production”. “www.dictionary .com” says italo means “indicating Italy or Italian” and gives the
page 7 examples of “Italo-German” and “Italophobia”. “www.collinsdictionary.com” says italo means “Italian” and gives the example of “Italo-American”. “www.wordreference.com” says italo means “Italian” and gives the example of Italo-Americano (which it says is in Italian) and “Italian-American” (which it says is in English). Accordingly the Panel does not accept that the Respondent registered the Disputed Domain Names because they included a term which had a general meaning of “Italian”. The Panel considers it more likely than not that the Respondent included the term “italo” in each of the Disputed Domain Names because of its connection with the Complainant. Each of the Disputed Domain Names , , , and resolves to a parking page with click through links. The Respondent says “I do not have any control over the links that appear on those parked pages”. That statement seems to the Panel to be disingenuous. Even if the links in question are algorithmically generated by the system the Registrar provides for parking domain names, and not “selected” by the Respondent, it was the Respondent’s choice to park the Disputed Domain Names in this manner and he cannot simply avoid responsibility for the resulting links by saying it is nothing to do with him; he could readily seek that they be disabled if he were so inclined. The Panel concludes that Policy paragraph 4(b)(iv) applies as these Disputed Domain Names are likely to attract traffic because of confusion with the Complainant’s mark. The Panel infers that some consumers will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant and presumably either the Respondent or the Registrar derives commercial gain as a result. It is well established that where a domain name is used to generate revenue in respect of “click-through” traffic, and that traffic has been attracted because of the name’s association with the complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. See also WIPO Overview 3.0 section 3.5: “Can third-party generated material ‘automatically’ appearing on the website associated with a domain name form a basis for finding bad faith? Particularly with respect to ‘automatically’ generated Pay-Per-Click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.” Accordingly, the Panel finds the Respondent has registered and used the Disputed Domain Names , , , and in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled in respect of those Disputed Domain Names. The position is different with regard to the Disputed Domain Name as there is no evidence it has ever been linked to a parking page with click through links. It does not at present resolve to an active website. The Complainant’s evidence shows that it has in the past redirected to a webpage provided by HugeDomains where it was offered for sale, although the evidence does not show what price it was being offered for. In the absence of any evidence from the Respondent explaining this activity the Panel would infer that it is more likely than not that it was subject to being offered for sale at a price which was in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name. To the extent that would be the case, it falls within paragraph 4(b) (i) of the Policy. Accordingly, the Panel finds the Respondent has registered and used the Disputed Domain Name in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled in respect of that domain name.
page 8 Further even absent the above findings the Panel agrees with the Complainant that the doctrine of passive holding is applicable – see, WIPO Overview 3.0, section 3.3. “Passive holding” can itself amount to bad faith registration and use where the holding involves a domain name deliberately chosen because of its association with the complainant. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Westdev Limited v. Private Data, WIPO Case No. D2007-1903; Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; and Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. The Complainant’s .ITALO trademark is distinctive and has a significant reputation. The Respondent has failed to show any actual or contemplated good-faith use despite years of holding multiple domain names which include the term “italo” and has engaged in a pattern of registering multiple domain names including the term “italo”. The Panel regards the Respondent’s explanations as implausible particularly given that the Respondent has business names and Supplemental Register trademarks which include a materially different word (“italia”). There is no evidence to suggest the Respondent has registered defensive domain names including the word “italia”. Instead the Respondent keeps registering domain names more similar to the Complainant’s established mark. This suggests to the Panel an intent to create confusion and exploit the Complainant’s reputation, as prior panels have concluded. Finally, as regards delay, the Respondent rightly says that the UDRP panels have declined to adopt concepts such as laches or its equivalent. Noting section 4.17 of WIPO Overview 3.0, the Respondent has not sought to demonstrate detrimental reliance on the delay and the Panel does not consider that the delay has otherwise impeded the Complainant’s case. For the above reasons, the Panel considers that the Complainant has established the third element of paragraph 4(a) of the Policy in respect of each of the Disputed Domain Names. 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 Names , , , and be transferred to the Complainant /Nick J. Gardner/ Nick J. Gardner Presiding Panelist /Angelica Lodigiani/ Angelica Lodigiani Panelist /W. Scott Blackmer / W. Scott Blackmer Panelist Date: July 1, 2025
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