The Complainant is Europa Investimenti S.p.A., Italy, represented by LEGANCE Avvocati Associati, Italy.
The Respondent is Bob Juggins, Europa Investimenti, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2020. On November 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 4, 2020, 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 November 25, 2020 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 November 27, 2020. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (th “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 November 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2021. The Center appointed John Swinson as the sole panelist in this matter on January 21, 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 Europa Investimenti, an institutional investment company incorporated in Italy. According to the Complaint, the Complainant was founded in 1988 and has come to be recognised as a leading firm in its sector. According to the Complaint, the Complainant has operated under the name “Europa Investimenti” since it was founded in 1988. The Complainant owns Italian registered trade mark no. 1510401 for which was registered on September 26, 2012 (the “Trade Mark”). The Complainant also owns a number of domain names incorporating the trade mark which were registered in 2007, including The registrant name for the Disputed Domain Name is listed as Bob Juggins, an individual of the United Kingdom. The registrant organisation for the Disputed Domain Name is listed as Europa Investimenti. No Response was received from the Respondent and therefore little additional information is known about the Respondent. The Disputed Domain Name was registered on October 7, 2013. The Disputed Domain Name resolves to a website that encourages Internet users not to work with the Complainant “without undertaking very detailed due diligence” and suggests that users contact various parties for their opinion of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions. Identical or Confusingly Similar The Disputed Domain Name incorporates the Trade Mark in its entirety. The use of the “.co” Top-Level Domain (“TDL”) increases the likelihood of confusion with the Complainant’s The Complainant has not granted the Respondent any rights in the Trade Mark and there is no identifiable connection between the Respondent and the Trade Mark or the Complainant. The Complainant performed a worldwide trade mark search and no trade marks have been registered in the name of the Respondent. The email address displayed on the website at the Disputed Domain Name appears to have only been used in relation to the Disputed Domain Name. The Respondent did not reply to a cease and desist letter sent by the Complainant. The Respondent registered the Disputed Domain Name which incorporates the Trade Mark in order to intercept the Complainant’s clients, thereby exploiting the Complainant’s Trade Mark to denigrate the Complainant’s reputation. Registered and Used in Bad Faith The Respondent registered the Disputed Domain Name in 2013. The Complainant registered the Trade Mark in 2012, registered various domain names incorporating the Trade Mark in 2007 and had rights in a common law trade mark for the name EUROPA INVESTIMENTI since 1988. The Respondent ought to have been aware of the Trade Mark’s reputation at the time the Disputed Domain Name was registered. The Respondent also provided false information when registering the Disputed Domain Name by listing the registrant organization as “Europa Investimenti”. The Respondent registered the Disputed Domain Name, thereby exploiting the Trade Mark, to tarnish the reputation of the Complainant by attempting to divert Internet users seeking to find the Complainant’s website. The Respondent also failed to respond to the Complainant’s cease and desist letter. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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. The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s failure to file a Response. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The Disputed Domain Name incorporates the textual elements of the Trade Mark in its entirety, with no additional terms. Where a domain name incorporates the entirety of a trade mark, it will normally be considered confusingly similar to the mark (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The figurative elements of the Trade Mark are to be largely disregarded for purposes of assessing identity or confusing similarity under the first element (see section 1.10 of the WIPO Overview 3.0). The Complainant is therefore successful on the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests. The Panel considers the Complainant has made out an unrebutted prima facie case based on the following Complainant’s contentions: - The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name. - There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name. While the registrant organisation of the Disputed Domain Name (according to the WhoIs) is listed as “Europa Investimenti”, a registrant can enter any name/identity when registering a domain name and the veracity of such entry is often not verified by the registrar. - The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. - The Respondent registered the Disputed Domain Name, which is identical to the Trade Mark, in order to tarnish the Complainant’s reputation. The Respondent has used the website at the Disputed Domain Name to criticise the Complainant. The website encourages Internet users not to work with the Complainant “without undertaking very detailed due diligence” and suggests users contact various parties for their opinion of the Complainant. The fair use of a domain name for noncommercial free speech (including criticism) may support a respondent’s claim to legitimate use of a domain name. For a finding of fair use to be made under paragraph 4(c)(iii) of the Policy, the respondent’s criticism must be genuine and noncommercial and such use must not be a pretext for cybersquatting, commercial activity or tarnishment (see section 2.6 of the WIPO Overview 3.0). The Complainant has made out a prima facie case that this could be an instance of cybersquatting or tarnishment. The Respondent had the opportunity to respond and demonstrate that it was using the Disputed Domain Name for a legitimate criticism website but failed to do so. Without more, the Complainant’s prima facie case is not rebutted. The Panel would add that it expresses no opinion on the views expressed by the Respondent (see Zvērināta advokāta Romualda Vonsoviča birojs, Romualds Vonsovičs v. Roberts Sulcs, WIPO Case No. D2020‑2165). In light of the above, the Complainant is successful on the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. Registration in bad faith At the time the Respondent registered the Disputed Domain Name in 2013, the Complainant had registered the Trade Mark, owned various domain names incorporating the Trade Mark and, according to the unchallenged evidence, had used the Trade Mark in connection with its business since 1988. Accordingly, the Panel considers that the Respondent either knew, or should have known, that registration of the Disputed Domain Name would be identical or confusingly similar to the Complainant’s Trade Mark. The Respondent’s subsequent use of the Disputed Domain Name to criticise the Complainant affirms that the Respondent was in fact aware of the Trade Mark at the time the Respondent registered the Disputed Domain Name. The fact that the Respondent chose the “.co” TLD and appears to be based in London (and not Colombia) further supports the Panel’s finding. As explained in section 3.2.2 of WIPO Overview 3.0, “the business of cybersquatting often seeks to exploit the global reach of the Internet, and may in fact purposefully target a location other than that in which the respondent may be ‘present’.” In addition, by listing the registrant organisation for the Disputed Domain Name as “Europa Investimenti”, the Respondent appears to have provided false information to the Registrar. The Complainant contends that it is not affiliated with and does not endorse the Respondent. Given the Respondent failed to submit a Response, this position is not contested. Based on these factors, the Panel is satisfied that the Disputed Domain Name was registered in bad faith. Use in bad faith As outlined above, the website at the Disputed Domain Name encourages Internet users not to work with the Complainant “without undertaking very detailed due diligence” and suggests that users contact various parties for their opinion of the Complainant. This, together with the fact that the Disputed Domain Name incorporates the Trade Mark in its entirety with no additional terms, demonstrates that the Respondent has sought to divert Internet users to the website at the Disputed Domain Name based on the reputation of the Trade Mark in the hope of diminishing the Complainant in the eyes of those users. The Disputed Domain Name would “catch by surprise” visitors intending to reach the Complainant’s website (see Compagnie Generale des Matieres Nucleaires v. Greenpeace International, WIPO Case No. D2001‑0376) and by electing not to submit a Response, the Respondent has failed to provide any justification or valid basis for its use of the Disputed Domain Name. In light of the above, the Complaint is successful on 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 John Swinson
Sole Panelist
Date: February 12, 2021
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