The Complainant is Banca Monte dei Paschi di Siena S.p.A., Italy, represented by Rapisardi Intellectual Property, Italy.
The Respondent is Ciro Rea, Italy. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2020. On July 22, 2020, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 24, 2020, the Registry 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 August 10, 2020, providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 11, 2020. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”). In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2020. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was September 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2020. The Center appointed Edoardo Fano as the sole panelist in this matter on October 8, 2020. 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 ADR Rules, Paragraph B(5). The language of the proceeding is English, being the language of the Registration Agreement, as per Paragraph A(3)(a) of the ADR Rules. 4. Factual Background The Complainant is Banca Monte dei Paschi di Siena S.p.A., the fourth largest Italian commercial and retail bank, owning several trademark registrations for MONTE PASCHI as well as other trademark registrations including the wording MONTE DEI PASCHI DI SIENA, among which are the following: - Italian Trademark Registration No. 0000914821 for MONTE PASCHI, registered on October 27, 2003; - Italian Trademark Registration No. 0000814005 for MONTE DEI PASCHI DI SIENA DAL 1472, registered on May 18, 2000; and - European Union Trade Mark Registration No. 002044675 for MONTE DEI PASCHI DI SIENA DAL 1472 and device, registered on February 15, 2002. The Complainant operates on the Internet at several websites, among which “www.montepaschi.com”, “www.montedeipaschidisiena.com”, and “www.montedeipaschidisiena.it”. The Complainant provided evidence in support of the above. The disputed domain name The Complainant states that the disputed domain name Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademarks within the disputed domain name. The Complainant asserts that the Respondent is not making any lawful use of the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark MONTE PASCHI and the ones including the wording MONTE DEI PASCHI DI SIENA are distinctive and very well known. Although the disputed domain name is not used, the Complainant contends that the only purpose for the Respondent to register the disputed domain name would be to resell it to the Complainant, or to a competitor of the Complainant, for a much higher price or to disrupt the Complainant’s business and reputation, which therefore qualifies as bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following: (i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or Community law and; either (ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or (iii) that the disputed domain name has been registered or is being used in bad faith. (i) Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law The Panel finds that the Complainant is the owner of the registered trademarks MONTE PASCHI as well as of the registered trademarks including the wording MONTE DEI PASCHI DI SIENA and that the disputed domain name It is also well established in decisions under the ADR Rules that the country code Top-Level Domain “.eu” is typically ignored when assessing the similarity between a trademark and a domain name. The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to Paragraph B(11)(d)(1)(i) of the ADR Rules. (ii) Rights or Legitimate Interests The Respondent has failed to file a response. The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that it has no relationship or association with the Respondent, and has not authorized the Respondent to use or register in a domain name the trademark MONTE PASCHI and the trademarks including the wording MONTE DEI PASCHI DI SIENA, and that the Respondent is not making a lawful use of the disputed domain name. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. The Panel could not find any evidence by referring to the examples listed in Paragraph B(11)(e) of the ADR Rules that (i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or has made demonstrable preparations to do so; (ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that (iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or Community law. The Panel therefore finds that Paragraph B(11)(d)(1)(ii) of the ADR Rules has been satisfied. (iii) Registered or Used in Bad Faith According to Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (ii) lack of rights or legitimate interests and (iii) registration or use in bad faith are alternative requirements. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name and therefore there is no need to consider also the bad faith element. In any case, the Panel finds that the nature of the disputed domain name, and the fact that it has been passively held by the Respondent, creates a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, and is evidence of bad faith, pursuant to Paragraph B(11)(d)(1)(iii) of the ADR Rules. 7. Decision For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name Edoardo Fano 1 The Complainant sought the transfer of the disputed domain name. As the Complainant is located in Italy, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002. Therefore, the Complainant is entitled to request the transfer of the disputed domain name.
Sole Panelist
Date: October 20, 2020
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