The Complainant is Esselunga S.p.A., Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Andrei Zaganescu, Romania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2020. On October 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing the underlying registrant’s information. On October 20, 2020 the Center invited the Complainant to amend its complaint. The Complainant submitted an amendment to the Complaint on October 23, 2020. The Center sent an email communication to the parties in English and Romanian on October 20, 2020 regarding the language of the proceeding, as the Complaint had been submitted in English and the language of the registration agreement for the Disputed Domain Name is Romanian. The Complainant submitted a request for English to be the language of the proceedings together with the Complaint, on October 7, 2020. The Complainant also sent an additional email communication to the Center on October 21, 2020 requesting the proceedings to be conducted in English. The Respondent subsequently sent an email communication to the Center on October 23, 2020 requesting that the proceedings be conducted in Romanian. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” o “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 in both Romanian and English, and the proceedings commenced on October 28, 2020. In accordance with the Rules, paragraph 5, the due date for the response was November 17, 2020. The Respondent submitted a response in Romanian on November 16, 2020. The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 30, 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 Rules, paragraph 7. 4. Factual Background The Complainant is an Italian retail store chain founded in 1957 and has now become one of the leading retail companies in Italy. The Complainant generated USD 7.8 billion in revenues from more than 150 stores in Italy. The Complainant is the owner of numerous trade mark registrations for the ESSELUNGA mark in various jurisdictions, including, inter alia, the Italian ESSELUNGA trade mark (Reg. No. 1290783) registered on March 12, 1980, the Italian figurative ESSELUNGA trade mark (Reg. No. 1480754) registered on April 9, 2002, and the figurative ESSELUNGA BIO trade mark (Reg. No. 3370202) registered on May 4, 2005 in the European Union. The Complainant also owns various domain names incorporating the ESSELUNGA trade mark, for example, The Respondent registered the Disputed Domain Name on December 5, 2018. The Disputed Domain Name currently resolves to a parking page. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) The Complainant requests that the language of proceedings be English. The Complainant, nor its representatives, understand Romanian. It would therefore, be quite burdensome and expensive for the Complainant to translate this Complaint with all its annexes. Moreover, requiring a Romanian translation of all documents would unnecessary delay this procedure, while one of its main advantages is its short timeframe. Moreover, the parking page to which the Disputed Domain Name resolves is entirely in English. (b) The Disputed Domain Name incorporates the Complainant’s ESSELUNGA trade mark in its entirety and is therefore identical to the Complainant’s ESSELUNGA trade mark. (c) The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its ESSELUNGA trade mark. The Respondent is not commonly known by the Disputed Domain Name. The Disputed Domain Name was registered to mislead Internet users, to tarnish the Complainant’s ESSELUNGA trade mark, and to prevent the Complainant from using its ESSELUNGA trade mark in a “.ro” domain name. The Disputed Domain Name reproduces the Complainant’s ESSELUNGA trade mark in its entirety, which suggests the Respondent has no rights or legitimate interests in the Disputed Domain Name. (d) The Disputed Domain Name contains the well-known ESSELUNGA trade mark in its entirety without the Complainant’s authorisation. The Disputed Domain Name was registered long after the registration of the Complainant’s ESSELUNGA trade mark and the Respondent must have been aware of the Complainant’s ESSELUNGA trade mark at the time of registration. The incorporation of a well-known trade mark in a domain name constitutes evidence of bad faith registration and use. Although the Disputed Domain Name is currently not in use, under the passive holding doctrine, the non-use of a domain name does not prevent a finding of bad faith. B. Respondent The Respondent’s primary contentions can be summarised as follows: (a) The Disputed Domain Name has not been used actively and it currently resolves to a page asking visitors to contact the registrant. (b) The Complainant’s ESSELUNGA trade mark is not a well-known trade mark, especially in Romania. (c) It has currently registered a bread manufacturing company in Romania under the name “Esselunga SRL”. (d) The Complainant’s registrations for the ESSELUNGA trade mark do not cover Class 43, which relates to the Respondent’s intended hotel and dining business. (e) “Esselunga” is not a fanciful word but can instead be found in certain languages of Latin origin, and therefore the word “Esselunga” constitutes a weak trade mark. (f) The parking page to which the Disputed Domain Name resolves does not contain any links to third party websites. (g) The Disputed Domain Name was registered by the Respondent in 2018 with the intention of carrying out a hotel and restaurant business. These business plans were halted due to the coronavirus pandemic, but are expected to resume in the future. (h) The Disputed Domain Name was available for purchase at all times and it is the Complainant’s own fault for failing to acquire it to protect its ESSELUNGA trade mark. (i) The Complaint filed constitutes an abuse of power as the Respondent cannot afford to defend its rights and interests against a company as large as the Complainant. The filing of the Complaint also constitutes a violation of free market rights, human rights and so forth. 6. Discussion and Findings 6.1 Language of Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In the present case, the registration agreement is in Romanian, and the Respondent is based in Romania. The Complainant has requested that English be the language of the proceedings for the following reasons: (a) the Complainant and its representatives are not able to understand Romanian. If the proceedings are conducted in Romanian, the Complainant would have to retain specialised translation services at a very high cost. Moreover, requiring the Complainant to translate the Complaint and its annexes into Romanian would cause unnecessary delay to the proceedings; (b) the webpage to which the Disputed Domain Name resolves is entirely in English; and (c) the Respondent has demonstrated in its email communication to the Center its ability to communicate in English. The Respondent’s first email communication to the Center on October 23, 2020 was submitted in both Romanian and English, but the subsequent formal response on November 16, 2020 was submitted in Romanian only. The Respondent has requested that Romanian be the language of the proceedings for the following reasons: (a) The webpage to which the Disputed Domain Name resolves is in Romanian when accessed from Romania; and (b) The inclusion of the English translation using Google Translate in the initial email communication to the Center does not mean the Respondent is able to communicate in English as it was done only as an act of courtesy. Previous UDRP panels have to take into account all relevant circumstances of the case and exercise their discretion to use a language other than that of the registration agreement in a fair and just manner. In the present case, the Panel accepts that the Complainant and its representatives are unable to communicate in Romanian, and that additional expenses will be incurred if the Complainant is required to submit documents in Romanian, which may also result in unnecessary delay to the proceedings. The Panel also notes that the Respondent’s first email communication to the Center on October 23, 2020 contained an English translation of the Romanian text, which suggests the likely possibility that the Respondent is conversant in English. The Panel is mindful of the duty to ensure the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Having considered the circumstances above, the Panel has accepted the Parties’ filings in their respective languages, and the Panel finds that both Parties have been given a fair opportunity to present their case and that the Respondent would not be prejudiced should the language of the proceeding be English. The Panel therefore determines that these administrative proceedings shall be conducted in English. 6.2 Substantive Issues Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (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 by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the ESSELUNGA trade mark, based on its various trade mark registrations. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the threshold for confusing similarity involves a reasoned but straightforward side-by-side comparison between the domain name and the textual components of the relevant trade mark. The Respondent’s argument that the word “Esselunga” is a common Latin term is largely irrelevant to this assessment. It is also well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the country-code Top-Level Domain extension (“ccTLD”) (“.ro” in this case) is generally disregarded. See section 1.11 of the WIPO Overview 3.0. In the present case, the Disputed Domain Name incorporates the Complainant’s ESSELUNGA trade mark in its entirety without any prefixes or suffixes. The Panel finds that the Disputed Domain Name is identical to the Complainant’s ESSELUNGA trade mark and, accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorised the Respondent to use its ESSELUNGA trade mark, and there is no relationship between the Complainant and the Respondent entitling the Respondent to use the ESSELUNGA trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Panel notes that the Respondent seeks to establish rights and legitimate interests in the Disputed Domain Name under paragraph 4(c)(i) of the Policy. According to section 2.2 of WIPO Overview 3.0, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required. In this regard, the Respondent claims that the Disputed Domain Name was registered with the intention of carrying out a hotel and restaurant business, and that these business plans were subsequently halted due to the coronavirus pandemic, but are expected to resume in the future. However, no evidence was provided by the Respondent to support these claims. The Panel notes that the Respondent also seeks to establish rights and legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) of the Policy. Section 2.3 of WIPO Overview 3.0 provides that a respondent does not have to acquire the corresponding trade mark or service mark rights to demonstrate it has been commonly known by the disputed domain name, but concrete evidence must be produced (Compagnie Gervais Danone v. Duxpoint and Alejandro Gomez,WIPO Case No. D2008-1799). The Respondent claims that it has been commonly known by the Disputed Domain Name because it has established a company in Romania called “Esselunga SRL” since 2008. However, no evidence was provided by the Respondent to support this argument. As the Disputed Domain Name resolves to a parking page, the Panel concurs with the Complainant that the Respondent’s use of the Disputed Domain Name is not in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Furthermore, the Respondent did not produce any evidence as to its demonstrable preparations to use the Disputed Domain Name since its registration. Furthermore, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0. In view of the above, the Panel finds that the Respondent has failed to show that its has rights or legitimate interests in the Disputed Domain Name, failing to rebut the Complainant’s prima facie case, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. The Complainant’s ESSELUNGA trade mark appears to be fairly well known. While the Respondent claims that no one in Romania has heard of the Complainant’s trade mark, it fails to provide any supporting evidence. Taking into account the general prevalence and ease of access to information available to users online, the Panel accepts the Complainant’s argument that it is likely that the Respondent would have been aware of the Complainant and its rights in the ESSELUNGA trade mark when registering the Disputed Domain Name, especially given that the Disputed Domain Name is identical to the Complainant’s trade mark. As such, the fact that the Disputed Domain Name incorporates the Complainant’s trade mark in its entirety creates a presumption of bad faith. While panels have consistenly found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding, panels will have to take into account the totality of the circumstances in each case and factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put. See section 3.3 of the WIPO Overview 3.0. Accordingly, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and used by the Respondent in bad faith: (i) the Respondent claims that the Disputed Domain Name was registered for its proposed business in Romania but provides no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; (ii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is identical to the Complainant’s ESSELUNGA trade mark, and that the Disputed Domain Name resolves to a parking page asking visitors to contact the Respondent; and (iii) any use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is operated by, associated with and/or endorsed by the Complainant, particularly given that the Disputed Domain Name is identical to the Complainant’s ESSELUNGA trade mark. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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 Gabriela Kennedy
Sole Panelist
Date: December 14, 2020
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