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Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar
Case No. D2006-0068
1. The Parties
The Complainant is Banca di Roma S.p.A., Rome, Italy, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Unasi Inc. a/k/a Domaincar, Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <bancadiroma.net> is registered with Iholdings.com,
d/b/a Dotregistrar.com, Vancouver, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2006, via email and on January 18, 2006, on hardcopy. On January 17, 2006, the Center transmitted by email to the registrar a request for verification in connection with the domain name at issue. On January 19, 2006, the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 28, 2006. 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2006.
The Center appointed Mr. Christian Schalk as the Sole Panelist in this matter on March 17, 2007. 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.
The Panel agrees with the Center’s assessment concerning the Complainant’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant
or the Respondent regarding further submissions, waivers or extensions of deadlines,
and the Panel has not found it necessary to request any further information
from the parties. The language of the proceedings is English.
4. Factual Background
The Complainant was founded on August 1, 1992, and is one of the top leading Italian companies in the field of finance. It has 1100 banking counters in Italy and 12 main offices, seven branches and seven representative branches throughout the world.
The Complainant is owner of a number of national and European community trademarks incorporating the words “Banca di Roma”, for instance,
- Italian trademark registration No. 891461 SPAZIO BANCA DI ROMA, application date: July 7, 1999, registration date: May 15, 2003, covering goods and services in class 36;
- Italian word and device trademark registration No. RM2003C001429 BANCA DI ROMA, application date: March 14, 2003, covering goods and services in classes 9, 16, 35, 36, 38 and 42;
- Italian trademark application No. RM2003C001430 BANCA DI ROMA, application date: March 14, 2003, covering goods and services in classes 9, 16, 35, 36, 38 and 42;
- European Community trademark registration No. 3348117 BANCA DI ROMA, application date: 12.09.2003, registration date: 10.01.2005, covering goods and services in classes 9, 16, 35, 36, 38 and 42;
- European Community word and device trademark registration No. 3349487 BANCA DI ROMA, application date: September 12, 2003, registration date: 18.03.2005, covering goods and services in classes 9, 16, 35, 36, 38 and 42;
The term “BANCA DI ROMA” has been continuously in use as the Complainant’s company name since 1992. Copies of press articles, brought before the Panel, show use of this term in the press and in other media.
The disputed domain name was registered by Unasi Inc. in Panama City, Panama on June 14, 2004. In accordance to the material brought before the Panel, this domain name was still owned by this entity on December 30, 2005. On January 19, 2006, the domain name was transferred to the Respondent. The previous owner and the Respondent have their residence under the same address. Their telephone and fax numbers and email addresses are identical.
A search carried out by the Panel revealed that more
than thirty complaints have been filed against the Respondent in the past which
were decided against him. (see e.g. Deutsche Telekom AG v. Unasi Management,
Inc. WIPO Case No. D2005-0423; Members
Equity PTY Limited v. Unasi Management, Inc, WIPO
case No. D2005-0383; Gianfranco Ferre’ S.p.A. v. Unasi Inc.,
WIPO Case No. D2005-0622; L’Oreal
Biotherm, Lancome Parfums et Bouteille & CIE v. Unasi Inc., WIPO
Case No. D2005-0623; Red Bull GmbH v. Unasi Management, Inc., WIPO
Case No. D2005-0304).
5. Parties’ Contentions
The Complainant alleges that the domain name at issue is virtually identical or at least confusingly similar with the BANCA DI ROMA trademarks.
The Complainant alleges further, that the Respondent has no rights and interests in the disputed domain name.
The Complainant argues that there is no evidence that the Respondent showed use, demonstrable preparation to use the domain name or a name corresponding to the domain name at issue in connection with a bona fide offering of goods or services before this procedure has started. In this context, the Complainant explains that the disputed domain name resolves to a portal or gateway for a number of websites incorporating sponsored links and offering inter alia financial services. The Complainant believes, that the Respondent has never been commonly known by the domain name at issue, nor did it do business under this domain name. The Complainant is also of the opinion that there is no evidence that the Respondent is making legitimate non-commercial or fair use of the domain name.
The Complainant alleges moreover, that the disputed domain name has been registered and is used in bad faith.
The Complainant argues that the Respondent must have been aware of the Complainant’s BANCA DI ROMA trademarks. The Complainant refers in this context to an earlier UDRP decision in which the Italian bank BANCA SELLA had been involved. The panel of that case found that the respondent could not have ignored this bank since it is famous in the field of banking services (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157). The Complainant cites also two other UDRP cases (Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163 and Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226) where the panel stated that the disputed domain name was so obviously connected with such well-known products that its very use by someone with no connection with the products suggests opportunistic bad faith. The panel of the Christian Dior case also found that in absence of contrary evidence, the respondent knew or should have known of the complainant’s trademark and services at the time of registration of the disputed domain name. The Complainant argues further that even in an UDRP case where a less famous trademark was involved than VEUVE CLIQUOT or CHRISTIAN DIOR, the panel decided in the same way (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).
The Complainant believes furthermore, that the Respondent frequently infringes trademarks of third parties since the disputed domain name was linked to the website “www.welsfargobanking.com”. Also the domain name <welsfargobanking.com> is owned by the Respondent. It is identical with ‘Wells Fargo’, which is the company name of one of the largest banks in the U.S.A.
The Complainant contends, that the domain name at issue is also used in bad faith. The Complainant argues that the Respondent capitalizes on the fame of the Complainant’s name BANCA DI ROMA to attract users and then redirect them to a website offering sponsored links to a number of websites, including sites of the Complainant’s competitors, offering financial and related services. In this context the Complainant explains that so called “sponsored links” are links for which the owner of the linked website pays a fee for each contract. This leads the Complainant to the conclusion, that the use the Respondent makes of the disputed domain name is commercial.
Furthermore, the Complainant believes that such use of the domain name at issue has the effect to confuse internet users since due to the redirection internet users could believe that the banking services offered on the linked websites are somehow related to the ones offered by the Complainant which operates in the same business field. The Complainant explains that this has a double negative effect. First, the Respondent capitalizes the fame of the Complainant’s trademarks and second, the financial services offered through the portal accessible via the domain name at issue do not have the same high quality standard. Moreover, the Complainant has no control on such services. Some of the business activities mentioned on the homepage are of a rather questionable nature. Even if the links were not sponsored or even if the sponsorship fee would be for the benefit rather of the Internet service provider than to the Respondent, such use of the disputed domain name is detrimental to the Complainant’s interests. Such behavior has been regarded as bad faith use in previous UDRP cases.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(A) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(B) The domain name holder has no rights or legitimate interests in respect of the domain name; and
(C) The domain name has been registered and is being used in bad faith.
It is essential to dispute resolution that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
Since the Respondent has not contested the allegations
of the Complainant, the Panel shall decide on the basis of the Complainant’s
submissions, and all inferences that can reasonably be drawn therefrom (See
Bayerische Motorenwerke AG v. Dariusz Herman, Herman DOMCREATE et co., WIPO
Case No. DNAME2004-00001).
A. Identical or Confusingly Similar
The Complainant has established trademark rights in the term “Banca di Roma”. Ignoring, as the Panel is entitled to do, the generic “.net” Top Level Domain, the domain name at issue is identical with the Complainant’s trademark rights (see also: Deutsche Post AG v. MailMij LLC Mr. Colby Fisher (WIPO Case No. D2003-0128).
B. Rights or Legitimate Interests
According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the Respondent cannot demonstrate legitimate rights in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. Especially, there is no evidence that the Respondent is known by the domain name at issue.
The Panel agrees also with previous UDRP decisions that the linking of the disputed domain name to a website offering sponsored links cannot be regarded as a legitimate non-commercial or fair use of this domain name, since the main purpose of such linking is to participate in the revenue obtained from the traffic on such a site.
Also the circumstances of the case speak against a fair use behavior of the Respondent. The Panel believes that at the time of the commencement of this administrative procedure, the first thing the registrant of the domain name did was, to transfer the disputed domain name to another entity. Having regard to the circumstances of the case (identical address, telephone- and fax numbers and e-mail address), the Panel is of the opinion, that the former registrant and the Respondent are identical. Therefore, the only reason the Panel can imagine why the domain name at issue has been transferred to the Respondent was, to prevent or at least to impede the Complainant from enforcing its trademark rights.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and uses the domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:
(1) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location of a product.
According to the material brought before the Panel and in the absence of a response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well-established principle under prior UDRP decisions (See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to this knowledge the registration of the domain name will not infringe the rights of any third party. The Panel finds that the trademark BANCA DI ROMA is unique and well-known in Italy and in some other European countries and that it is not likely that the Respondent, which is situated in Panama, would register, acquire and use such a domain name without being aware of the Complainant’s trademark (See Liseberg AB v. Administration Local Management Technical, WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the domain name at issue in bad faith.
The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.
This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith (see e.g. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Mizuno Kabushiki Kaisha Corporation and Mizuno USA, Inc. v. Henry Chan, WIPO Case No. D2004-0255; Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984 Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589); Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beautй & Cie v. Unasi, Inc., WIPO Case No. D2005-0623). In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.
Moreover, the Respondent has been involved as a respondent in at least 30 UDRP
cases which ended all with the transfer of the disputed domain names to the
complainants (see e.g. Deutsche Telekom AG v. Unasi Management, Inc.
WIPO Case No. D2005-0423; Members Equity
PTY v. Unasi Management, Inc, WIPO case
No. D2005-0383; Gianfranco Ferre’ S.p.a. v. Unasi Inc., WIPO
Case No. D2005-0622; L’Oreal Biotherm, Lancome Parfums et Bouteille
& CIE v. Unasi Inc., WIPO Case No. D2005-0623;
Red Bull GmbH v. Unasi Management, Inc., WIPO
Case No. D2005-0304). Therefore, the Panel believes that the Respondent
appears to be a prolific registrant of domain names which tends to support a
finding that the registration of the domain name at issue was for the purpose
of preventing the owner of the trademark from reflecting the trademark in a
corresponding domain name and that the Respondent has engaged in a pattern of
such conduct (paragraph 4(b)(ii) of the Policy).
For all the foregoing reasons, in accordance with paragraphs 4(b)(ii and iv) of the Policy and 15 of the Rules, the Panel orders that the domain name <bancadiroma.net> be transferred to the Complainant.
Dated: March 31, 2006