WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Esselunga S.p.A. v. Privacy Protect, LLC (PrivacyProtect.org) / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin

Case No. D2019-0318

1. The Parties

The Complainant is Esselunga S.p.A. of Milan, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.

The Respondent is Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <esselungaconvenzioniperte.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2019. On February 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2019, 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 February 14, 2019 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 amendment to the Complaint on February 19, 2019.

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” 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 February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2019.

The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on March 22, 2019. 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 Esselunga S.p.A. is an Italian store chain, founded in 1957 by Nelson Rockefeller, Bernardo, Guido and Claudio Capriotti, Marco Brunelli, and other Italian associates. Currently it is the Italian leader in the retail field with more than 150 points of sale.

Among the numerous ESSELUNGA trademarks, the Complainant is the owner of the following:

- Italian Registration No. 1290783, first filed on March 12, 1980, dully renewed, for classes 3, 6, 8, 9, 16, 21, 28, 29, 30, 31, 32, 33, and 42;

- Italian Registration No. 1480754, first filed on April 9, 2002, dully renewed, in classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15,16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, and 45;

- European Union Registration No. 3370202, first filed on September 25, 2003, and dully renewed, in classes 5, 29, 30, 31, 32, and 33.

The Complainant is owner of several Top-Level and Country Code Top-Level domain names, constituted by the word “esselunga” including <esselunga.it> and <esselunga.eu>.

The Complainant promotes its services and points of sale primarily through its principal website “www.esselunga.it”. The ESSELUNGA brand is also widely promoted in social media channels such as Facebook and Instagram.

The Respondent registered the disputed domain name <esselungaconvenzioniperte.com> on January 30, 2018, which resolves to a website with sponsored links with explicit reference to the Complainant’s trademarks and to competing services.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name <esselungaconvenzioniperte.com> is confusingly similar to the trademark ESSELUNGA in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which has been registered and is being used by the Respondent in bad faith.

More specifically, the Complainant asserts that the Respondent is not generally known by the disputed domain name and, nor is the Respondent affiliated to the Complainant who has not authorized the Respondent to use the trademark ESSELUNGA in connection with a website nor for any other purpose.

The fact that ESSELUNGA is a fanciful word, strengthens the assumption that the disputed domain name was registered for the sole purpose of misleading potential consumers, to tarnish the Complainant’s trademark and to prevent the Complainant from reflecting its trademark in a corresponding domain name. This is even truer considering that the disputed domain name differs only for a “.” between the words “esselunga” and “convenzioni” from the website “esselunga.convenzioniperte.com” used by the Complainant.

Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the trademark ESSELUNGA.

The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.

In this case, the disputed domain name <esselungaconvenzioniperte.com> contains the Complainant’s trademark ESSELUNGA in its entirety. In the Panel’s opinion the addition of the word “convenzioniperte” (“convenzioni per te” in English “convention for you”) does not avoid a finding of confusing similarity.

As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “in cases where the domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark.”

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” included in the disputed domain name.

The Panel finds that the disputed domain name is confusingly similar to the trademark ESSELUNGA in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Complainant sustains that it has never granted the Respondent with the right to register and use the ESSELUNGA trademark as a domain name.

Previous panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, “Complainant asserts that it has not authorized Respondent to use the mark.” Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA, WIPO Case No. D2008-0144.

As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name <esselungaconvenzioniperte.com>.

Likewise, and as further discussed under section C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather it is using the Complainant’s trademark without consent for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name resolves relates to the Complainant.

The Panel finds that the Complainant has made out a primafacie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name that contains a third party’s trademark without authorization. The Respondent could not ignore the existence of the ESSELUNGA trademark when it registered the disputed domain name on January 30, 2018, because ESSELUNGA is a well-known trademark, and because ESSELUNGA is a fanciful word, therefore it is difficult to conceive that the use of the disputed domain name is not related to the Complainant’s activities. This assumption is further proved by the fact that the disputed domain name entirely contains Complainant’s trademark ESSELUNGA.

In the Esselunga S.p.A. v. Carla Giorgi, WIPO Case No. D2017-2107, the panel recognized that complainant’s trademark ESSELUNGA is well known: “E indubbio che il marchio della Ricorrente, grazie alla sua apillare presenza sul territorio italiano in particolare del centro nord, è un marchio rinomato”, i.e.in English: “It is clear that the Complainant’s trademark, through its widespread presence in Italy and, in particular, in the North-Central Italian regions, is a renowned trademark”.

Furtermore, in Esselunga S.P.A. v. Wang Lian Feng, WIPO Case No. D2018-0967, the panel has recognized that: “The Complainant has submitted evidence to show that it enjoys an active online presence. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the ESSELUNGA trade mark and its use by the Complainant. As such, a presumption arises that that the Respondent was aware of the Complainant and its trade marks when it registered the disputed domain name, particularly given that the disputed domain name is identical to the Complainant’s mark. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith”.

The misappropriation of a well-known trademark as domain name by itself constitutes bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.

In light above, it is inconceivable that the Respondent was not aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating ESSELUNGA, was very likely to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about this distinctive sign to its own website, where sponsored links are published. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.

Moreover, the disputed domain name has been registered long after the filing/registration of the Complainant’s trademark ESSELUNGA.

With respect to the use in bad faith, as described above, the disputed domain name redirects to webpages displaying several sponsored links to various third-party commercial websites, mainly related to the Complainant and competitors’ services. Such a conduct where the Respondent sought or realized commercial gain, at least earning commission whenever an Internet user visits its website and clicks on one of the links published therein, indicates its bad faith as stated in many previous UDRP decisions such as Autodesk, Inc. v. PrivacyProtect.org / Tech Domain Services Private Limited, WIPO Case No. D2011-1958; Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; and Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589.

Many panels have found the respondent acting in bad faith where respondent sought or realized commercial gain from the use of a domain name identical or confusingly similar to a complainant’s trademark. See Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; and Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413.

The Panel finds that the Respondent is intentionally attracting Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Finally, the webpage to which the disputed domain name directs indicates that it is offered for sale.

In light of the above, the Panel considers that the disputed domain name was registered and is being used in bad faith and that the third prong of paragraph 4(a)(iii) of the Policy has therefore been fulfilled.

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 <esselungaconvenzioniperte.com> be transferred to the Complainant.

Miguel B. O’Farrell
Sole Panelist
Date: April 4, 2019