WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

UnipolSai Assicurazioni S.p.A. v. Antonio Lupia

Case No. D2020-0129

1. The Parties

The Complainant is UnipolSai Assicurazioni S.p.A., Italy, represented by Bugnion S.p.A., Italy.

The Respondent is Antonio Lupia, Italy.

2. The Domain Name and Registrar

The disputed domain name <unipolsai.store> 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 January 17, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 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 January 20, 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 January 24, 2020.

The Center verified that the Complaint together with the amended 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 January 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2020.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 3, 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, UnipolSai Assicurazioni S.p.A., is the insurance company of Unipol Gruppo S.p.A. which according to the Complaint is the second-largest insurance group on the Italian market, the largest in non-life insurance, and among the top ten in the European Union. Also active in life insurance, the Complainant, holds a strong position in the Italian ranking of insurance groups in terms of direct income, totaling EUR 11.7 billion, of which EUR 7.9 billion in non-life and EUR 3.8 billion in life (2018 figures). The Complainant, UnipolSai Assicurazioni S.p.A., was incorporated on January 6, 2014 when the company Unipol Assicurazioni and two other companies were merged into Fondiaria-Sai which later changed its name to “UnipolSai Assicurazioni S.p.A.”. It operates through the most extensive agency network in Italy, with 2,753 insurance agencies and 5,615

sub-agencies located across Italy.

The name “UnipolSai” is a coined word stemming from the contraction of two brands and companies: “Unipol”, on the one hand, and “Sai”, on the other hand. The trademark UNIPOLSAI has been the subject of intensive advertising campaigns since 2014.

The Complainant is, inter alia, the owner of:

Italian trademark UNIPOLSAI registration number 1552597, registered on July 31, 2013;

International trademark UNIPOLSAI registration number 1158882, registered on January 25, 2013;

Italian trademark UNIPOLSAI (device) registration number 1552598, registered on July 31, 2013;

International trademark UNIPOLSAI (device) registration number 1158881, registered on January 25, 2013.

The Complainant is also the owner of the domain names <unipolsai.it> and <unipolsai.com> respectively registered on March 8, 2012 and November 20, 2012.

The disputed domain name was registered on March 26, 2019, and the Complaint provided evidence that it has resolved to a blank, inactive website.

The disputed domain name incorporates the Complainant’s trademark in its entirety, with no additional words.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

- the disputed domain name is identical to the trademark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,

- the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Complainant has established rights in the UNIPOLSAI trademark.

The disputed domain name incorporates the Complainant’s trademark in its entirety, with no additional elements, but with the “.store” generic Top-Level Domain. Being a technical element, this is irrelevant when assessing confusing similarity.

Therefore, this Panel agrees with the Complainant’s assertion that the disputed domain name is identical to the Complainant’s trademark.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the UNIPOLSAI trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “unipolsai” or by any similar name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

The UNIPOLSAI trademark has been registered and used for several years, and it enjoys a widespread reputation and a high degree of recognition, particularly in Italy, where the Respondent appears to reside. Consequently, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.

The Panel further notes that given the Complainant’s renown, particularly, in Italy, it would be inconceivable for the Respondent to argue that it registered the disputed domain name for any legitimate purpose other than to target the Complainant’s marks in an attempt either to trade upon the Complainant’s reputation and goodwill or to conduct fraudulent activities.

Further inference of bad faith registration and use of the disputed domain name is given by Respondent’s use of a false address to register the disputed domain name.

In addition, the Complaint provided evidence that the Respondent has been passively holding the disputed domain name since its registration.

Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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 <unipolsai.store> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: March 17, 2020