The Complainant is Esselunga S.p.A., Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is WhoisGuard, Inc., United States of America (“United States”) / Domain Administrator, See PrivacyGuardian.org, United States / Dayhuff Chasity, individual, India / Charu Mahajan, India / Billao Kilaori, India.
The disputed domain names <esselunga-buona.store> and <esselunga-it.store> are registered with NameCheap, Inc. (the “Registrar”). The disputed domain name <esselunga-gratuita.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2020. On June 8, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 8, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 10, 2020, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 12, 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 June 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2020. The Respondent did not submit any response. The Center received an email from a registrant of two domain names included in the original Complaint on June 10, 2020. This registrant and the two domain names were removed by the Complainant from the amended Complaint. Accordingly, the Center informed the Parties about the commencement of Panel appointment on July 10, 2020.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 15, 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.
The Complainant is an Italian retail store chain founded in 1957. It is the owner of, amongst others, the following registrations (Annex 5 to the Complaint):
- Italian Trademark Registration No. 1290783 for ESSELUNGA, registered on October 24, 1984, and successively renewed in classes 03, 06, 08, 09, 16, 21, 28, 29, 30, 31, 32, 33 and 42; and
- Italian Trademark Registration No. 1480754 for ESSELUNGA, registered on April 11, 2006, and successively renewed in all 45 classes.
The disputed domain names, <esselunga-buona.store>, <esselunga-it.store>, and <esselunga-gratuita.com>, were registered on April 15, 2020. The first disputed domain name resolved to a parked page with pay-per-click (“PPC”) sponsored links related to the Complainant’s activities, whereas the second disputed domain name does not resolve to an active webpage and the last disputed domain name is used in connection with a webpage used in connection with a scam attempt that promises free coupons depicting the Complainant’s trademark.
The Complainant contends that the disputed domain names are under common control as they were registered on the exact same date, share the same naming pattern (the Complainant’s trademark followed by a hyphen and an Italian word or reference), and are under privacy protection services, indicating incomplete addresses in New Delhi with the same pattern of irregularities.
The Complainant asserts to be the Italian leader in the retail field, with total revenues reaching more than 8 billion EUR and counting more than 150 sale points, also noting the ESSELUNGA trademark has become
well-known as recognized in past UDRP decisions (such as Esselunga S.p.A. v. Carla GiorgiWIPO Case No. D2017-2107; and Esselunga S.P.A. v. Wang Lian FengWIPO Case No. D2018-0967).
According to the Complainant all of the disputed domain names are confusingly similar with the well-known ESSELUNGA trademark. The addition of “it” directly linked to Italy where the Complainant was founded and where its physical stores are located and “buona” and “gratuita”, generic terms usually associated to promotion and offers, does not prevent a finding of confusing similarity but rather are apt to increase the confusing similarity and undue association between the disputed domain names and the Complainant.
As to the absence of rights or legitimate interests, the Complainant submits that:
i. the Respondents are not authorized dealers, agents, distributors, wholesalers or retailers of the Complainant;
ii. the Respondents are not commonly known by the disputed domain names, as individuals, businesses, or other organizations; and
iii. the nature of the ESSELUNGA trademark being a fanciful word strengthens the assumption that the disputed domain names were registered without a bona fide intention.
As to bad faith registration of the disputed domain names the Complainant submits that the Respondents had actual knowledge of the Complainant’s trademark, which is evident from the content on the website that resolves from one of the disputed domain names which were intentionally registered to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s fanciful and well-known trademark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website at the disputed domain names. In addition, the possible scam perpetrated by the Respondents, promising free coupons cannot characterize good faith. Furthermore, the Complainant submits that the Respondents deliberately choose to conceal their true identity by retaining privacy services, which is a further indication of their bad faith.
The Respondents did not reply to the Complainant’s contentions.
The Complainant requests under paragraph 3(c) and 10(e) of the Rules that this Panel accept multiple respondents in a single proceeding in view of the facts enumerated at paragraph 5.A. above.
(“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the three disputed domain names dealt with at the same procedure, given that they relate to the same trademark and were registered on the exact same date, share the same naming pattern (the Complainant’s trademark followed by a hyphen and an Italian word or reference), and are under privacy protection services, indicating incomplete addresses in New Delhi with the same pattern of irregularities.
This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all parties.
The Complainant has established rights in the ESSELUNGA trademark.
The Panel finds that the disputed domain names reproduce the Complainant’s mark in its entirety. The addition of “buona”, “it”, and “gratuita” terms are insufficient to avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, section 1.7).
The first element of the Policy has therefore been established.
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice 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 in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark 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 trademark or service mark at issue.
The Respondents, in not responding to the Complaint, have failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondents.
In that sense, the Complainant indeed states that the Respondents are not authorized dealers, agents, distributors, wholesalers or retailers of the Complainant.
Also, the lack of evidence that the Respondents are commonly known by the disputed domain names and the absence of any trademarks registered by the Respondents corresponding to the disputed domain names which relate to a fanciful expression, corroborates the absence of any rights or legitimate interests in the disputed domain names.
Moreover, given the evidence submitted, the Respondents are using one of the disputed domain names in connection with a scam offering free coupons and have used one of the other two disputed domain name in connection with a parked page displaying PPC advertisements connected to the Complainant’s activities, which clearly do not characterize a bona fide offering of goods or services under the Policy.
The Panel finds that the Respondents do not have rights or legitimate interests with respect to the disputed domain names.
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain names in bad faith can be found in view of the use of the disputed domain names to create a direct affiliation with the Complainant and its business, as seen above. In the present circumstances, the Panel finds the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations.
Other factors that corroborate the Panel’s finding of the Respondent’s bad faith are: (i) the choice to retain privacy services to conceal the true identity of the Respondents; (ii) the provision of what appears to be false or incorrect WhoIs information; and (iii) the absence of a formal Response by the Respondents.
Furthermore, the passive holding of one of the disputed domain names does not prevent a finding of bad faith registration and use in the circumstances of this case.
For the reasons above, the Respondents’ conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.
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 names, <esselunga-buona.store>, <esselunga-it.store> and <esselunga-gratuita.com>, be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: July 29, 2020
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