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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banca Sella s.p.a v. Mr. Paolo Parente
Case No. D2000-1157
1. The Parties
The Complainant is Banca Sella s.p.a., Via Italia 2, Biella, Italy.
The Respondent is Mr. Paolo Parente, Via E. Alvino 71, 80127 Naples, Italy.
2. The Domain Name and Registrar
The domain name at issue is bancasella.com (Domain Name), which Domain Name is registered with Network Solutions Inc. (NSI or the Registrar).
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on August 31, 2000. The signed original with attachments was received by the Center on September 8, 2000.
On September 5, 2000 the Center transmitted to NSI a request for Registrar Verification in connection with this case. On September 10, NSI confirmed that: (i) NSI is the Registrar of the Domain Name bancasella.com; (ii) the current registrant of the Domain Name is Paolo Parente, Via E. Alvino 71, Napoli, Italy; (iii) the administrative and billing contacts are Paolo Parente, Easy Web 2000, Via E. Alvino Naples, Italy and (iv) the domain name registration in issue is in "Active" status.
On September 18, 2000 the Center completed the Formal Requirements Compliance Checklist and transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically, by courier and fax. In the Commencement Notification the Center advised the Respondent that a response was due on October 7, 2000. On the same date the Commencement Notification was copied to the Complainant and to ICANN and the Registrar.
Having received no response from the Respondent, on October 9, 2000 the Center transmitted electronically to the Respondent a Notification of Respondent Default, copy to the Complainant.
On November 14, 2000 the Center notified the parties that Ms. Anna Carabelli, Mr. Geert Glas and Mr. Christophe Imhoos had been appointed as the Administrative Panel in this proceeding, indicating that, absent exceptional circumstances, the Administrative Panel was required to send its decision to the Center by November 27, 2000.
The Administrative Panel has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has provided evidence of the following trademark registrations:
(Attachments 2 and 3 to the Complaint):
Italian Trademark Reg. No. 785.327
Registration Date June 16, 1999
International Trademark Reg. No. 721930
Registration Date June 16, 1999
The Complainant also submitted documents indicating that the Complainant is an Italian bank, operating under the name Banca Sella since the end of the last century (Attachment 1 to the Complaint).
In addition, the Complainant submitted a copy of the letter dated July 27, 2000 sent by the Respondent’s lawyer (Attachment 4 to the Complaint), containing an offer to sell the Domain Name for the sum of U.S. $ 50,000.
5. Parties’ Contentions
The Complainant contends that:
- Respondent’s Domain Name is confusingly similar to the Complainant’s trademark BANCA SELLA;
- the Complainant is a well-known Italian bank operating under the name BANCA SELLA since the 19th century and is one of the leading banks in e-banking in Italy;
- the Respondent has no rights or legitimate interests in the Domain Name;
- the Respondent has registered the Domain name in bad faith since by the time of registration he could not be unaware of the Complainant’s well-known trademark BANCA SELLA;
- the Respondent’s bad faith in using the Domain Name is demonstrated by the offer to sell the Domain Name for a sum (50,000 U.S.$) in excess of out of pocket costs directly related to the Domain Name, made by the Respondent’s lawyer by the letter dated July 27, 2000.
Based on the above, the Complainant requests the transfer of the Domain Name.
The Respondent did not file any response and is in default.
6. Discussion and Findings
1. Paragraph 15(a) of the Rules instructs the Administrative Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.
(a) Identity or confusing similarity
The Administrative Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s trademarks. In his letter of July 27, 2000, the Respondent’s attorney has not suggested the contrary or even attempted to address this issue. On this record, this element had been established.
(b) Rights or legitimate interests
Based on the Complaint it is clear that the Complainant has never authorized or licensed the Respondent to use the Complainant’s trademarks and trade name BANCA SELLA. It also appears that the Respondent is not commonly known by the Domain Name.
The Administrative Panel finds therefore that the Complainant has established a prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name.
On the other hand, the Administrative Panel considers that by submitting no response, the Respondent has failed to invoke any circumstance under paragraph 4(c) of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters WIPO D2000-0526; Deutsche Bank AG v. Diego-Arturo Bruckner WIPO D2000-0277; Talkcity Inc. v. Robertson WIPO D2000-0009).
The Administrative Panel concludes therefore that the Respondent has no rights or legitimate interests in the Domain Name.
(c) Bad Faith
Under the Policy, the Complainant is required to prove also the third element provided for in paragraph 4(a)(iii), namely that the domain name "has been registered and is being used in bad faith".
As demonstrated by the Complainant, at least factor (i) of Paragraph 4(b) of the Policy is applicable here and establishes bad faith registration and use of the Domain Name.
The letter of July 27, 2000 sent by the Respondent’s lawyer leads to conclude that the Respondent has registered or acquired the Domain Name "primarily for the purpose of selling, renting … the domain name registration to the complainant … for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name".
In addition, the Administrative Panel considers that the Complainant has proved that it is an Italian bank and has been operating under the name BANCA SELLA since the 19th century. Therefore it is reasonable to believe that the Respondent, who is an Italian citizen, knew of the renown of the Complainant’s trademarks and trade name when he registered the Domain Name and this suggests opportunistic bad faith (Veuve Cliquot Ponsardin v. The Polygenix Group Co. WIPO D2000-0163; Parfums Christian Dior v. Javier Garcia WIPO D2000-0226). In addition, the Respondent has no rights or legitimate interests in the Domain Name (as established in paragraph 6(b) above), and therefore he could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate, under fair competition and trademark law principles.
Therefore the Administrative Panel concludes that the Domain Name has been registered and used in bad faith.
The Administrative Panel decides that: (a) the domain name bancasella.com registered by the Respondent is identical or confusingly similar to the Complainant’s trademarks;
(b) the Respondent has no rights or legitimate interests in respect of the domain name bancasella.com; and (c) the domain name bancasella.com has been registered and is being used in bad faith by the Respondent.
Accordingly the Administrative Panel requires that the domain name bancasella.com be transferred to the Complainant.
Geert Valиre Glas
Dated: November 27, 2000