WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Esselunga S.P.A. v. UOL Host

Case No. D2017-2311

1. The Parties

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

The Respondent is UOL Host of Sao Paulo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <esselunga.delivery> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2017. On November 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2017, 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.

The Center verified that 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 December 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2018.

The Center appointed George R. F. Souter as the sole panelist in this matter on January 25, 2018. 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 is an Italian retail store chain, founded in 1957, and is well-known in the retail field, with total revenues amounting to EUR 6,8 billion and more than 150 point of sales. Since 2003, the Complainant's e-commerce website has offered a home delivery service. Details of the Complainant's Italian trademark registrations No. 1290783, dating from 1989 and No. 1480754, dating from 2002, and European Union Trademark registration No 3370202, dated May 4, 2005, of its ESSELUNGA trademark have been supplied to the Panel.

The disputed domain name was registered on December 27, 2016 and does not resolve to an active website.

5. Parties' Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its ESSELUNGA trademark, containing its trademark in its entirely with the mere addition of a generic Top Level Domain ("gTLD") extension "delivery" which may be disregarded when assessing the identity or confusing similarity of a domain name with a trademark.

The Complainant alleges that the disputed domain name lacks right or legitimate interests; in particular the Complainant denies that the Respondent is an authorized dealer, agent, distributor, wholesaler or retailer of its ESSELUNGA trademark and the Complainant states that it has never authorized the Respondent to include its well-known trademark in the disputed domain name, nor to make any other use of its trademark in any manner whatsoever. The Complainant also confirms that it is not in possession of, nor aware of the existence of, any evidence tending to demonstrate that the Respondent is commonly known by the disputed domain name, as individual, business, or other organization.

The Complainant alleges that the disputed domain name was registered in bad faith, and the passive holding of the disputed domain name, in the circumstances of the present case, represents use in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(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 disputed domain name is only composed of the Complainant's trademark, incorporated in its entirety, with the gTLD ".delivery".

It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of the gTLD ".delivery" which is a standard registration requirement to the Complainant's ESSELUNGA trademark is disregarded under the first element.

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

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Panel considers the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the Panel believes that the Respondent has clearly had the Complainant's trademark in mind when registering the disputed domain name, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds.

In so far as use in bad faith is concerned, the Panel agrees with the Panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that there are circumstances in which passive holding of a disputed domain name can constitute use in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the dual requirements of 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 <esselunga.delivery> be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: January 29, 2018