A. Menarini Industrie Farmaceutiche Riunite S.r.l. v Armando Nania, Diarma

WIPO Case No. DAI2025-0018

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

A. Menarini Industrie Farmaceutiche Riunite S.r.l. v. Armando Nania, Diarma
Consulting shpk

Case No. DAI2025-0018

1. The Parties

The Complainant is A. Menarini Industrie Farmaceutiche Riunite S.r.l., Italy, represented by Società Italiana

Brevetti, Italy.

The Respondent is Armando Nania, Diarma Consulting shpk, Albania.

2. The Domain Name and Registrar

The disputed domain name <menarini.ai> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2025. On connection with the disputed domain name. On May 15, 2025, the Registrar transmitted by email to the Center its verif ication response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verif ied that the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on May 20, 2025. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2025. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on June 12, 2025.

The Center appointed Petra Pecar as the sole panelist in this matter on June 18, 2025. The Panel f inds 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.

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4. Factual Background

The Complainant, Menarini Industrie Farmaceutiche Riunite S.r.l., is an Italian pharmaceutical company headquartered in Florence, Italy. Established in 1886, the Complainant develops treatments for cardiovascular diseases, oncology, pain, inf lammation, asthma, and infections. The Complainant has established a global presence through its operations in 140 countries and a workforce of more than 17,000 employees.

The Complainant is the owner of the International trademark MENARINI (word) Reg. No. 531991, registered on December 13, 1988, for proprietary medicines in Class 5, which is designated among other for Albania.

The Complainant operates the domain names <menarini.it> and <menarini.com>.

The disputed domain name was registered on April 10, 2024, and at the time of the Complaint f iling, it resolved to a parked webpage.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name <menarini.ai> fully incorporates its MENARINI trademark and is therefore confusingly similar to its trademark. As a result, Internet users and consumers are likely to associate the disputed domain name with the Complainant’s trademark.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name <menarini.ai>. The Complainant has not authorized the use of its name or MENARINI trademark, and the Respondent holds no related trademark rights in MENARINI. The disputed domain name, which fully reproduces the Complainant’s name, resolves to a registrar parking page and is not used for any legitimate business or service.

The Complainant asserts that the disputed domain name was registered and used in bad faith, as it reproduces the well-known and distinctive MENARINI trademark without rights or the Complainant’s authorization. The Respondent is not connected to the Complainant, and given the global reputation of the

MENARINI trademark, the Respondent likely knew of the Complainant’s prior rights. The disputed domain name resolves to a parking page, indicating that it was registered to take advantage of the Complainant’s reputation and to prevent the Complainant from using its MENARINI trademark as a domain name under the “.ai” country code Top-Level Domain (“ccTLD”).

B. Respondent

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

6. Discussion and Findings

Even if the Respondent did not file a Response to the Complainant’s contentions, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in
accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, as
indicated in paragraph 15(a) of the Rules.

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Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview
3.0, section 1.2.1.

The entirety of the MENARINI trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The addition of the ccTLD “.ai” does not prevent a finding of confusing similarity, in line with WIPO Overview 3.0, section 1.11.1. Accordingly, the disputed domain name is considered identical to the Complainant’s MENARINI trademark.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that the Respondent does not appear to have any af f iliation or connection with the authorization to use or register a domain name incorporating the Complainant’s MENARINI trademark. The

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Respondent has failed to submit a response to the Complaint and has therefore not provided any evidence or arguments to establish rights or legitimate interests in respect of the disputed domain name.

Furthermore, there is no indication that the Respondent has used, or made demonstrable preparations to use, the disputed domain name in connection with a bona f ide of fering of goods or services, nor that the Respondent has made any legitimate noncommercial or fair use of the disputed domain name. At the time the Complaint was f iled, the disputed domain name resolved to an inactive webpage. There was no

evidence of any active use, commercial or otherwise, associated with the disputed domain name.

In light of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name registered by the Respondent consists of the Complainant’s MENARINI trademark and ccTLD “.ai”.

The Complainant's MENARINI trademark predates the registration of the disputed domain name by over 36 years. The Respondent registered the disputed domain name despite the Complainant’s long-standing and well-established rights in the MENARINI trademark. Given the substantial time gap between the trademark registration and the registration of the disputed domain name, as well as the composition of the disputed domain name, particularly because the disputed domain name consists of the Complainant’s trademark and the ccTLD “.ai”, which may be perceived either as a territorial designation or as a reference to artif icial intelligence, the Panel finds that the disputed domain name was registered in bad faith with the intent to create a misleading association with the Complainant and its activities.

The Panel notes that the Respondent could have easily verif ied the existence of the Complainant’s MENARINI trademark rights through publicly accessible trademark databases or a simple Internet search prior to registering the disputed domain name. The failure to do so, or the deliberate disregard of such prior rights, further supports the inference of bad faith.

Furthermore, the disputed domain name is currently inactive and does not resolve to any active website. The passive holding of the disputed domain name, combined with the Complainant’s well-established prior trademark rights, reinforces the conclusion that the Respondent has registered and is using the disputed domain name in bad faith.

Panels have found that the non-use of a domain name would not prevent a f inding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes distinctiveness of the MENARINI trademark due to the use of the mark for decades, the

composition of the disputed domain name (a combination of the Complainant’s trademark and the ccTLD “.ai”) and the implausibility of any good faith use the disputed domain name may be put, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a f inding of bad faith under the Policy.

The Panel f inds that the Complainant has established the third element of the Policy.

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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 <menarini.ai> be transferred to the Complainant.

/Petra Pecar/
Petra Pecar
Sole Panelist
Date: July 2, 2025