Banca Mediolanum S.p.A. v Nanci Nette

WIPO Case No. D2025-1195

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Banca Mediolanum S.p.A. v. Nanci Nette

Case No. D2025-1195

1. The Parties

The Complainant is Banca Mediolanum S.p.A., Italy, represented by Bird & Bird Società tra Avvocati s.r.l.,

Italy.

The Respondent is Nanci Nette, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mediolanumfinanz.com> 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 March 24, 2025.
On March 24, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 24, 2025, 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 (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on March 27,
2025, 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

April 1, 2025.

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 April 2, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2025.

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The Center appointed Enrique Bardales Mendoza as the sole panelist in this matter on May 4, 2025. 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 the parent company of the Mediolanum Group, which provides banking, financial and
insurance products and services, operating in Italy and other countries, since 1997. As evidenced in Annex

12 to the Complaint, the Complainant owns, amongst others, the following trademark registrations:

- European Union trademark registration No. 004671764 for MEDIOLANUM (word mark), filed on

October 7, 2005 and registered on October 3, 2006, in classes 35, 36, and 38; and

- European Union trademark registration No. 14747059 for BANCA MEDIOLANUM registered on March 29, 2016, in classes 9, 18, 25, 35, 36, and 41.

The disputed domain name <mediolanumfinanz.com> was registered on October 24, 2023. Presently, the disputed domain name resolves to a Pay-Per-Click (“PPC”) webpage hosting banking and financial services- related links, but it was previously used in connection with a webpage reproducing the Complainant’s trademarks and the distinctive colors of the Complainant’s brand and business identity (Annex 14 bis of the Complaint).

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 it is identical or confusingly similar to the MEDIOLANUM trademark,
and the addition of the terms “finanz” and the additional generic Top-Level Domain (“gTLD”) “.com” to the
Complainant’s trademark does not prevent a finding of confusing similarity.

The Complainant claims to be one of the most important companies in terms of services including accounts, debit and credit cards, mortgages and loans, savings investment solutions, as well as insurance, retirement and real estate products and services.

One of its services is the “Conto Mediolanum”, which identifies a banking account service (Annex 15 of the
Complaint). According to the Complainant, the disputed domain name currently displays a parking page
hosting banking and financial services-related links, among which one is titled “CONTO DEPOSITO
MEDIOLANUM” (Annex 14 of the Complaint).

The disputed domain name, in the Complainant's view, is confusingly similar to its trademarks incorporates MEDIOLANUM in its entirety, only adding the generic term “finanz”, which refers to the term “finanza” and translates into English as “finance”, and is therefore linked to the Complainant’s business and services.

According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain name because:

(i) there is no relationship or authorization between the Complainant and the Respondent in respect of the
use of the MEDIOLANUM mark.

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(ii) the Respondent has no trademark applications or registrations corresponding to the disputed domain

name (Annex 16 of the Complaint).

(iii) the Respondent does not use the disputed domain name in connection with a bona fide offering of goods
or services, as the disputed domain name was used to feature links to redirect users to competing websites
and, previously, to a website that sought to imitate the Complainant’s identity.

The confusion caused by the disputed domain name <mediolanumfinanz.com> is further evidenced by the fact that, currently, the title “CONTO DEPOSITO MEDIOLANUM”, with clear reference to the Complainant’s “Conto Mediolanum” service, is used in links leading to third-party pages. In addition, when the disputed domain name resolved to the previous website, the Complainant’s distinctive color scheme was used.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that the following three elements are present in order to obtain the transfer or cancellation of the disputed domain name:

a. It must be demonstrated that the disputed domain name is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights.
b. It must be demonstrated that the Respondent has no rights or legitimate interests in respect of the
disputed domain name.

c. It is necessary to demonstrate that the disputed domain name has been registered and used in bad faith.

Since in the present case there was no Response from the Respondent to the Complaint filed by the
Complainant, the Panel can take as true those assertions of the Complainant that it considers reasonable
(see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No.

D2006-0292).

A. Identical or Confusingly Similar

It is well accepted that the first 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 or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed
domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section
1.7.

In this case, the disputed domain name reproduces the Complainant’s trademark MEDIOLANUM, which is also characteristic of the Complainant’s trademark BANCA MEDIOLANUM.

Although the addition of other terms (here, “finanz”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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In addition, it is well established that the gTLD (in this case “.com”) is generally not considered when considering whether a disputed domain name is confusingly similar to the trademark in which the complainant has rights (see section 1.11.1 of the WIPO Overview 3.0).

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain
name or a name corresponding to the 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

domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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 often 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 satisfied 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 there is no relationship or authorization between the Complainant and the Respondent concerning the use of the MEDIOLANUM mark. Therefore, the Respondent has no rights or legitimate interests in the disputed domain name, has not used the disputed domain name for legitimate noncommercial, or fair use, nor has the Respondent used it in connection with a bona fide offering of goods or services.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

In the present case, the following circumstances demonstrate bad faith registration and use of the disputed domain name:

(i) The disputed domain name was registered on October 24, 2023, long after the Complainant’s founding
(1997) and the registration of its trademarks (2006);

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(ii) The Respondent has failed to provide any evidence of good faith registration of the disputed domain name, and none arises when considering its composition, particularly noting that in the disputed domain name <mediolanumfinanz.com>, the trademark MEDIOLANUM precedes the term “finanz”, which refers to

the type of services offered by the Complainant, and further reinforces the similarity with the aforementioned

trademarks;

(iii) The Respondent has not provided any evidence of good faith use of the disputed domain name, and
none arises from its use;

(iv) The Respondent was aware of the Complainant’s existence due to its notoriety and trademarks. This is evidenced not only by the use of the MEDIOLANUM name but also by the initial design of the Respondent’s website, which incorporated the Complainant’s distinctive colors;

(v) The Respondent’s failure to respond to the Complaint.

The Panel finds that the Complainant has established the third element 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 <mediolanumfinanz.com> be transferred to the Complainant.

/Enrique Bardales Mendoza/
Enrique Bardales Mendoza
Sole Panelist
Date: May 16, 2025