Italfarmaco S.p.A. v Richard Wallace

WIPO Case No. D2025-0466

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Italfarmaco S.p.A. v. Richard Wallace

Case No. D2025-0466

1. The Parties

The Complainant is Italfarmaco S.p.A., Italy, represented by Studio Barbero S.p.A., Italy.

The Respondent is Richard Wallace, Germany.

2. The Domain Name and Registrar

The disputed domain name <italfarmaco.group> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2025. connection with the disputed domain name. On February 7, 2025, 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 February 13, 2025. In accordance with the Rules,
paragraph 5, the due date for Response was March 5, 2025. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on March 6, 2025.

The Center appointed Alan L. Limbury as the sole panelist in this matter on March 10, 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.

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4. Factual Background

The Complainant is a private multinational group founded in 1938, based in Milan, Italy. It produces high- quality medicinal specialties adhering to the highest quality standards and commits to pioneering research and development, high-quality production, and global marketing of branded prescription and non-prescription

drugs. The Complainant distributes its products worldwide in 90 countries with local branches and partner
companies and has 6 production sites in Italy, Spain, Brazil, and Chile. Its gross sales in 2024 reached EUR

1.1 billion.

The Complainant is the registrant of inter alia the following ITALFARMACO word marks:

International Reg. No. 1190181, registered on June 25, 2013, in the following Classes:

5: Pharmaceutical, veterinary preparations; sanitary preparations for medical purposes; dietetic food and

substances for medical use; dietary supplements for humans; plasters; material for bandaging.

10: Medical devices, apparatus and instruments.

42: Scientific research in the pharmaceutical, biotechnological and medical fields; technological research in the pharmaceutical, biotechnological and medical fields; design and development of computer software and hardware; industrial research and analysis in the pharmaceutical, biotechnological and medical fields.

Italian Reg. No. 0001588260, registered on April 3, 2014, in Classes 5, 10 and 42; and

United Kingdom Reg. No. UK00801190181, registered on December 3, 2014, in Classes 5, 10 and 42.

The Complainant operates the website from the domain name <italfarmaco.com>, which was registered on
October 21, 2012.

The disputed domain name was registered on December 5, 2024. Until it was taken down by the Registrar at the request of the Complainant, it resolved to the Complainant’s “ website. It does not currently resolve to an active website.

Between December 5 and 10, 2024, the disputed domain name was used to send emails purporting to be be reimbursed by the Complainant’s headquarters once the acquisition had been announced.

from the Complainant’s Group Business & Portfolio Development Director, to an employee of the
Complainant’s Turkish branch, requesting the branch to pay EUR 715,000 to a minority shareholder in

The Respondent failed to reply to several cease-and-desist letters from the Complainant’s representative.

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 is identical to the trademark the disputed domain name, which was registered and is being used in bad faith.

As to legitimacy, the Complainant says the Respondent is not an employee, licensee or authorized agent of the Complainant or in any other way authorized to use the Complainant’s trademarks nor to register and use

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the disputed domain name. The Complainant is not in possession of, nor aware of, the existence of any
evidence demonstrating that the Respondent, whose name, according to the data disclosed by the Registrar
to the Complainant’s representative, is Richard Wallace, might be commonly known by a name
corresponding to the disputed domain name as an individual, business, or other organization. Furthermore,
according to searches performed by the Complainant’s representative, the Respondent does not own any
trademark registrations for ITALFARMACO.

The Respondent has not provided the Complainant with any evidence of use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before or after notice of this dispute. There is no evidence that the Respondent might have used the disputed domain name in connection with a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Instead, the disputed domain name has been used for fraudulent purposes, since the Respondent has created an email address based on the disputed domain name, [name]@italfarmaco.group, impersonating the Complainant’s Group Business & Portfolio Development Director and seeking undue payments in the name of the Complainant purportedly to acquire a company in Türkiye.

Such willful conduct clearly demonstrates that the Respondent never intended to use the disputed domain name in connection with legitimate purposes. The Respondent’s use of the disputed domain name to create an email address used in the context of a scam campaign is part of a fraud scheme aimed at tricking recipients into believing that they are dealing with a company representative in order to induce them to make payments and provide their personal information. In this context, the Respondent’s redirection of the disputed domain name to the Complainant’s website was clearly designed to reinforce the impression that the email communications sent from an email address based on the disputed domain name actually came from the Complainant.

As to bad faith, the Complainant says it is thus apparent that the Respondent was well aware of the Complainant and its structure and registered the disputed domain name to impersonate the Complainant for fraudulent purposes. As to the circumstance that the disputed domain name is currently pointed to an inactive website as a result of its suspension, as established in a number of prior cases, the concept of “bad faith use” includes not only positive action but also passive holding.

In view of (i) the distinctiveness and reputation of the Complainant’s ITALFARMACO mark, to which the
disputed domain name is identical, (ii) the failure of the Respondent to reply to the Complainant’s cease-and-
desist letters and its conduct demonstrating that it did not intend to make any good-faith use of the disputed
domain name, (iii) the Respondent’s concealing its identity, and (iv) the implausibility of any good faith use
to which the disputed domain name – identical to the Complainant’s mark - may be put, the current passive
holding of the disputed domain name should not prevent a finding of bad faith use.

In view of the above, it is clear that the Respondent registered and is using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

B. Respondent

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

6. Discussion and Findings

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.

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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 entirety of the mark is reproduced within the disputed domain name. The inconsequential “.group” generic Top-Level Domain (“gTLD”) may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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 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 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.

Panels have held that the use of a domain name for illegitimate activity, here, as applicable to this case: impersonation/passing off, phishing or other types of fraud, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds 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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have held that the use of a domain name for illegitimate activity, here, as applicable to this case: impersonation/passing off, phishing or other types of fraud, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds 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 <italfarmaco.group> be transferred to the Complainant.

/Alan L. Limbury/
Alan L. Limbury
Sole Panelist
Date: March 12, 2025