UNIQA Insurance Group AG v Gabriele Marangoni, and Gornati Simona

WIPO Case No. D2023-1240

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

UNIQA Insurance Group AG v. Gabriele Marangoni, and Gornati Simona

Case No. D2023-1240

1. The Parties

The Complainant is UNIQA Insurance Group AG, Austria, represented by Schonherr Rechtsanwalte GmbH,

Austria.

The Respondents are Gabriele Marangoni, Italy, and Gornati Simona, Italy.

2. The Domain Names and Registrar

The disputed domain names <uniqa-al.com> and <uniqa-al.org> are registered with WEDOS Internet (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2023. are, in fact, the same entity and/or that all domain names are under common control and indicate which domain names will no longer be included in the current Complaint. The Complaint filed an amended Complaint on April 3, 2023, including comments on the consolidation.

On March 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On March 28, 2023, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain names
which differed from the named Respondent (Not yet disclosed) and contact information in the Complaint.
The Center sent an email communication to the Complainant on March 30, 2023, providing the registrant
and contact information for multiple underlying registrants disclosed by the Registrar, and inviting the
Complainant to either amend the Complaint adding the Registrar-disclosed registrants as the formal
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 12, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2023.

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The Center appointed Evan D. Brown as the sole panelist in this matter on May 5, 2023. 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 in the insurance business. It owns the trademark UNIQA which it has registered in multiple jurisdictions (see Austrian Trademark Registration No. 179703, registered on December 22, 1998, and European Union Trademark Registration No. 1132174, registered on August 16, 2000). According to the WhoIs records, the disputed domain name <uniqa-al.com> was registered on October 11, 2022, and <uniqa-al.org> was registered on January 12, 2023. The disputed domain names do not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names, and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel finds that all three of these elements have been met in this case.

A. Procedural Issue: Consolidation of Multiple Respondents

There are two named Respondents (two underlying registrants disclosed by the Registrar) – one for each of
the disputed domain names. The Complainant requests that both be consolidated into this matter.

Consolidation is proper, so the Complainant’s request for consolidation is granted.

Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple
domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules
provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with
due expedition”. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2, summarizes the consensus view of UDRP panels on the
consolidation of multiple respondents and provides that where a complaint is filed against multiple
respondents, panels consider whether the domain names or corresponding websites are subject to common
control, and whether the consolidation would be fair and equitable to all parties.

The record indicates the disputed domain names are under common control. The following facts support this conclusion:

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- The domain names share the identical second-level domain “uniqa-al” and differ only in their use of
different respective generic Top-Level Domains (“gTLDs”) “.com” and “.org”;

- The disputed domain names were registered through the same registrar (WEDOS Internet, a.s.) only a
few months apart;

- The Registrant addresses for both disputed domain names are in Italy;

- Both disputed domain names are hosted on the same name servers; and

- There is reason to believe that the Respondents provided bogus contact information. A provided
physical address does not appear to exist, and the email address used for registration does not
appear to match the identity of the corresponding named Respondent.

The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. here.

B. Identical or Confusingly Similar

This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain names are identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
UNIQA mark by providing evidence of its trademark registrations.

The disputed domain names incorporate the UNIQA mark in its entirety with the characters “-al”, which do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s UNIQA mark. See WIPO Overview 3.0, section 1.8. The UNIQA mark remains sufficiently recognizable for a showing of confusing similarity under the Policy.

The Panel finds that the Complainant has established this first element under the Policy.

C. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondents lack rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondents (with the burden of proof always remaining with the Complainant).

On this point, the Complainant asserts, among other things, that the Complainant has not licensed or otherwise permitted the Respondents to use any of the Complainant’s trademarks, and that the current non- use of the disputed domain names does not “imply potential legitimate interests of the Respondent”.

The Panel finds that the Complainant has made the required prima facie showing. The Respondents have not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondents’ favor. Accordingly, the Panel finds that the Complainant has established this second element under the Policy.

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D. Registered and Used in Bad Faith

The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith.

Because the Complainant’s UNIQA mark is registered in multiple jurisdictions (including Italy, where the Respondents appear to be located), and because there is evidence that the mark is well known, the Panel finds it likely that the Respondents were aware of the UNIQA mark when they registered the disputed domain names. In the circumstances of this case, without the benefit of any explanation whatsoever from the Respondents as to a possible good faith use of the disputed domain names, such a showing is sufficient to establish bad faith registration of the disputed domain names.

The circumstances also demonstrate bad faith use of the disputed domain names in terms of the Policy. Where a disputed domain name is “so obviously connected with such a well-known name and products […] its very use by someone with no connection with the products suggests opportunistic bad faith”. See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226. Furthermore, from the inception of the UDRP, panels have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.

The Panel finds that the Complainant has established this third element under 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 names <uniqa-al.com> and <uniqa-al.org> be transferred to the

Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: May 16, 2023