Decision for dispute CAC-UDRP-107760

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the registered owner of:

• The Italian national trademark No. 1290783 (ESSELUNGA with device) filed on12 March 1980, in classes 3, 6, 8, 9, 16, 21, 28, 29, 30, 31, 32, 33 and 42;

• The Italian national trademark No. 1480754 (ESSELUNGA with device) filed on 9 April  2002, in classes 1–45; and

• The European Union trademark No. 013719745 (ESSELUNGA) filed on 9 February 2015, in classes 1, 3, 5, 6, 8, 9, 16, 21, 24, 25, 28, 29, 30, 31, 32, 33 and 35.

("Complainant's Trademarks")

The disputed domain name <esselunga-punti.help> was registered on 8 May 2025.

As the Respondent did not file any response to the complaint, the Panel took into account the following facts asserted by the Complainant (and supported by the documentary evidence submitted by the Complainant) and unchallenged by the Respondent:

(a) the Complainant is the Italian leader in the retail field, founded in 1957, with over 8,3 billion EUR of total revenues and 185 points of sales;

(b) the Complainant is the owner of Complainant’s Trademarks;

(c) the Complainant owns various domain names including the same verbal element ESSELUNGA; and

(d) there is no website operated under the disputed domain name.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy ("UDRP" or "Policy").

For details, please see "Principal Reasons for the Decision".

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

For details, please see "Principal Reasons for the Decision".

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

For details, please see "Principal Reasons for the Decision".

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or revoked:

(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.

The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in these proceedings.

RIGHTS

The disputed domain name is confusingly similar to Complainant’s Trademarks as it includes their distinctive word element "ESSELUNGA" in its entirety and the addition of the non-distrinctive term "punti" (meaning "points" in Italian) does not diminish such confusing similarity.

For the sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the ".help") must be disregarded under the identity / confusing similarity test as it is a necessary technical requirement of registration.

Therefore, the Panel concludes that the Complainant satisfied the requirement under paragraph 4(a)(i) of the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (please see, for example, WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

There is no website under the disputed domain name. As asserted by the Complainant (and unchallenged by the Respondent), the Respondent is not commonly known by the disputed domain name. Neither is the Respondent in any way related to the Complainant. The Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a) (ii) of the Policy).

Therefore, the Panel concludes that the Respondent does not have any right or legitimate interest to the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

BAD FAITH

The Complainant has not presented evidence establishing any of the typical cases of bad faith in registration and use of the domain name listed in paragraph 4(b) of the Policy. Nevertheless, such list is not exhaustive and bad faith in registration and use of the disputed domain name may also be found in other cases taking into account all relevant facts and circumstances of the case at hand (please see the WIPO case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows <telstra.org> and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Section 3.2).

Here, the Panel noted that the Complainant is a well-known Italian retail chain founded in 1957 and the Complainant’s Trademarks enjoy good reputation.  The denomination “ESSELUNGA” has no common meaning in the English language (as the language of the global trade) or Italian language (as the language of the country where the Complainant operates), it clearly points out to the Complainant (and not much else) when entered into the internet search engines. Hence the Panel is convinced that such a denomination is clearly distinctive to the Complainant. Distinctiveness and reputation of Complainant’s Trademarks have already been established by the Panels in a number of previous cases where Complainant has been subjected to cybersquatting (such as WIPO case no. D2017-2107, Esselunga S.p.A. v. Carla Giorgi, <esselungaspa.com> or WIPO Case No. D2018-0967, Esselunga S.P.A. v. Wang Lian Feng, <esselunga.tech>). In this respect, the Panel also deems it appropriate to refer to paragraph 2 of the Policy under which it is the responsibility of the Respondent as the registrant of the disputed domain name to determine whether its registration infringes or violates someone else's rights.

In light of the above circumstances, the Panel failed to find any plausible good faith reasons for registration and use of the disputed domain name by the Respondent. The Respondent has not submitted any response to the Complaint and therefore has not presented any facts or arguments that could counter the above conclusions of the Panel. Also the Respondent registered the disputed domain name under an apparently false name, which further supports the bad faith of the Respondent in registration and use of the disputed domain name. As a result, the Panel holds that the disputed domain name has been registered and is being used by the Respondent in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).