{
    "case_number": "CAC-UDRP-103028",
    "time_of_filling": "2020-04-30 16:04:13",
    "domain_names": [
        "esselunga.blog"
    ],
    "case_administrator": "Šárka Glasslová (Case admin)",
    "complainant": [
        "Esselunga S.p.A."
    ],
    "complainant_representative": "Andrea Mascetti (Barzanò & Zanardo Milano S.p.A.)",
    "respondent": [
        "Stefano Breida"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\n\r\nA) The Complainant\r\n\r\n\r\nEsselunga S.p.A. is an Italian retail store, founded in 1957 by Nelson Rockefeller, Bernardo, Guido and Claudio Caprotti, Marco Brunelli, the Crespi family and other Italian associates. It is today the leader in Italy in the retail field, with total revenues amounting to €6.8 billion and more than 150 points of sale. Esselunga is also active through its online website at <www.esselunga.it> and offers a home delivery service at <www.esselungaacasa.it>.\r\n\r\n\r\nB) The Respondent\r\n\r\n\r\nMr Stefano Breida is the Respondent, whose contact details were originally shielded under a privacy protection service but were revealed by the registrar of the disputed domain name after initiation of the present proceeding. The Complainant ascertained that the disputed domain name redirected to a domain parking page.",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings pending or decided which relate to the disputed domain name.",
    "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\n\r\nCOMPLAINANT:\r\n\r\n\r\nA) Disputed domain name's identicality or confusing similarity relative to the Complainant's trademarks (UDRP Para. 4 (a)(i))\r\n\r\n\r\nCiting well-known Decisions in past domain ADR proceedings, the Complainant claims that, disregarding the technically unavoidable addition of the TLD extension, the disputed domain name <esselunga.blog> is identical to its trade marks, as established above, because the disputed domain name stem is comprised solely of \"ESSELUNGA\".\r\n\r\n\r\nB) Absence of the Respondent's rights or legitimate interests (UDRP Para. 4(a)(ii))\r\n\r\n\r\nThe Complainant argues that proving a negative fact is too onerous and is logically less feasible than establishing a positive one and that it suffices for a Complainant to produce only prima facie evidence, whereupon the burden of proof shifts to the Respondent. The examples of past domain name ADR Decisions the Complainant cites in support of its argument are: Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; and Audi AG v. Dr. Alireza Fahimipour, WIPO Case No. DIR2006-0003.\r\n\r\n\r\nThe Complainant denies that the Respondent could have any right or legitimate interest in registering the disputed domain name. In particular, it asserts that Mr Breida is not the Complainant’s dealer, agent, distributor, wholesaler or retailer. Nor is he an entity authorized to register and use ESSELUNGA as a domain name. A search by the Complainant of trade mark databases furthermore revealed no instance of ESSELUNGA having been registered to Mr Breida, while it is very improbable that he could be commonly known as “ESSELUNGA\", considering the Complainant's trademarks, its company name and Mr Breida's own name.\r\n\r\n\r\nThe Complainant in addition states that the disputed domain name is currently inactive and thus not used in connection with a bona fide offering of goods and services and contends that the Respondent is not using it in a legitimate non-commercial or fair manner. It further points out that the brand \"ESSELUNGA\" is a fanciful word, which strengthens the circumstance that the disputed domain name was registered to mislead potential consumers, to tarnish the Complainant’s trade mark and to prevent the Complainant from reflecting its trade mark in a corresponding domain name.\r\n\r\n\r\nThe above thus sufficiently proves the absence of the Respondent's rights or legitimate interest in the disputed domain name.\r\n\r\n\r\nC) Registration and use of the disputed domain name in bad faith (UDRP Paragraphs 4(a)(iii) and 4(b))\r\n\r\n\r\nThe Complainant reiterates that registration of the disputed domain name containing a well-known third party’s trade mark took place without authorization and argues that the Respondent could not have been unaware of this at the time of registration because ESSELUNGA is a well-known trade mark in Italy, where the Respondent is based, and because ESSELUNGA is a fanciful word. A use of the disputed domain name that is unrelated to the Complainant’s activities is therefore inconceivable, an assumption which is further proven by the fact that the disputed domain name is identical to the Complainant’s trade mark and which is supported by previous Panels' findings saying that this is an indicator of registration in bad faith.\r\n\r\n\r\nFurthermore, the disputed domain name was registered long after the filing\/registration of the Complainant’s trademarks.\r\n\r\n\r\nAs far as use in bad faith is concerned, the Complainant states that the Respondent passively holds the disputed domain name. Previous Panels have recognized that passive holding of a domain name can, in certain circumstances, constitute use in bad faith; see, in particular, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel noted there that the question of which circumstances of “passive holding” may constitute use in bad faith cannot be answered in the abstract but may only be determined on the basis of the particular facts of each case, giving close attention to all the circumstances of the Respondent's behaviour that show the Respondent's passive holding amounts to acting in bad faith. With this approach in mind, the Complainant advances the following circumstances as being material:\r\n\r\n\r\n(i) the Complainant’s trade marks have a strong reputation, are highly distinctive and are widely known;\r\n\r\n\r\n(ii) ESSELUNGA is a fanciful word and is strictly related to the Complainant's business (i.e. it is its company name). As a consequence, it is hard to conceive of a use of the disputed domain name which would not infringe the Complainant's rights;\r\n\r\n\r\n(iii) the disputed domain name is not used and, to the best knowledge of the Complainant, it has never been used;\r\n\r\n\r\n(iv) the Respondent's contact details are shielded by a privacy protection service. Previous panels have considered such a circumstance as being an indicator of bad faith in combination with other elements.\r\n\r\n\r\nThe above thus sufficiently shows bad faith registration and use of the disputed domain name.\r\n\r\n\r\nRESPONDENT: NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).",
    "no_rights_or_legitimate_interests": "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).",
    "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown that 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).",
    "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and that there is no other reason why it would be inappropriate to provide a decision.",
    "decision": "Accepted",
    "panelists": [
        "Kevin J. Madders"
    ],
    "date_of_panel_decision": "2020-06-10 00:00:00",
    "informal_english_translation": "The Complainant adduced evidence showing that it is the owner the following trade marks, introduced as specimens from a larger portfolio that it asserts it maintains:\r\n\r\n\r\n1. ESSELUNGA, Italian registration No.1290783 from 12 March to date in Nice Classification System classes 3, 6, 8, 9, 16, 21, 28, 29, 30, 31, 32, 33 and 42.\r\n\r\n\r\n2. ESSELUNGA, EU registration No.013719745, registered on 8 July 2015 in classes 1, 3, 5, 6, 8, 9, 16, 21, 24, 25, 28, 29, 30, 31, 32, 33 and 35.\r\n\r\n\r\nNo evidence was adduced as to the Complainant's registration of a domain name incorporating the above trade mark. However, its website resolving to the domain name <esselunga.it> is mentioned in the Complainant's submissions, as is a further website it operates that resolves to <esselungaacasa.it> (see \"Factual Background\", below).\r\n\r\n\r\nThe Registrant registered the disputed domain name on 6 April 2020.",
    "decision_domains": {
        "ESSELUNGA.BLOG": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}