WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Marco Schiappacassa
Case No. D2008-0788
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Marco Schiappacassa, Rimini, Italy
2. The Domain Name and Registrar
The disputed domain names are , ; and (hereinafter collectively the “Domain Names”).
They are all registered with GoD, Inc. (hereinafter the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2008. On May 20, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with each of the Domain Names.
On May 21, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all Domain Names 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2008.
The Center appointed Anna Carabelli as the sole panelist in this matter on July 2, 2008. 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 among the top banking groups in Europe as a result of the merger between two major Italian banks (Banca Intesa and Sanpaolo IMI) announced in August 2006 and accomplished in January 2007 (see Annexes C, D and E to the Complaint).
The Complainant has provided evidence of a number of trademark registrations incorporating the words INTESA, BANCA INTESA and SAN PAOLO in connection with various products and services, including banking and insurance services, namely:
- Community trademark registration No. 2803773 INTESA, filed on August 7, 2002 and granted on November 17, 2003, in connection with the services of class 36;
- Italian trademark registration No. 818814 BANCA INTESA, filed on December 18, 1997 and granted on June 20, 2000, in connection with products of classes 9 and 16 and services of classes 36, 38, 41 and 42;
- Community trademark registration No. 779739 BANCA INTESA, filed on March 24, 1998 and granted on November 15, 1999, in connection with products of classes 9 and 16 and services of class 36;
- Community trademark registration No. 5302377 BANCA INTESA SANPAOLO, filed on September 8, 2006 and granted on July 6, 2007, in connection with services of classes 35, 36 and 38;
- Community trademark registration No. 122309 SANPAOLO, filed on April 1, 1996 and granted on May 25, 1998, in connection with the services of class 36.
Upon the announcement of the merger in August 2006, the company resulting therefrom was referred to as SANINTESA in part of specialized press (Annexes F, M and N), this name being a combination of the words SAN and INTESA which are included in the names and trademarks of the two merging companies, respectively SAN PAOLO IMI and BANCA INTESA.
On October 13, 2006, the Respondent registered the domain name which, until March 19, 2008 was connected to a web page containing several links to web sites sponsoring banking and financial services, also offered by Complainant’s direct competitors (Annex G)
On early March, 2008, the Complainant sent the Respondent Mr. Schiappacassa a cease and desist letter requesting that the domain name be transferred to the Complainant (Annex H). On March 24, 2008, the Respondent replied that the domain name was not infringing on the Complainant’s trademark rights; however the Respondent was available to consider a “fair” proposal taking into account all expenses borne by the Respondent “for the registration of the domain name, the web space, handling of the server, electronic post and renewal of related services” (Annex I).
Following the above correspondence, the domain name is presently connected to a page with the heading “BANCA SANINTESA – BANCA DELL’INTESA SANITARIA” (literally “bank of the health-care arrangement”) containing various generic information on health-care (Annex J).
On March 21, 2008, the Respondent registered three additional domain names containing the name “SANINTESA”, i.e: , and . The above domain names are connected to web pages containing several links to web sites sponsoring banking and financial services, also by Complainant’s direct competitors (see printouts of web pages corresponding to the above mentioned Domain Names, dated May 15, 2008- Annex K).
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
- the Complainant is the owner of several trademark registrations for the names INTESA and SANPAOLO;
- the Domain Names are confusingly similar to the Complainant’s trademarks, being a combination of the trademarks BANCA INTESA SANPAOLO, INTESA and SANPAOLO, as confirmed by the fact that upon the announcement of the merger between Banca Intesa and San Paolo IMI, the company that would result therefrom was referred to as SANINTESA in part of specialized press;
- the Respondent has no rights in or to the Domain Names under n
