WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Ideacog LLC
Case No. D2007-1217
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A., Turino, Italy, represented by Studio Legale Perani.
The Respondent is Ideacog LLC, South Carolina, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2007. On August 20, 2007, the Center transmitted by email to GoD, Inc a request for registrar verification in connection with the domain name at issue. On August 24, 2007, GoD 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”), 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 August 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2007.
The Center appointed Mary Padbury as the sole panelist in this matter on October 5, 2007. 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. The Panel extended the decision due date to November 7, 2007.
4. Factual Background
The Complainant is an Italian banking group. Intesa Sanpaolo is the name of the company resulting from a merger effective January 1, 2007, between Banca Intesa S.p.A and Sanpaolo IMI S.p.A., two Italian banking groups. The Complainant is now a leading European banking group with market capitalization exceeding 70 billion euro, 5,500 branches in Italy and 1,400 branches in Central Eastern Europe and an international network specializing in supporting corporate customers in 34 countries particularly in the Mediterranean and those areas where Italian companies are most active such as the United States of America, Russian Federation, China and India.
The Complainant is the owner of Italian Trademarks No. 816033 INTESA & Device registered as of April 9, 1998, for goods in Classes 9 and 16 and services in Classes 36, 38, 41 and 42, Community Trademark No. 2803773 for INTESA registered as of August 7, 2002 for services in Class 36, International Trademark No. 793367 for INTESA granted on September 4, 2002 for services in Class 36, Italian Trademark No. 818814 for BANCA INTESA registered as of December 18, 1997 for goods in Classes 9 and 16 and services in Classes 36, 38, 41 and 42, Community Trademark No. 779 793 for BANCA INTESA registered as of March 24, 1998 for goods in classes 9 and 16 and services in Classes 36, 38, 41 and 42, International Trademark No. 831572 for BANCA INTESA granted on June 24, 2004, for services in Class 36 and US Trademark No. 2894502 for INTESA registered as of April 23, 2003 for services in Class 36.
The domain name in issue was registered on April 8, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the domain name, is confusing similar to the trademarks BANCA INTESA and INTESA in which the Complainant has rights. It notes that the sole difference is the use of the word “bank”, which is an English translation of the Italian term “banca” and submits that the word “Intesa” should be the most relevant part of the comparison and refers to the decision in Banca Intesa S.p.A. v. Fahri Dogan Bato, WIPO Case No. D2006-0509 where the Panel found that “the word for a bank is similar in many languages, the more so phonetically. The word is also highly generic and of little distinctive value. The focus therefore is on the distinctive ‘INTESA’ component of the Complainant’s trademark and the ‘intesa’ component of the domain name, which are clearly identical”.
The Complainant contends that the Respondent has no rights or legitimate interest in respect of the domain name. It notes that the domain name does not correspond to a trademark registered in the name of the Respondent and, to the best of the Complainant’s knowledge, is not a name by which the Respondent is commonly known. The Complainant questions whether the Respondent is using the domain name in connection with a bona fides offering of goods or services and notes that it is connected to a website sponsoring several banking and financial services, including those of the Complainant’s competitors and for services for which the Complainant’s INTESA trademarks are registered and used.
Lastly, the Complainant contends that the domain name was registered and is being used in bad faith. The Complainant notes that the domain name is connected to a website sponsoring banking and financial services. Therefore, Internet users, while searching for information on the Complainant’s services are confusing led to the websites of the Complainant’s competitors sponsored on the website of the Respondent. The Complainant relies on Panel decisions which have found that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitutes bad faith under the Policy. The Complainant contends that the Respondent gains commercially from being remunerated for sponsoring activity.
B. Respondent
The Respondent did not reply to the Complainant’s contentions by the due date for a Response of September 17, 2007. The Respondent did send an email to the Center and the Complainant stated October 30, 2007 which provided as follows:
To All:
I wish to apologize to Banca Intesa and WIPO for owning the domain name . I acquired this domain 4 months ago through a TDNAMauction. I was attracted to this domain as it contained the name bank and using translation software, I learned that intesa meant “understanding”. The domain further listed traffic of 20 visitors a month.
I did not register this domain originally. I acquired on a whim --- no predetermined thought other than described above.
I have not been able to point the domain to any other server and thus I have changed the key words on the parking service to “Great Wall of China”.
The Panel has decided to exercise its discretion not to have regard to this document which was filed after the date for Response and the due date for decision.
6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. The Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to the trademarks INTES and BANCA INTESA. The domain name incorporates the Complainant’s trademark INTESA and the addition of the word “bank”, which is an English translation of the Italian word “banca”, does not preclude confusion given that the word for bank is similar phonetically in both languages (see case Banca Intesa S.p.A. v. Fahri Dogan Bato, WIPO Case No. D2006-0509).
B. Rights or Legitimate Interests
The Panel must decide whether the Respondent has any rights or legitimate interests in respect of the domain name. In doing so, regard may be had to circumstances which might demonstrate rights or legitimate interests to the domain name as follows:
(i) before notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the Respondent, making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the contention of the Complainant that the Respondent’s use of a domain name which is confusingly similar to the Complainant’s trademarks for overlapping services is not bona fide. There is no evidence that the Respondent, as an individual, business of other organization has been commonly known by the domain name. It is apparent that the Respondent’s use is commercial. As such, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Panel is satisfied that the domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that the respondent has registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name: or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in domain name in a corresponding domain name, provided the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product of service on your website or location.
There is no evidence of the conduct in (i), (ii) and (iii) above. In relation to paragraph (iv), it would appear that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the website or location of a product or service on the website or location. Accordingly, the Panel finds evidence of registration and use in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Mary Padbury
Sole Panelist
Dated: November 13, 2007
Full & Egal Universal Law Academy