WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Lazlo Tokies
Case No. D2007-1870
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A., Italy, represented by Studio Legale Perani, Italy.
The Respondent is Lazlo Tokies, of United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Abacus America Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2007. On December 18, 2007, the Center transmitted by email to Abacus America Inc. a request for registrar verification in connection with the domain name at issue. On December 19, 2007, Abacus America Inc. 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 December 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2008.
The Center appointed Dan Hunter as the sole panelist in this matter on January 24, 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
A. The Complainant and its Mark
The Complainant is an Italian banking group that trades under the names “Banca Intesa” and operates in Europe, the United States of America, Russian Federation, China, and India. It has a market capitalization exceeding 70 billion euro. It holds trademark registrations for BANCA INTESA in Italy (Italian trademark registration n. 818814, granted on June 20, 2000, in connection with the products of classes 9, 16 and the services of classes 36, 38, 41 and 42), the European Union (Community trademark registration n. 779793 BANCA INTESA, filed on March 24, 1998 and granted on November 15, 1999, in connection with the products of classes 9, 16 and the services of classes 36, 38, 41 and 42) and as an international mark pursuant to the Madrid Agreement and Protocol (International trademark registration n. 831572 BANCA INTESA, granted on June 24, 2004, in connection with the services of class 36.).
B. The Respondent
The Respondent appears to be a citizen of the United States of America, resident in New York. As no Response was filed, nothing further is known about the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the Respondent’s domain name is identical or confusingly similar to the Complainant’s mark. Specifically, the Complainant asserts (in pertinent part):
(1) The domain name exactly reproduces the trademark BANCA INTESA. The sole difference – anyway negligible - is represented by the addition of the generic term “web”, which is commonly used in Internet language.
The Complainant asserts that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainant asserts (in pertinent part):
(1) The Respondent has no rights on the domain name since the last does not correspond to a trademark registered in the name of Lazlo Tokies. The Complainant has a worldwide trademark watching service on the words “banca intesa” and no trademark covering the words “banca intesa”, in the name of the Respondent, has been detected.
(2) The domain name at stake does not correspond to the business name of the Respondent and, according to our knowledge, Lazlo Tokies is not commonly known as “Bancaintesaweb”.
(3) The domain name is not connected to any web sites, by now, so it is not used for any bona fide offering or other legitimate purposes.
The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainant asserts (in pertinent part):
(1) The Internet domain name is not connected to any web sites, by now. Nonetheless, several WIPO panelists’ decisions stated that, in particular circumstances, even the “passive holding” of a domain name may represent a registration and use in bad faith as required by paragraph 4(a)(iii) of the Policy. The circumstances recognized in the leading case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
(2) The risk of a wrongful use of the domain name under consideration is even higher in the present case, since the Complainant, during the last year, has already been targeted by some cases of ‘phishing’. Such a practice consists of attracting the customers of a bank to a web page which imitates the real page of the bank, with a view to having customers disclose confidential information like a credit card or bank account number, for the purpose of unlawfully charging such bank accounts or withdrawing money out of them. It happened that some clients of Intesa Sanpaolo have received e-mail messages asking, by the means of web pages which were very similar to the Intesa Sanpaolo’s ones, the sensitive data of the clients, like user identification, password etc. Then, some of the clients have been cheated of their savings.
(3) There is no other possible legitimate use of the domain name . The sole further aim of the Respondent might be to resell the domain name at issue to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, according to paragraph 4(b)(i) (“circumstances indicating that you have registered or you have acquired 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 of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”).
Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the namespace. Paragraph 4(a) of the Policy requires a Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:
1. The Complainant has rights in a trade or service mark, with which the Respondent’s domain name is identical or confusingly similar (Paragraph 4(a)(i)); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4(a)(ii)); and
3. The Respondent registered and is using the domain name in bad faith (Paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the disputed domain name is identical or confusingly similar to the mark.
The Complainant has provided the registration documents for its various BANCA INTESA marks registered in Italy, the European Union, and elsewhere. The Panel concludes that the Complainant, as registered owner of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4(a)(i).
The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is confusingly similar to the registered marks, because it comprises the trademark, together with the generic Internet-related term “web” which does not change the sense that the domain name is related to the marks in question. As is now well-established, the addition of the top level domain does not change the meaning of the name. Hence the Panel concludes that the domain name is, for the purposes of the Policy, confusingly similar to the Complainant’s marks.
The Complainant has therefore shown that it has the appropriate rights in a trademark, and that the domain name is confusingly similar to this mark. The Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4(a)(ii) of the Policy. The Respondent has provided no Response and there is no evidence of any of the examples of rights or legitimate interests which are provided in paragraph 4(c) of the Policy. Further, the evidence of the Complainant’s widespread use of the BANCA INTESA mark lends weight to the conclusion that there should be no finding of legitimate interest on the part of the Respondent in this case.
The Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant asserts that the Respondent has registered and is using the domain name in bad faith, as required under paragraph 4(a)(iii) of the Policy. It relies on the well-established principle derived from the Telstra case, that under certain conditions the registration of a confusingly similar domain name will be sufficient to satisfy the dual requirements of “registration and use” under paragraph 4(a)(iii). This Panel accepts the principle from Telstra, and concludes that the salient elements from that case are also found here. That is, the Complainant’s trademark has a strong reputation and is widely known; the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name; the Respondent has taken active steps to conceal its true identity and has failed to provide an accurate address for contact purposes; and it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
The Complainant has therefore satisfied the requirement of paragraph 4(a)(iii) of the Policy.
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.
Dan Hunter
Sole Panelist
Dated: February 7, 2008
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