WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. Transure Enterprise Ltd Case No. D2008-1754 1. The Parties
The Complainant is Intesa Sanpaolo S.p.A., of Torino, Italy, represented by Studio Legale Perani, Milan, Italy.
The Respondent is Transure Enterprise Ltd, of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is which is registered with Above, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2008. On November 18, 2008, the Center transmitted by email to Above, Inc. a request for registrar verification in connection with the disputed domain name. On November 15, 2008, Above, 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” or “UDRP”), 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 November 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 10, 2008
The Center appointed Christian Schalk as the sole panelist in this matter on December 22, 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.
The Panel has review the record and confirms the Complainant's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English. 4. Factual Background
The Complainant is a leading Italian banking group with a market capitalization exceeding 70 billion Euro. Its market share in all Italian banking business areas is approximately 20%. The Complainant offers its services via more than 5,000 branches in Italy and more than 1,400 in Central and Eastern Europe. Its International network specialized in supporting corporate customers is present in 34 countries where Italian companies are active, such as the United States of America, the Russian Federation, the People's Republic of China and India.
The Complainant is owner of several trademark registrations for the term SANPAOLO IMI, such as,
- Italian trademark registration No. 782507 SANPAOLO IMI, filed on March 4, 1999, covering goods in Intl. Class 35, 36 and 42;
- European Community trademark registration No. 1182716 SANPAOLO IMI, filed on May 24, 1999, covering goods in Intl. Class 35, 36 and 42;
- Italian trademark application No. TO2006C0022813 LINKS SANPAOLO filed on October 25, 2006 covering goods in Intl. Class 31;
Furthermore, the Complainant owns more than 40 other trademark registrations and pending applications, which contain the term SANPAOLO in connection with a descriptive term or a logo.
On December 9, 2002, the Complainant registered the domain name which offers services for clients older than 65.
The disputed domain name was registered on April 19, 2008. The disputed domain name is connected to a website containing links offering among others, banking and various financial services, offered even by Complainant's direct competitors. Major parts of the website content are in Italian language. 5. Parties' Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its SANPAOLO IMI trademark. He argues that this domain name reproduces this trademark with the only addition of the generic term “senior” which evokes something reserved to old people. The Complainant points out in this context that the disputed domain name is identical with his own domain name .
The Complainant alleges further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has neither trademark rights nor is commonly known by the term “seniorsanpaolimi”.
Furthermore, the Complainant believes that the disputed domain name is not used for any bona fide offerings since the website to which the domain name is connected offers several banking and financial online services, even from the Complainant's competitors which thus are taking advantage of the Complainant's trademark.
Moreover, the Complainant alleges that the disputed domain name was registered and is being used in bad faith by the Respondent in order to intentionally divert traffic away from the Complainant's website to such websites of the Complainant's competitors. Such behavior causes great damage to the Complainant due to misleading of its clients and loss of potential new ones to his competitors. B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant's contentions. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
It is essential to UDRP proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a Response is not due to any omission by the Center.
Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant's submissions, and all inferences that can reasonably be drawn therefrom (see Bayerische Motorenwerke AG. v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-00001). A. Identical or Confusingly Similar
The Complainant has established trademark rights in SANPAOLO IMI. Therefore, it is clear that the disputed domain name is not identical to any of the Complainant's trademarks.
However, the Panel finds the disputed domain name to be confusingly similar with the Complainant's trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565 and D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002.
In this case, the term “senior” stands for a target audience of the services offered by the Complainant. Therefore, it is likely that the disputed domain name could be understood by Internet users finding on search engines or elsewhere as providing a link to a website belonging to the Complainant or being sponsored by the Complainant and therewith increases the likelihood of confusion (see also Koninklijke Philips Electronics N.V. v. Anpol,WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti,WIPO Case No. D2001-0231). B. Rights or Legitimate Interests
According to the material brought before the Panel, which established the Complainants prima facie case under paragraph 4(a)(ii) of the Policy, and in the absence of a Response to the Complaint, the Panel finds that the Respondent cannot demonstrate rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark. C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(2) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party.
Given the size of the Complainant, its numerous branches in Italy and in many other European countries as well as in the United States of America, the Russian Federation, the People's Republic of China and India, a identical domain name owned by the Complainant and the fact that major parts of the website to which the domain name at issue has been linked to are in Italian language, the Panel finds that the Respondent was aware of the Complainant's trademark when he registered the disputed domain name (see Liseberg AB v. Administration Local Manage Technical, WIPO Case D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain name at issue in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith. Internet users, searching for products of a specific company, for instance, services offered by the Complainant, do often type freestyle addresses that combine trademarks and descriptive words (for instance, “senior” and “sanpaoloimi”) hoping to narrow down their search results. The website to which the disputed domain name resolves, provides links to services which are offered by the Complainant but also by its competitors. Such links could let Internet users believe that this website is either maintained by the Complainant or by a third person who is somehow linked with the Complainant. This is especially the case with persons in the age of above 65 which may have much less experience in the use of the Internet than younger generations. Furthermore, the likelihood for confusion is extremely high because the Complainant uses an identical “.org” – domain name for his services. Since most companies use “.com” domain names for their websites, Internet users may intuitively type in the disputed domain name.
Given the nature of the website deployed by the Respondent, the Panel believes that the only purpose of having registered and subsequently used the disputed domain name was, to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark and services and thus to take advantage also of the Complainant's trademark and its reputation.
The Respondent may benefit directly or indirectly from such confusion, for instance, by receiving “click-through” commissions in accordance with conventional practice on the Internet when customers reach a site through a link on a portal (see also Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231). Furthermore, the Respondent's behavior may also enable others, especially competitors of the Complainant, to take advantage of the fact that Internet users are directed to their website instead of the Complainant's website. The only reason for this would be the infringement of the Complainant's trademark rights by the Respondent which allows a third party to reap the profit of such wrongful conduct (see also Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912).
For all these reasons the Panel finds that the disputed domain name has been registered and is being used 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.
Christian Schalk
Sole Panelist
Dated: January 5, 2009
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