WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. Xiaole Zhang Case No. D2009-0820 1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy.
The Respondent is Xiaole Zhang of Hohhot, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2009. On June 19, 2009, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On June 24, 2009, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the disputed domain name and providing the contact details for the disputed domain name. On June 25, 2009, the Center transmitted an email to the parties in both English and Chinese language concerning the language of the proceeding. On June 26, 2009, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not file any submissions with respect to the language of the proceeding by the due date.
The Center has verified that the Complaint satisfies 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 proceeding commenced, on July 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for the Response was July 23, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent's default on July 24, 2009.
The Center appointed Sebastian Hughes as the sole panelist in this matter on July 30, 2009. 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
The Complainant is an Italian company and the owner of international trade mark registration No. 831572 for the trade mark BANCA INTESA in Class 36 covering several countries, including China, and registered since June 24, 2004.
The Complainant is also the owner of the domain name comprising the trade mark BANCA INTESA. B. The Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on September 26, 2006. 5. Parties' Contentions A. The Complainant
The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.
The Complainant is the leading banking group in Italy with approximately 6,500 branches, approximately 11 million customers and approximately 18% market share. The Complainant also has a strong presence in Central and Eastern Europe, with approximately 1,900 branches and over 8 million customers. The Complainant also operates an international network of branches to support its corporate customers in 34 countries, including the United States of America, the Russian Federation, China and India.
(1) The Disputed Domain Name is Confusingly Similar to the Complainant's Mark
The disputed domain name is almost identical to the Complainant's trade mark BANCA INTESA and to the Complainant's domain name .
The use of the TLD “.mobi” does not serve to distinguish the disputed domain name as the Complainant offers its customers mobile phone based Internet and phone banking services.
(2) The Registrant has no Rights or Legitimate Interests in the Disputed Domain Name
The Respondent has no trade mark rights in respect of the disputed domain name, the disputed domain name is not the name of the Respondent, and the Respondent is not commonly known by the disputed domain name.
The Respondent is not making any fair or non-commercial use of the disputed domain name.
(3) The Registrant Registered and is Using the Disputed Domain Name in Bad Faith
The Respondent has intentionally attempted to gain, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website.
The disputed domain name is not being used by the Respondent for any bone fide offering of goods or services. The disputed domain name is connected to a website sponsoring, amongst other things, banking and financial services, in respect of which the Complainant's BANCA INTESA trade mark has been registered.
Therefore, Internet users, while searching for information regarding the Complainant's services, are confusingly led to websites of the Complainant's competitors, through links from the Respondent's website to which the disputed domain name is resolved.
The Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant's trade mark. Registration and use of a domain name to re-direct Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.
The current use of the disputed domain name, which allows access to websites of the Complainant's competitors, causes great damage to the Complainant, by misleading the Complainant's present customers, and loss of potential new customers.
The Respondent's commercial gain is evident, since it is obvious that the Respondent's sponsoring activity is being remunerated.
In addition, it can not be excluded that the disputed domain name has been registered with even more wrongful purposes. The Complainant has in recent years been targeted by some cases of phishing. This 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. Some customers of the Complainant have in this manner been cheated out of their savings. In this case, it cannot be excluded that the Respondent registered the disputed domain name with the “phishing” purpose, to induce and divert the Complainant's legitimate customers to the Respondent's website in order to steal their money. B. The Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving disputed domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The content of the website connected to the disputed domain name shows a lot of expressions in English language;
(2) The Respondent's behaviour is a clear demonstration of its comprehension of the English language;
(3) The Complaint was written in English language properly in order to comply with the Respondent's choice of using this language in the website linked to the disputed domain name.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
On June 24, 2009, HiChina Zhicheng Technology Ltd transmitted by email to the Center its verification response confirming that the language of the registration agreement is Chinese.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding. Further, the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding.
Having considered all the matters above, this Panel determines under paragraph 11(a) that English shall be the language of the proceeding. 6.2 Decision
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The domain name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark BANCA INTESA (“the Trade Mark”) acquired through use and registration.
The disputed domain name comprises the Trade Mark in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(1) before any notice to the Respondent of the dispute, 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
(2) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(3) the Respondent is 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 trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The disputed domain name appears to be linked to a commercial link farm website offering links to websites of the Complainant's competitors, or a domain name parking service (Owens Corning v. NA,WIPO Case No. D2007-1143).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the disputed domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
By virtue of the use of the Trade Mark in the disputed domain name and on the website to which the disputed domain name is resolved, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent's website to which the disputed domain name is resolved.
The disputed domain name appears to be resolved to a link farm providing links to the websites of the Complainant's competitors. However, none of these third party links appear to be active. There is therefore no evidence that the Respondent is currently earning revenue by use of a “pay-per-click” or similar service. Similarly, despite the assertions of the Complainant, there is no evidence that the Respondent is engaging in, or intends to engage in, illegal “phishing” activities. At present there is therefore no evidence that the Respondent is making any commercial gain by virtue of its registration and use of the disputed domain name.
However, the Panel finds, in all the circumstances, the requirement for bad faith has been made out, for the following reasons:
(1) the website operated by the Respondent appears at first glance to be a commercial link farm site, and makes use of both the Trade Mark and trade marks of the Complainant's competitors;
(2) it is reasonable to infer that the Respondent may in future commence active use of the website as a commercial link farm, or otherwise, for commercial gain;
(3) the Trade Mark is well known in the banking industry;
(4) the Respondent lacks any rights in the Trade Mark; and
(5) no plausible scenario can be foreseen in which the Respondent might come to use the disputed domain name in good faith.
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: August 6, 2009
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