WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. Hu Li Case No. D2009-0909 1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Hu Li of Shanghai, People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2009. On July 8, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On July 9, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 July 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 30, 2009.
The Center appointed Alexandre Nappey as the sole panelist in this matter on August 10, 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
The facts related are based on the Complainant's submission.
Intesa Sanpaolo S.p.A. is a leading Italian banking group, resulting from the recent merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.
It has more than 6,500 branches and almost 12 million clients.
The Complainant's international network specialised in supporting corporate customers is present in 34 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, Russia, People's Republic of China and India.
Links Sanpaolo refers to a bundle of services of remote online banking offered by the group Intesa Sanpaolo S.p.A.
Intesa Sanpaolo is the owner of several trademark registrations LINKS SAN PAOLO, including particularly:
- Italian trademark application No. TO2006C002813 LINKS SANPAOLO stylized, filed on October 25, 2006 in connection with the products of class 9 and with the services of class 36.
- Italian trademark registration No. 910025 SANPAOLO, filed on February 12, 2002, and registered on September 26, 2003 in connection with the services of class 36.
- Community trademark registration No. 122309 SANPAOLO, filed on April 1, 1996 registered on May 25, 1998 and duly renewed on April 2, 2006 in connection with the services of class 36.
- International trademark registration No. 814852 SANPAOLO, granted on September 26, 2003 in connection with the services of class 36.
All changes related to the Complainant's name have been duly recorded before the competent trademark offices.
Moreover, the Complainant is also the registrant for the domain name .
The disputed domain name appears to have been registered by the Respondent on January 3, 2009. 5. Parties' Contentions A. Complainant
According to the Complainant, the disputed domain name is confusingly similar to the Complainant's trademark. In fact, it exactly reproduces the trademark SANPAOLO, with the addition of the prefix “links”, which is a generic term, also in consideration of the fact that the Complainant is a bank.
The disputed domain name is also strictly identical to the trademark LINKS SAN PAOLO, which the Complainant filed application for in 2006, and that it has been using to promote its online banking services for at least three years.
Neither the Respondent nor anyone else within the context has rights or legitimate interests in the disputed domain name or has been given permission to use it, since the domain name does not correspond to a trademark registered or the name of the Respondent, nor is the Respondent commonly known by LINKS SAN PAOLO.
The Complainant underlines that the Respondent does not make any noncommercial or fair use of the domain name in issue.
At last the Complainant asserts that the disputed domain name has been registered in bad faith primarily for the purpose of selling for valuable consideration in excess of out-of-pocket costs. In the meantime, the domain name is used to resolve to a pornographic website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences there from as it considers appropriate”.
Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above cited elements are the following. A. Identical or Confusingly Similar
The Complainant has provided substantial evidence of its rights and wide use of the mark SAN PAOLO. The trademark is however not strictly identical to the disputed domain name .
The Panel has to determine whether the domain name is confusingly similar to the trademark SANPAOLO the Complainant holds.
First, the Complainant's trademark is incorporated in its entirety into the disputed domain name. It is observed that previous panel decisions have considered that such domain names may be confusingly similar to such marks, despite the addition of other words. See Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095.
Second, the addition of generic words to trademarks has been considered in numerous UDRP decisions not to avoid confusing similarity between a domain name and a trademark.
The disputed domain name combines the Complainant's trademark with the generic term “links”, which is used by the Complainant to describe its online banking services.
The Panel notes in passing that the Complainant also filed application for the trademark LINKS SAN PAOLO in Italy in 2006, and that this application is currently still pending.
At last it is pointed out that the Complainant holds rights in the domain name (Italy), to which the disputed domain name is identical except for the top level domain.
Therefore the Panel is satisfied that the Complainant owns rights in the SANPAOLO trademark and that it has made commercial public use of the unregistered trademark LINKS SAN PAOLO, and finds that the disputed domain name is confusingly similar to the Complainant's trademarks. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is submitted that the Respondent has no connection or affiliation with the Complainant, who has not licensed or otherwise authorized the Respondent to use or apply for any domain name incorporating the Complainant's trademarks.
The Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the disputed domain name.
The Respondent does not appear to make any legitimate use of the domain name for noncommercial activities. To the contrary, the Respondent is, for his own commercial gain, diverting Internet users looking for the Complainant's services to a website displaying adult content and pornographic commercial links. Such use cannot be considered bona fide.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy. The Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has to demonstrate both that the disputed domain name has been registered and is being used in bad faith.
The Complainant's documented evidence of its strong reputation in the field of banking leads the Panel to consider that the Respondent was aware of the Complainant and its trademark.
As ruled in numerous cases, registration of a well-known trademark of which a respondent must have been aware may of itself be sufficient proof of registration in bad faith. Banca Intesa S.p.A. v. Fahri Dogan Bato,WIPO Case No. D2006-0509.
Furthermore, the Panel notes in the WhoIs information available that the disputed domain name is for sale for an amount in excess of any documented out-of-pocket cost directly related to the domain name. The WhoIs extract displayed on the registrar website shows: “DOMAIN IS FOR SALE - USD 999”, leading the Panel to the conclusion that the Respondent initially registered the domain name for speculation purposes.
It is also demonstrated that the disputed domain name points to a website displaying adult content and commercial links to promote both pornographic content and services offered by Complainant's competitors.
The Complainant claims that such use generates commercial gain for the Respondent, who is trading on the reputation of the Complainant.
The Panel is of the opinion that the connection between the disputed domain name and the use of the website at the disputed domain name displaying pornographic content and links to the Complainant's competitors websites clearly suggests that the domain name is used in bad faith, a fortiori when the domain name is similar to a widely-known trademark. See Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.
Therefore, the Panel is satisfied that the requirement of paragraph 4(a)(iii) of the Policy is met: the Respondent has registered and is using the domain name 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.
Alexandre Nappey
Sole Panelist
Dated: August 24, 2009
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