WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. A Domain Privacy Host Master/Transure Enterprise Ltd Case No. D2009-1174 1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Studio Legale Perani, Italy.
The Respondent is A Domain Privacy Host Master/Transure Enterprise Ltd of Beaumaris, Australia and Tortola, United Kingdom of Great Britain and Northern Ireland, respectively. 2. The Domain Names and Registrar
The disputed domain names and are registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2009. On September 4, 2009, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain names. On September 7, 2009, A, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 15, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 18, 2009. The Center verified that the Complaint together with the amendment to 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 September 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 13, 2009.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 28, 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 Complainant is a leading Italian banking group, resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. The Complainant has a market capitalisation exceeding 70 billion EURO, with an average market share in Italy of approximately 20% in all business areas (retail, corporate and wealth management). Based on a network of approximately 6,500 branches throughout the country, the Complainant offers its services to approximately 12 million customers.
The Complainant is the owner of the following registrations for the trademark SANPAOLO:
- Community trademark registration no. 122309 SANPAOLO, filed on April 1, 1996 and granted on May 25, 1998, in class 36;
- Community trademark registration no. 3252764 SANPAOLO (figurative mark), filed on July 2, 2003 and granted on January 27, 2005, in class 36;
- Community trademark registration no. 5686696 INTESA SANPAOLO IMPRESE, filed on February 14, 2007 and granted on January 8, 2008, in classes 35, 36 and 38;
- International trademark registration no. 814852 SANPAOLO (figurative mark), registered on September 26, 2003, in class 36.
The disputed domain names were registered by the Respondent on December 8, 2008 and December 9, 2008 and are connected to websites sponsoring, among others, banking and financial services (such as online payments, credit card applications and life insurance). 5. Parties' Contentions A. Complainant
The disputed domain names and contain the distinctive term “sanpaolo” with the addition of the generic terms “impresa” and “banco”, respectively, which have no distinctive power in the context of the domain names. In particular, the term “impresa”, meaning in Italian company/corporation, evokes one of the specific fields in which the Complainant is involved, financial assistance to corporate business. It is important to underline that the Complainant is the owner of the following domain names, registered between 2003 and 2006: for the top level domains “.com”, “.biz”, “.net”, “.info”, “.eu”, “.it” and “.org”. The mere substitution of the letter “e” with “a” in the end of the domain name is a negligible difference and not sufficient to change the impression of confusingly similarity. As regards the disputed domain name , “banco” is also a generic word, meaning “bank” in Italian. Given that the Complainant's trademarks are distinctive of its business, the inclusion of this word in the disputed domain name creates a risk of confusion for the consumers. The disputed domain names are thus confusingly similar to the Complainant's marks.
Since the disputed domain names do not correspond to any trademark registered by the Respondent or to the Respondent's name and there are no indications of any fair or noncommercial use of the disputed domain names, the Respondent has no rights or legitimate interests in respect of the disputed domain names.
As the Respondent's website consists of links to banking and financial services, it is obvious that the Respondent is attempting to attract Internet users, for commercial purposes, to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks as to the source or endorsement of the Respondent's website. It is also evident that the Respondent was aware of the Complainant's trademarks at the time of registration of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for the Complaint to succeed in relation to the disputed domain name, the Complainant must prove that:
(i) The disputed domain names are 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 disputed domain names; and
(iii) The disputed domain names have been registered in bad faith and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names and consist of the Complainant's trademark SANPAOLO with the addition of the generic terms “impresa” and “banco”, respectively. The mere addition of generic terms typically does not dispel the risk of confusing similarity, and in this case the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark.
Furthermore, the term “impresa”, meaning “company” in Italian, evokes one of the specific fields in which the Complainant is operating, financial assistance to corporate business. It should be noted in this connection that the Complainant is the owner of the domain name . As regards the disputed domain name , “banco” is also a generic word, meaning “bank” in Italian. Given that the Complainant's trademarks are distinctive of its business, the inclusion of this word in the disputed domain name creates a risk of confusion for the consumers.
Consequently, the disputed domain names are confusingly similar to the Complainant's mark, and the Complainant has fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under the circumstances of this case, there are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain names.
The Panel holds, also in view of its finding below, that the Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The disputed domain names are connected to websites sponsoring, among others, banking and financial services (such as online payments, credit card applications and life insurance). As a result, the Respondent may generate unjustified revenue for each click-through by online consumers of the sponsored links. It is thus obvious that the Respondent is attempting to attract Internet users, for commercial purposes, to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks as to the source or endorsement of the Respondent's website.
It is also likely that the Respondent was aware of the Complainant's marks at the time of registration, i.e. on December 9, 2008.
Under the circumstances, the Panel finds that the Respondent's conduct constitutes bad faith registration and use, thus fulfilling 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 names and be transferred to the Complainant.
Tobias Zuberbühler
Sole Panelist
Dated: November 4, 2009
Full & Egal Universal Law Academy