WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. Intesasanpaolo Case No. D2009-1550 1. The Parties
Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Intesasanpaolo of Torino, Italy. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2009. On November 19, 2009, the Center transmitted by email to R a request for registrar verification in connection with the Domain Name. On November 20, 2009, R transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. As the information provided by the registrar appeared to match Complainant's details, on November 24, 2009, the Center sent an email requesting Complainant to confirm whether it had control over the Domain name. On November 25, 2009 Complainant replied informing the Center that it did not have control over the Domain Name and requested the Center to proceed with the case. 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 Respondent of the Complaint, and the proceedings commenced on November 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 21, 2009.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on January 6, 2010. 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
Complainant is a leading Italian banking group. Intesa Sanpaolo is the company resulting from the merger between Banca Intesa and Sanpaolo IMI S.p.A.
Complainant owns several registrations for trademarks that consist of or contain the mark INTESA SANPAOLO.
The Domain Name was registered on April 28, 2009.
Complainant's INTESA SANPAOLO trademark registrations and use predate Respondent's registration of the Domain Name. 5. Parties' Contentions A. Complainant
Complainant claims that:
The Domain Name is almost identical to the trademark INTESA SANPAOLO, except for the addition of the letter “s” in the middle of the trademark.
Respondent's registration of the Domain Name is a case of “typosquatting”.
Respondent has no rights or legitimate interests in respect of the Domain Name.
Complainant has not licensed or otherwise permitted Respondent to use its trademarks or to apply for the registration of the Domain Name.
Before the dispute, Respondent had not been using the Domain Name in connection with a bona fide offering of goods and services.
The Domain Name is registered under the name Intessaanpaolo. Since no company registered as Intesa Sanpaolo S.p.A., other than Complainant, has ever been detected, Complainant contends the Domain Name was registered under a false name.
The Domain Name does not correspond to the actual Respondent's name.
The Domain Name has been registered and is being used by Respondent in bad faith.
Respondent knew of Complainant's trademarks at the time of the registration of the Domain Name.
The circumstances of the registration of the Domain Name (such as usurpation of identity and typosquatting) indicate that Respondent had knowledge of the Complainant's trademark at the time of the registration of the Domain Name.
The Respondent's address as listed in the WhoIs report is false.
Complainant contends that pursuant to the interpretation of the Policy, in cases of passive holding of a domain name, the submission of false information by a respondent is to be considered a circumstance evidencing bad faith in the registration and use of the domain name. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the Domain Name registered by the Respondent be transferred to the Complainant:
1) the Domain Name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
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
Complainant has established that it has prior rights in the trademark INTESA SANPAOLO which is almost identical to the disputed domain name , and has stated that the fact that the Domain Name differs only in the addition of the letter “s” in the middle of the trademark is not sufficient to avoid confusion.
This Panel agrees with Complainant's thesis and with previous UDRP decisions, which affirmed that names with typographical errors maybe confusingly similar to the relevant trademarks. Accordingly, the Panel finds that Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in respect of the Domain Name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, the respondent used or made demonstratable 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;
b) that the respondent is commonly known by the domain name, even if it has not acquired any trademark rights; or
c) that 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 trademark.
Respondent has no connection or affiliation with Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant's trademark. Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the Domain Name. Respondent does not appear to be making any legitimate use of the domain name for non-commercial activities. Moreover, Respondent's data, as indicated in the WhoIs record for the Domain Name, i.e. registrant's name and address, appears to be false. Therefore it is impossible to infer and/or to determine any rights or legitimate interests in the Domain Name by Respondent.
Accordingly, the Panel finds that Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the holder 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 the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's web site or location or of a product or service on the holder's web site or location.
Accordingly, for a complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
This Panel considers that Respondent's use of a slight variation of Complainant's trademark can be regarded as typosquatting. The Panel agrees with Complainant's view that typosquatting itself maybe an inference of bad faith.
This Panel notes that the fact that Respondent registered the Domain Name under the name “Intesasanpaolo” (i.e. Complainant's company name) also providing, as its contacts data, Complainant's address, implies Respondent's wish to hide its own identity by misleading the public into believing that the registrant of the Domain Name was in fact Complainant itself.
Furthermore, considering that there is one and only one company named INTESA SANPAOLO and located in Torino, at the address indicated by Respondent, and that this company is the Complainant, it appears that Respondent when registering the Domain Name was aware of the Complainant's name, its address and more than likely of its trademark INTESA SANPAOLO.
Registering a domain name providing false information and particularly claiming to be someone else, namely usurping Complainant's name, is further evidence of bad faith in the registration and use of the Domain Name.
Finally, Respondent has not denied Complainant's assertions of bad faith, has not given any justification for the registration of the Domain Name. or substantiated or at least alleged any concurrent right or legitimate interest to the disputed domain name.
Accordingly, the Panel finds on the basis of the evidence presented that Complainant has satisfied 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.
Fabrizio Bedarida
Sole Panelist
Dated: January 22, 2010
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