WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. PrivacyP / Dopici Nasrat Case No. D2010-0768 1. The Parties
Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is PrivacyP of the Netherlands and Dopici Nasrat of Tonga. 2. The Domain Names and Registrars
The disputed domain names and are 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 May 13, 2010 seeking the transfer of four disputed domain names from Respondent to Complainant. On May 14, 2010, 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 names. On May 21, 2010 Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent was the registrant of only two of the four disputed domain names, and disclosing registrant and contact information for these two disputed domain names which differed from the named Respondent and contact information in the Complaint. The registrar also provided information of the other two domain names. On May 21, 2010, the Center sent an email communication to Complainant detailing the information received from the registrar regarding the identity of the registrant(s) for the four domain names and stating that pursuant to paragraph 3(c) of the Rules, “[t]he complaint may apply to more than one domain name, provided that the domain names are registered by the same domain-holder”. The Center in that same email communication gave Complainant certain alternatives on how it might proceed. It appears that Complainant agreed to submit an amendment to its Complaint dropping two of the disputed domain names which evidently are registered by the same registrant. The Center's email message of May 21, 2010 also provided the registrant and contact information disclosed by the Registrar for the two domain names which are the subject of this case. The Center invited Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 26, 2010, in which Complainant dropped its claims against two of the four original disputed domain names, leaving in this Complaint only the two domain names set forth above (“Disputed Domain Names”). Complainant advised that it would seek separate action against the two domain names dropped due to the fact that the registrants appear to be different. The Center verified that the Complaint together with the amended 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”).
The Panel wishes to note that it is possible in this instance that somehow Respondent has been able to separate itself or himself or herself, so as to avoid the clear implications of paragraph 3(c) of the Rules, by setting up different identities, thereby making the task of a rightful trademark holder that much more difficult. This misuse of procedure may be an attempt by Respondent to hide its true identity in view of so called “privacy providers”, the use of which services has been a subject for debate in many UDRP decisions.
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 May 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2010. The Respondent did not submit any response. Accordingly, the Center, having noted that the Written Notice courier packages had proven undeliverable to Respondent, notified Respondent's default on June 21, 2010.
The Center appointed James H. Grossman as the sole panelist in this matter on June 29, 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 one of the leading European financial institutions growing out of the merger effective in 1997 of two of Italy's premier banking groups, now with over 6,000 branches in Italy alone and with a market capitalization of over Euro 31.7 billion. In addition to some 12 million customers in Italy, representing a market share of over 15% of the Italian market, Intesa San Paulo has over 2,000 branches outside Italy and has become a leading financial institution for support of its Italian and other institutional customers in their businesses in 34 countries across the world, particularly in the Mediterranean and Eastern Europe. Complainant is the registered holder of International trade mark INTESA SANPAULO which was registered as an international trademark in 2007 and also in the European Economic Community (“EEC”).
The Disputed Domain Names were registered in September 2009, approximately two years after the above referenced trade mark registrations by Complainant. 5. Parties' Contentions A. Complainant
Complainant alleges that the Disputed Domain Names in one way or another are either identical or confusingly similar to the Complainant's trade marks. For example, it argues that the Disputed Domain Name reproduces the distinctive words “intesa san paolo” with the inversion of the terms “intesa” and “san paolo” contained in the trademark, and with the change of the letter “M” for the letter “N”. According to Complainant, Respondent is engaged in “typosquatting”, a practice which consists of the registration of a domain name which contains a slight variation of a Complainant's trademark. Complainant sites a number of UDRP decisions where the panels have found that such “typosquatting” is held to be confusingly similar to the complainant's trademark or sites and thus constitutes a satisfaction of the first criteria under paragraph 4(a) of the Policy for finding for the Complainant. See DaimlerChrysler v. Worshipping, Chrisler and Chr, aka Dream Media and aka Peter Conover,WIPO Case No. D2000-1272, described in further detail below.
The other Disputed Domain Name exactly reproduces the Complainant's trademark but adds the word “web” in front of the exact trademark words. “Web” is a dictionary word in the Internet language. Complainant points to several UDRP decisions which confirm that an attempt by a domain name registrant to register a domain name comprised of a trademark with a generic term may still result in the domain name being considered confusingly similar to complainant's trademark. Reuters Limited v. Global Net 2000 Inc.,WIPO Case No. D2000-0441 and Arthur Guinness & Son. (Dublin) Ltd. v. Steel Vertigogo, WIPO Case No. D2001-0020.
Finally, the Complainant draws the attention of the Panel to the case of Intesa Sanpaolo S.p.A. v. Hu Lim,WIPO Case No. D2009-1793, regarding one domain name involving “typosquatting” and two other domain names involving the trademarked names being added to some generic term. In this very similar case, the panel held for Complainant and ordered the names be transferred to Complainant.
Further, Complainant makes clear that Respondent has no rights or legitimate interests in the Disputed Domain Names. Further, the diversion of customers to these sites where the Internet user finds products of Complainant's competitors for commercial purposes, constitutes evidence under the third element under 4(a) of the Policy - bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Names are identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no right or legitimate interests with respect to the Disputed Domain Names, and
iii. The Disputed Domain Names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statement and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
Complainant, a highly recognized entity across international financial circles of the world, has argued that the use of the Disputed Domain Names each in their way seek to take advantage of what the previous UDRP panels have come to call 1) “typosquatting” (an attempt merely to manipulate a few letters so as to confuse the Internet user looking for the Complainant's site) and 2) an attempt to merely add a generic term to Complainant's trademark. In its Complaint, with regard to the typosquatting, Complainant sites, for example, the case of DaimlerChrysler v. Worshipping, Chrisler and Chr, aka Dream Media and aka Peter Conover, supra (“The domain names are slight misspellings of the Chrysler mark. The only distinction between the domain names and the Complainant's mark is a single change in the middle of the word that constitutes the mark. Given the evidence provided,, the Panel finds that the Respondents domain names, while not identical, are indeed confusingly similar to the Complainants marks.”).
With regard to the use of a generic or dictionary term with the Complainant's trademark, previous UDRP panels have established a clear consensus, as stated in Complainant's contentions described above. Accordingly, the Panel therefore finds that the Disputed Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights and therefore the first criterion of paragraph 4(a) the Policy is satisfied. B. Rights or Legitimate Interests
Complainant points out that it has never authorized any one to use its trademark and to its knowledge Respondent has no relevant trademark rights anywhere, nor to the knowledge of Complainant is the Respondent known by any of the Disputed Domain Names. It appears simply that Respondent is hoping for Internet users to make a mistake in typing Complainant's domain names into a web browser, or by some mistake adding the generic term to the trademark, and therefore Respondent has the opportunity to misdirect Internet users to another site where the Internet users believe they are dealing with Complainant, but are in fact in dealing with competitors of Complainant.
The Panel accepts that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Accordingly, the burden is transferred to Respondent to demonstrate that it has any such rights or legitimate interests in the Disputed Domain Names. Croatia Airlines d.d. v. Moderna Empire Internet Ltd., WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy, and accordingly, the Panel finds that Respondent has no rights or legitimate interest in either of the Disputed Domain Names. C. Registered and Used in Bad Faith
There is overwhelming evidence provided by Complainant of bad faith on the part of Respondent, which has not been refuted by Respondent. These include 1) Respondent has intentionally attempted to attract for commercial purposes Internet users to its sites by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites; and 2) the fact that the Disputed Domain Names are confusingly similar to Complainant's mark indicates that Respondent had knowledge of the prior trademark registration of Complainant at the time of the registration of the Disputed Domain Names. Likewise, Respondent is trading on the good will of the trademark of Complainant by referring Internet users to competitors of the Complainant in violation of paragraph 4(b)(iv) of the Policy.
The Panel finds that the Complainant has established the third element of paragraph 4(a)(iii) of the Policy and that Respondent's actions are 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 Disputed Domain Names and be transferred to Complainant.
James H. Grossman
Sole Panelist
Dated: July 13, 2010
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