The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Domain Admin of Moergestel, the Netherlands / Dopici Nasrat of Vavau, Tonga. 2. The Domain Name and Registrar
The disputed domain name (the “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 1, 2010. On July 2, 6, 8, and 13, 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 Domain Name. On July 14, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response, disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 14, 2010, 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 July 19, 2010. 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 proceeding commenced on July 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2010.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on August 12, 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
The Domain Name is , registered on September 23, 2009 by PrivacyP on behalf of Dopici Nasrat of Vavau, Tonga.
The Complainant states in its Complaint that it is the owner, inter alia, of the following registered marks (Annex E to the Complaint):
INTESA SANPAOLO, International Registration no. 920896, registered on March 7, 2007, in international classes 9, 16, 35, 36, 38, 41 and 42;
INTESA SANPAOLO, The Office of Harmonization for the Internal Market registration no. 5301999, registered on June 18, 2007, in international classes 35, 36 and 38;
SANPAOLO TRADING, registration no. 1175421, registered in Italy on March 9, 2009, in international classes 36 and 38 (the forgoing collectively and severally referred to as “the Marks). 5. Parties’ Contentions A. Complainant
The Complainant is the leading banking group in Italy and one of the leading banking groups in Europe. The name of the Complainant “Intesa Sanpaolo S.p.A” resulted from a merger that took place between Banca Intesa S.p.A and Sanpaolo S.p.A., each of which was, prior to the merger, a leading Italian banking group in its own right.
The Complainant has a market capitalization in excess of EUR 31.7 billion and it is the undisputed leader in Italy in all of the main banking sectors (retail, corporations and wealth management). The Complainant maintains a network of approximately 6,500 branch locations located throughout Italy, through which it services more than 12 million customers. It enjoys a market share of more than 15% in most regions of Italy.
Reaching further afield, the Complainant has a strong presence in Central and Eastern Europe, where it maintains a customer base of more than 8.5 million customers through approximately 2,000 branches. In addition, the Complainant serves corporate customers located in 34 countries, most notably in the Mediterranean-area countries and countries in which Italian companies are most active, such as the United States of America, Russian Federation, People’s Republic of China and India (see generally Annex D to the Complaint).
The Complainant alleges the following:
(1) The Domain Name is confusingly similar to the Complainant’s Marks.
(2) The Respondent has no rights in the Domain Name, nor has it received any license or authorization from the Complainant in connection with its use thereof.
(3) The Domain Name was registered and has been used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent's failure to submit a response, the Panel shall decide this proceeding on the basis of the Complainant's undisputed and reasonable representations and shall draw inferences that it deems appropriate. Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:
(1) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name;
(3) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
Accordingly, with a view to Section 4 above, the Panel finds that the Complainant has registered trademark rights in INTESA SANPAOLO in the European Union and numerous other countries under the Madrid Agreement and/or the Madrid Protocol. The Panel also finds that the Complainant has registered trademark rights in SANPAOLO TRADING, which appears to be registered in Italy.
The use of the term “treding” in the Domain Name is merely an immaterial (and presumably intentional) misspelling of the word “trading.”
While neither of the Marks mentioned above is identical to the Domain Name, the Panel finds that each of them is confusingly similar to the Domain Name within the meaning of paragraph 4(a)(1) of the Policy. The Panel notes that the Domain Name incorporates the mark INTESA SANPAOLO in its entirety. As well, it is, with a minor misspelling, a combination of the Marks INTESA SANPAOLO and SANPAOLO TRADING As stated, by the Panel in Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888, “a domain name that wholly incorporates a Complainant's registered mark may be sufficient to establish confusing similarity for purposes of the UDRP.” That is the situation here.
For all of the foregoing reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant's Marks. B. Rights or Legitimate Interests
Here, as well, the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
There is no evidence that the Respondent has registered any mark that consists of, or contains, the Marks, or any material portion thereof, or that it has any right in the Marks on an unregistered basis. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the Marks. The only “use” by the Respondent of the Marks is in connection with its registration of the Domain Name. Moreover, the name of the Respondent bears no resemblance to the Domain Name nor is there any basis to conclude that the Respondent is known by the Domain Name.
Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, whereby a respondent may support a claim that it has rights or legitimate interests in the Domain Name, the Respondent has not submitted any response to support such a claim. Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Here, as well, the Respondent has failed to respond to the Complainant. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
The Respondent's use of the terms “intesa sanpaolo” and “sanpaolo treding”, which are confusingly similar to the Complainant’s Marks in the Domain Name, in circumstances in which the Respondent has no rights or legitimate interests in such terms, raises in this Panel's view a likely presumption that the Respondent has acted in bad faith. Based on the uncontroverted allegations of the Complainant, there appears to be no other plausible explanation for the Respondent's selection of the Domain Name, except to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and the Marks.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the Complainant, as follows:
(i) Circumstances indicate that the Respondent has registered the Domain Name primarily to sell or otherwise transfer it to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.
(ii) The Domain Name has been registered to prevent the Complainant from reflecting its Marks in a corresponding domain name.
(iii) The Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) The use of the Domain Name indicates an intention to attract Internet users to the Respondent's website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel believes that the circumstances described in subsection 4(b)(iv) above of the Policy apply in this case and, as such, support the conclusion that the Respondent has acted in bad faith. In its choice and use of the Domain Name, the Respondent is attempting to intentionally attract Internet users to its website for commercial gain by exploiting the goodwill and reputation of the Complainant and the Marks.
The Domain Name is connected with a website that sponsors, inter alia, banking and financial services (Annex H), being the type of services that are provided by the Complainant and that are covered by the Marks registered by the Complainant. In so doing, Internet users, in seeking information about the Complainant, are led to websites of competitors of the Complainant. Such conduct constitutes bad faith by the Respondent.
The Respondent has presumed knowledge of the rights of the Complainant in the Marks. As such, there is no other plausible explanation for the Respondent's selection of the Domain Name, except to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and the Marks. As noted by one panel, “… bad faith will be found when a domain name is so obviously connected with the complainant or its product that its use by anyone other than the complainant suggests opportunistic bad faith.” Banco Bradesco S.A. v. Marciano Martins,WIPO Case No. D2010-0201 (citing Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163).
Based on the foregoing, the Panel is of the view that 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.
Neil, J. Wilkof
Sole Panelist
Dated: August 26, 2010
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