The Complainant is Intesa Sanpaolo S.p.A of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Domain Administrator of Shanghai, People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain names and (the “Domain Names”) are registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2010. On August 12, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the Domain Names. On August 16, 2010, Moniker Online Services, LLC 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 August 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 17, 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 Complainant Intesa Sanpaolo S.p.A. is among the top banking groups in Europe, with a market capitalisation exceeding EUR 31,7 billion, and an undisputed leader in Italy. Intesa Sanpaolo is the company resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.
The Complainant is the owner of various registered trademarks, including:
1. International trademark registration no. 920896 INTESA SANPAOLO (extended to China), granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;
2. Community trademark registration no. 5301999 INTESA SANPAOLO filed on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38.
The Domain Names and were registered on March 11 and February 28, 2010, respectively. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Domain Names are confusingly similar to the Complainant’s trademarks. The Domain Names and both reproduce the INTESA SANPAOLO trademark with minor variations. The domain name reproduces the trademark INTESA SANPAOLO with the addition of another letter “o”. The domain name also reproduces the trademark INTESA SANPAOLO, with the simple addition of the letter “i”. The Complainant alleges that the Respondent is engaging in “typosquatting” because the only distinction between the domain names and the Complainant’s marks is a single change in the middle of the word that constitutes the mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Names since the Domain Names do not correspond to a trademark registered in the name of the Respondent. The Complainant says that any use of the trademark INTESA SANPAOLO has to be authorized by the Complainant: the Respondent has never been authorized or licensed by the Complainant’s to use the Domain Names. The Complainant further alleges that the Domain Names do not correspond to Respondent’s name, that the Respondent is not commonly known by the Domain Names and that the Respondent does not use the Domain Names for any fair or noncommercial use.
The Complainant asserts that the Domain Names were registered and are being used in bad faith because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website. In addition, the Complainant asserts that registration and use of a domain name to re-direct Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant must prove the following:
(i) the respondent’s 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 respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant provided evidence that it has registered rights in the Community and International trademarks INTESA SAN PAOLO. The Domain Names and combine the registered trademarks in their entirety with typographical errors.
Such minimal changes to a mark can be considered a typical case of “typosquatting”. This practice has long been recognized as a strong ground for a finding of identity or confusing similarity within the meaning of paragraph 4(a)(i) of the Policy (See, EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Igor S Panin,WIPO Case No. D2009-1503; E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095, and Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073).
In sum, the Domain Names are confusingly similar to the Complainant’s marks. Therefore, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate a respondent has rights or legitimate interests in a domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Domain Names or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registrations of the Domain Names. The Complainant has alleged that the Domain Names do not correspond to the Respondent’s name, that the Respondent is not commonly known by the Domain Names and that the Respondent does not use the Domain Names for any fair or noncommercial use.
The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1, Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it is commonly known by the Domain Names or that the Domain Names are used in connection with a bona fide offering of goods or services, or that any of the circumstances listed in paragraph 4(c) apply in this case.
Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove both that the Domain Names were registered in bad faith and that they are being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant’s allegations with regard to the Respondent’s registration and use of the Domain Names in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent.
There is clear evidence provided by the Complainant of bad faith on the part of the Respondent which is not refuted by the Respondent. Indeed, as evidenced by the Complainant, the Respondent has intentionally attempted to attract for commercial purposes, Internet users to its sites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement of its websites. Moreover, the fact that both Domain Names are confusingly similar to the Complainant’s trademarks appears to indicate that the Respondent had knowledge of the prior trademark registrations of the Complainant at the time of the registration of the Domain Names.
Typosquatting has long been held as an example of bad faith (See, e.g., Sanofi-aventis v. Elizabeth Riegel and Andrew Riegal,WIPO Case No. D2005-1045; Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000 0869). In the instant case, typosquatting demonstrates further evidence of the existence of bad faith at the time of registration. The fact that the two Domain Names reproduce the Complainant’s mark in its entirety with minimum variations (namely the addition of the letters “i” and “o”) and the fact that the Complainant has prior rights in the trademark INTESA SANPAOLO (including an international registration covering the People’s Republic of China where Respondent resides) is, in the Panel’s view, evidence that the Domain Names were registered with knowledge of the existence of the Complainant’s trademarks and therefore, in bad faith.
Moreover, as stated by the Complainant and on the basis of the printouts of the websites to which the Domain Names resolve, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the Domain Names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement.
The Panel finds that the Complainant has satisfied the third requirement. 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.
Pablo A. Palazzi
Sole Panelist
Dated: October 1, 2010
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