The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Keyword Acquisitions Inc. of Reading, Massachussets, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2011. On April 28, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 29, 2011, GoD, Inc. 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 May 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2011. The Response was filed with the Center on May 23, 2011.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 3, 2011. 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.
On May 13, 2011 the Complainant filed its First Supplemental Brief. The focus of this Brief was an offer for sale of the disputed domain name made by the Respondent’s lawyer to the Complainant’s lawyers by letter dated April 30, 2011. The Respondent addressed the terms of this Brief in its Response. On May 31, 2011 the Complainant filed its Second Supplemental Brief. The focus of this Brief was a reply to the points made by the Respondent in its Response. On May 31, 2011 the Respondent filed a Reply to the Complainant’s Supplemental Brief.
On the subject of supplemental filings, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states the following consensus view:
“[…] Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
Having reviewed the supplemental filings from both Parties in this case, the Panel has decided in its discretion to admit these for the following reasons: The Complainant’s First Supplemental Filing relates to a matter which was not in the knowledge of the Complainant when the Complaint was filed, namely the Respondent’s offer to transfer the disputed domain name to the Complainant in return for the sum of USD 10,000 which was made by letter dated April 30, 2011 and was itself sent in response to the Complaint. As noted above, the Respondent took the opportunity to answer this supplemental filing in its Response. The Complainant’s Second Supplemental Filing follows upon and seeks to address the detailed Response from the Respondent. As the Response raised issues of fact of which the Complainant could not have been aware prior to the filing of the Complaint, for example, the Respondent’s contention regarding its master keyword suggestions having been over-ridden by Google, the Panel considered that it was in the interests of fairness for the Complainant to be allowed to address these. The Respondent’s Reply to the Complainant’s Supplemental Brief was likewise focused upon matters disclosed by the Complainant’s Second Supplemental Filing and the Panel considered that it was in the interests of procedural fairness and compliance with paragraphs 10 and 12 of the Rules to afford the Respondent the opportunity to file such submissions in reply. 4. Factual Background
The Complainant is the leading Italian banking group, created by the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A on January 1, 2007. The Complainant has a network of 5,900 branches and approximately 11.3 million customers in Italy.
The Complainant is among the top banking groups in the Euro Zone, with a market capitalization exceeding EUR 30.8 billion. The Complainant has a strong presence in Central-Eastern Europe with a network of approximately 2,000 branches and over 8.5 million customers. The Complainant also maintains an international network specializing in supporting corporate customers with a presence in 29 countries, in particular the Mediterranean area and other areas where Italian companies are most active such as the United States of America, the Russian Federation, the People’s Republic of China, and India.
The Complainant is the owner of several registered trademarks for the word mark INTESA including Community Trademark registration No. 2803773 registered on August 7, 2002 in class 36.
The Respondent is a Massachusetts corporation incorporated on January 1, 2008 whose business is the acquisition of domain names for monetization and development and to service the domain name aftermarket. It has approximately 25,000 domain names in its portfolio. The Respondent partners with various pay-per-click providers that obtain their advertisement feed from search engines such as Google. The Respondent registered the disputed domain name on March 7, 2009. After registration, the Respondent parked the disputed domain name with pay-per-click vendor S.
The website associated with the disputed domain name displayed different advertisements depending upon the location of the viewer. Those advertisements delivered to viewers in Italy referred to the Complainant and to other organizations offering financial products and services. With the exception of an advertisement relating to foreign exchange services, those advertisements delivered to viewers in the United States of America (“United States”) contained no reference to banks or financial products and services and instead referred to a variety of unrelated offerings including airport parking and commercial office space. 5. Parties’ Contentions A. Complainant
In the Complaint, the Complainant contends the following: The disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; the Respondent has no rights or legitimate interests in the disputed domain name; and the disputed domain name was registered and is being used in bad faith.
The disputed domain name incorporates the trademark INTESA with the addition of the term “asso” which is an abbreviation of “association”, a common word used in the field of business. Neither the Respondent nor their directors have any connection with the Complainant and the disputed domain name does not correspond to the name of the Respondent or its director. Any use of the Complainant’s trademark requires to be authorized or licensed by the Complainant and the Respondent has not been so authorized or licensed. There are no fair or non commercial uses of the disputed domain name.
The Respondent has registered the disputed domain name with intent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s INTESA trademark. The Complainant’s INTESA trademark is distinctive and the fact that the Respondent registered a confusingly similar domain name indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. This circumstance is proven by the fact that there are several links named “Intesa Sanpaolo” on the website associated with the disputed domain name connected to websites belonging to direct competitors of the Complainant. The disputed domain name is not used for any bona fide offerings but is used in a confusing manner to lead Internet users searching for information on the Complainant’s services to the websites of the Complainant’s competitors. The Complainant deems that the Respondent is well aware of the Complainant’s identity given the renown of the Complainant and the distinctiveness of the trademark INTESA.
The awareness of the Complainant’s identity can be further demonstrated by the fact that the Complainant’s attorney sent the Respondent by email and registered mail a cease and desist letter on November 3, 2010 seeking cancellation or voluntary transfer of the disputed domain name. Despite a further reminder no reply followed and the disputed domain name was subsequently renewed. The cease and desist letter was returned to sender because the address was incorrect demonstrating the provision of false or at least inaccurate information in the WhoIs records. The provision of inaccurate WhoIs records at the point of registration and the failure to maintain accurate WhoIs records constitutes bad faith registration and use of the disputed domain name. The practice of diversion of Internet traffic is frequent in the banking realm due to the high number of online banking users and the Respondent’s commercial gain is evident since it is obvious that the Respondent’s sponsoring activity is being remunerated.
In its First Supplemental Brief, the Complainant makes the following additional contentions: The Respondent offered the disputed domain name for sale to the Complainant two days after the Complaint was filed. By letter dated April 30, 2011 the Respondent’s lawyer indicated that the Respondent was willing to transfer the disputed domain name to the Complainant for the sum of USD 10,000. This should be considered as a further proof of the Respondent’s bad faith.
In its Second Supplemental Brief, the Complainant makes the following additional contentions: The domain names in various cases relied upon by the Respondent are made up of generic terms such as and while the disputed domain name is made up of the well known trademark INTESA and the expression “asso”. Internet users speaking Italian will not associate the disputed domain name with the no-sense expression “ace understanding” but will see the disputed domain name as the combination of the well known mark INTESA and the term “asso” (an abbreviation often used for “associazione” meaning “association”). The Complainant produces an extract from a website named Virgilio in support of this contention. The term “asso” was not added by chance, clearly referring to the corporate activities in which the Complainant is involved. The same conclusion can be made in relation to Internet users who do not understand Italian who will see the combination of “asso” with the Complainant’s INTESA trademark. This is supported by the recent decision of Intesa Sanpaolo S.p.A. v. Chibuize Lawrence and/ or Gino Guideti,WIPO Case No. D2011-0373 concerning the domain name .
The Respondent’s argument that it has a legitimate interest in the disputed domain name because it is a company that acquires, sells, monetizes and develops descriptive domain names to generate pay-per-click revenue is insufficient to rebut the Complainant’s showing. The Respondent’s websites offer links to the Complainant’s competitors and this does not constitute a nominative fair use but rather appears to constitute deceptive bait and switch advertising practices. The links on the Respondent’s website are not generic but are focused on targeted advertising and promotion of “finance” related services that are exactly the kind provided by the Complainant under the INTESA trademark. There are no references to the words “assointesa” which shows that the word is not being used in any descriptive fashion but rather as a keyword tied to the trademark value of the Complainant’s INTESA trademark.
Domain name holders do not have an automatic right to post landing pages keyed to what may be generic or dictionary words. Many domain names have both dictionary word meanings and trademark or secondary meanings and when the links on the landing page are based on the trademark value of the domain names the trend in decisions under the Policy is to recognize that such practices do constitute abusive cybersquatting.
The Respondent’s defence that it independently registered the disputed domain name for its generic and descriptive meaning of “ace understanding” has become commonplace among landing page operators who claim to register numerous domain names based solely on their dictionary meanings without any specific
knowledge of the trademark or secondary meanings of those words. The Respondent registered the disputed domain name several years after the Complainant registered its trademarks, combined the trademarks with descriptive references to “asso”, abbreviation of “associazione” which closely identifies the field of activities in which the Complainant is involved, and included advertisements of the Complainant’s competitors on the landing page.
The Respondent claims that it made Google searches for the term “assointesa” but the evidence submitted consists only of undated printouts. Had the Respondent carried out even basic Google searches in respect of “intesa” or searched for other top level domain registrations using “intesa” these would have yielded obvious reference to the Complainant and its use of INTESA as a trademark. The very strong inference in this case is that the Respondent either closed its eyes to whether the domain name was identical or confusingly similar to a trademark in which a third party had rights, or the Respondent did make some enquiries and as a result had knowledge of the Complainant at the time of registration.
The Respondent stated that the Complainant does not have any branches or offices in the United States. This is false as the Respondent has an office in New York. The Respondent has produced an Affidavit but this is of limited weight in that it has been prepared by the interested party himself (Mr. Wilson is a shareholder of the Respondent). It has to be concluded that the Respondent, a sophisticated party in landing page business and experienced in UDRP proceedings must have been aware of the Complainant’s trademark at the time it registered the disputed domain name and that no pertinent or reliable evidence has been submitted to prove the contrary. It defies common sense to believe that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark INTESA.
The Respondent’s argument that it was unaware of the contents of the Italian landing page is not supported by relevant or reliable evidence. The Respondent’s landing page printouts are undated. This and the Sedo receipt produced by the Respondent are only evidence of the fact that after the Complaint the Respondent, aware of its bad faith, tried to change the use of the disputed domain name. The Respondent is responsible for the content of any webpage hosted at the disputed domain name. It cannot evade this responsibility by means of its contractual relationship with a third party. Even assuming that the aim of the Respondent was to use the disputed domain name in connection with landing pages with generic advertisements or advertisements related to games this is additional evidence of bad faith. Use of the Complainant’s mark in connection with games including gambling activity would cause a great damage to the reputation of this distinctive sign and to the image of the Complainant.
The Respondent’s statement that it did not reply to the Complainant’s cease and desist letter because no screenshot was provided showing the advertisements displayed in Italy is used only as a pretext. The Complainant clearly stated in the letter that the disputed domain name was used in connection with banking and financial services causing a risk of confusion for Internet consumers and serious damage to the Complainant. In the case of registration and use of the domain name in good faith the Respondent would have replied to the cease and desist letter requesting a screenshot of the website.
With regard to the offer of sale of the disputed domain name, the Respondent has been guided into making an easy profit out of the disputed domain name by successfully trading on the fame of the trademark through the website at least by reselling it to the Complainant for an unreasonable sum. B. Respondent
In the Response, the Respondent makes the following contentions: The Complainant has an inflated view of its trademark’s fame and penetration in the market, which forms the basis of its belief that the Respondent could only have been targeting INTESA in choosing an identical or confusingly similar domain name. Contrary to the Complainant’s assertions, there are many cases finding that a domain name consisting of a generic word added to a trademark is not confusingly similar because the combination of the two words creates a meaningful distinction between the domain name and a trademark including cases relative to , , , , and . In Enterprise Rent-A-Car Company v. Richard Lanoszka a/k/a Silent Register, NAF Claim Number FA0901001242244 the panelist analyzed whether the addition of a word and its associated concept “strongly leads an average Internet user back to a complainant and the complainant’s trademark”. Using the foregoing analysis there could be no confusing similarity between the Complainant’s trademark INTESA and the disputed domain name. The Complainant’s trademark is not nearly as strong as AMAZON, ENTERPRISE or PRUDENTIAL yet in each of the relative cases the panel found that adding a generic word to the trademark did not result in confusing similarity.
The Complainant failed to disclose that the Italian term “asso” translated to English means “ace” (a playing card) along with other definitions including variously a town, city and municipality. None of the definitions reference the word “association”. The Complainant mixes English (“association”) and Italian (“intesa” means “understanding”) to support its argument. The abbreviation for the word “association” is “assoc.” or “assn.”
The Complainant has failed to assert its stated right to prevent others from using identical uses of the domain name “intesa”. It is reasonable to infer that the Complainant allows others to use its trademark because the Complainant is aware that it does not have a famous trademark worthy of exclusivity. If there is no apparent confusing similarity from consumers who visit , , , , , , , , , , , etc., then it is more than reasonable to infer that consumers typing “www.” in the URL would not find domain name confusingly similar to the Complainant’s trademark.
The Complainant has failed to establish a prima facie case in support of its allegations that the Respondent lacks rights and legitimate interests under Policy paragraph 4(a)(ii) because the Respondent was indeed making a bona fide offering of goods or services at . The Respondent has a legitimate business of acquiring domain names for monetization and development and to service the domain name aftermarket. Neither the Respondent, nor its legal counsel, nor the Complainant are known as “”. Case law has consistently found that the use of a generic or descriptive domain name to generate pay-per-click revenue is a legitimate business practice. Accordingly, because the Respondent’s business model includes monetizing, developing, acquiring and selling domain names, its monetization and use of the disputed domain name is a bona fide offering of goods or services.
The Respondent identified the domain name on a list of names scheduled to be released by the “.org” registry. The Respondent’s domain name software bulk analyzes deleted domain names for trademark concerns, common uses, keyword relevance, backlinks, Page Rank, and translation of foreign words and terms, among other data. The Respondent noticed the translation of “asso intesa” as “understanding ace” and determined that the domain name complemented the Respondent’s other game-related domain names. Any backlinks or Google Page Rank existing from the deleted domain did not piggyback on the Complainant’s prior use of the domain name because the Complainant was not the prior registrant. Before registering the domain name, the Respondent initiated a search via “www.G” for the term “asso intesa” and “assointesa” and determined that there were no existing trademark rights to that term for the intended use. The search did not identify or make reference to the Complainant in any of the resulting links or websites. The search noted that there was an existing domain name but that website consisted of travel information presumably using the term “Asso” to describe a location in Italy. The Respondent believed that its registration of did not infringe on the existing website because the Respondent planned on using the domain name to display gaming-related advertisements.
Constructive notice rests upon the fame of Complainant’s mark at the time the disputed domain name was registered. There are more than a dozen companies or individuals using the identical trademark as the Complainant. Thus, the Complainant does not enjoy the exclusivity that it has asserted in its complaint. Moreover, the Complainant’s trademark is certainly not “famous” and not known in the United States. The Complainant does not offer banking services to citizens in the United States. The Complainant does not have one single branch location in the United States nor does it have an office in the United States. The Complainant has not submitted evidence sufficient to establish that Respondent had constructive notice of its mark when the Respondent registered the disputed domain name on March 7, 2009.
With regard to the Respondent’s incorrect mailing address, the Respondent had no intent to mislead. The Respondent has since moved to a new address but it continues to use the same phone number and email address. The registration information for the disputed domain name was correct at the time of registration and any subsequent update was not necessary because the Respondent continues to receive mail and packages sent to the prior address. None of the contact information is “false or misleading” as the Complainant had no difficulty contacting Respondent to facilitate these proceedings. The Complainant’s submissions indicate that it’s mailed cease and desist letter was apparently never forwarded to the Respondent’s new address. The Respondent finds this aberration puzzling because it continues to receive mail forwarded from the former address.
After registering the disputed domain name, the Respondent parked the name with pay-per-click vendor S, and set the master keyword to “games” so advertisements would relate to card playing games. (Consistent with the actual Italian “asso” and “intesa” to English translation “ace” and “understanding”). Generally, the master keyword dictates the types of advertisements that appear on the parked page but this process is in a state of flux because Google has modified its algorithm to minimize the weight given to master keyword suggestions. Accordingly, although the master keyword was set to “games” the advertisements that appeared did not contain any particular theme. Nevertheless, none of the advertisements interfered with the Complainant’s trademark and the page showed generic advertisements and the legend “games resources and information” in the title above the URL.
The Respondent did not reply to the Complainant’s cease and desist letter because it viewed this as a meritless demand based upon the apparent non-infringing use and the distinction between the disputed domain name and the Complainant’s trademark. The Respondent renewed the disputed domain name in good faith because its use did not infringe any trademark. Unbeknownst to the Respondent, however, the advertisement feed that appeared in Italy was different than the advertisements displayed in the United States. Google is increasingly ignoring the master keyword set on parked pages and uses different criteria to dictate what advertisements appear. The Complainant’s letter did not include a screenshot of the page in Italy and had it done so the Respondent would have changed the landing page to a two click portal which shows categories instead of direct advertisements. The Respondent was unaware of and did not review the Complainant’s screenshots until it received the Complaint. Thereafter, it modified the parking page to a two-click portal of generic categories as a courtesy to minimize any unintended damage.
In response to the Complainant’s First Supplemental Brief, the Respondent makes the following additional contentions: It is admitted that the Respondent made an offer to sell the disputed domain name to the Complainant for greater than out of pocket costs but this does not constitute evidence of bad faith registration or use in terms of the Policy, paragraph 4(b)(i), which requires the additional showing that this was the Respondent’s primary purpose for registering or acquiring the disputed domain name. It is denied that the Respondent had this primary purpose. The offer to sell was actually an offer for two attorneys to discuss settling the dispute amicably. The text of the offer of settlement indicates the good faith intention of the Respondent to resolve the dispute and voluntarily transfer the domain name to the Complainant.
The Respondent has registered approximately 50,000 domain names since 2008, yet this is the first and only UDRP Complaint it has received. If the Panel can infer bad faith from a Respondent’s previous bad faith conduct, the converse should prevail when the Respondent has an unblemished record of good faith conduct.
The Respondent lacked knowledge of the Complainant’s existence when it registered the disputed domain name and is not a competitor of the Complainant. Even with the unknown advertisements appearing in Italy, the Respondent did not intentionally create a likelihood of confusion with the complainant’s mark. Even assuming that the Panel finds that the Respondent used the disputed domain name in bad faith (which the Respondent denies) there is no evidence demonstrating or supporting an inference that the Respondent registered the disputed domain name in bad faith.
In its Reply to the Complainant’s Supplemental Brief, the Respondent makes the following additional contentions: The Complainant’s submission regarding the fact that the term “asso” is synonymous with the word “associazione”, a new argument to that in the original Complaint which focused on the term “association”, is not borne out by the printout from the website Virgilio as the word “asso” does not feature. The Complainant argues that the term “asso intesa” is a “no-sense” expression however what prevails is the Respondent’s good faith belief that it was a “make sense expression”. The Respondent’s action of setting the general keyword to “games” supports its contention that it believed the term to be associated with “playing card games”.
Intesa Sanpaolo S.p.A. v. Chibuize Lawrence and/ or Gino Guideti,WIPO Case No. D2011-0373 cited by the Complainant was a case where the Respondent defaulted. This is not a compelling argument because in such cases a panelist primarily accepts the Complainant’s allegations as true. The Complainant seeks to distinguish the current matter from cases cited by the Respondent involving cases where the additional generic word was unrelated to the trademark (“prudentialmotors” and “amazon allergy”). Adding the word “associazione” to the Complainant’s trademark does not add new meaning because the additional word is commonly used in the Complainant’s business however the Complainant continues to ignore other possible uses for the term “asso”. The Complainant has failed to address other possible uses of the term “asso”.
The Complainant failed to state that in response to the Complaint the Respondent contacted its registrar and attempted to modify the nameservers of the disputed domain name so that it would no longer resolve to a landing page. The Respondent was unable to do so due to the disputed domain name being locked by the registrar and thus in good faith modified the landing page to reflect general categories as opposed to direct advertisements. The general categories listed on the parked page represent virtually all sectors of goods and services. If the Complainant’s argument is valid it would mean that if a domain name incorporated a suggestive or descriptive trademark among other generic words the trademark holder would have a valid claim against any entity that displays general categories of goods and services.
The Respondent clearly stated that its Google evidence was “recent searches”. The Respondent did not make a copy of the screenshot in March 2009 as there was no need to do so. Using “recent searches” was the Respondent’s best attempt to replicate the results viewed in March 2009. If the Complainant’s assertions of its global influence are correct it should be more likely that a recent search for “asso intesa” would reference the Complainant. Yet two years later there are still no references to the Complainant. The Complainant’s own Google search is for asso intesa (without quotes) which shows references to content where both words are used but not together. In page 3 of the G results provided by the Complainant the term “asso” in the cited page refers to the region in Italy, not “associazione”. When searching for common uses of a two word domain name, performing a Google search without quotes produces irrelevant results. The results for a Google search of asso intesa without quotes will show all content which references both words independently even if those words are separated by 10,000 others. Performing a Google search for Intesa is irrelevant because the disputed domain name contains another generic word.
The Complainant apparently has a New York mailing address. The Respondent’s search of the Complainant’s website did not disclose this because the Respondent had chosen the English version and then “contacts”. Although these pages cater to English speaking users the contact list does not refer to a United States office. The Respondent does not doubt the authenticity of the Complainant’s screenshot of its New York office but assumes that this does not appear on the contacts list because it does not cater to individual consumers. Having such an address that does not offer banking services to individuals does not bestow knowledge of its existence to individual United States citizens. The Respondent had no knowledge of the Complainant’s existence.
The Respondent’s Affidavit is sworn by a properly licensed attorney in good standing and the Complainant has no grounds to disbelieve its veracity. The Complainant’s statement that the Respondent is “experienced in UDRP proceedings” is not understood and is irrelevant. The Complainant’s passive adoption of other individuals and businesses using its exact trademark INTESA tells the real story of how it values the scope of its trademark, namely very narrowly.
The Respondent’s landing page and Sedo setting screenshots do not contain a date because the Respondent did not anticipate any future dispute regarding the disputed domain name. The Respondent visited the wayback machine and in an attempt to capture previous screenshots but none were available. Accordingly, the Respondent did the next best thing which was to capture Google’s cached version of the website which is only weeks old. The Respondent notes that it did not block access to cached versions of its website.
The Respondent agrees that it did not reply to the Complainant’s cease and desist demand because the Complainant did not include a screenshot of the offending advertisements. The Respondent investigated the position upon receipt of the letter and confirmed the Sedo settings were for general keywords related to “games”. The Respondent also visited the landing page for the disputed domain name which showed links unrelated to banking. The Respondent concluded that the Complainant’s allegations were meritless and did not warrant a response.
It is admitted that the Respondent offered to settle the dispute for USD 10,000. Attorneys often discuss a possible settlement before a case goes to arbitration or trial and suggesting that this should fall within cybersquatting territory is outrageous. The Respondent never solicited selling the disputed domain name to the Complainant. Interpreting the offer of settlement as evidence of bad faith is a transparent attempt of the Complainant to allege everything under the sun in the hope that something sticks. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Clearly the Complainant has rights in the trademark INTESA by virtue of its portfolio of registered trademarks, one of which is noted in the Factual Background section above. However, the Parties are divided as to the question of whether this is confusingly similar to the disputed domain name which adds the term “asso” to the trademark (disregarding the generic top level domain “.org” as is customary in cases under the Policy). The Parties are also divided as to the meaning of “asso”. The Complainant contended initially that it was an abbreviation of the English term “association” and subsequently in its Second Supplemental Filing that it is an abbreviation of the Italian term “associazione” which translates into English as “association”. The Respondent states that the term “asso” can mean a variety of generic and geographic terms, denies that it constitutes an abbreviation for “associazione”, and criticizes the Complainant for introducing this argument at a later stage.
Taking the subject of this criticism first, the Panel does not consider that the late introduction of this argument is of any significance. It is apparent that the Complainant’s representatives are not working in their native language and are thus at a disadvantage to the Respondent. The Panel considers it likely that until reviewing the Response the Complainant’s representatives made the reasonable assumption that Italian and English both recognized an abbreviation for “asso”. Once this was challenged by the Respondent the Complainant clarified the position and no prejudice has been caused to the Respondent who has had a full opportunity to address the argument as subsequently put with regard to the term “associazione”.
Paragraph 1.9 of the WIPO Overview 2.0 deals with the question of whether a domain name consisting of a trademark and a generic, descriptive or geographical term is confusingly similar to a complainant’s trademark. It states:
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.” An example of the incorporation within other words may be found in paragraph 1.2 of the WIPO Overview 2.0 as the trademark HEAT incorporated within the domain name . Clearly this is not the situation in the present case where both Parties agree that there are two separate elements to the disputed domain name one of which is identical to the Complainant’s trademark.
Accordingly, if the Panel were to determine that the incorporated trademark constituted the dominant or principal component of the domain name this would be determinative of the issue even if the Panel accepted the Respondent’s contention that “asso” has a variety of generic meanings. However, the Respondent also points out that “intesa” itself has generic meanings such as “understanding” and so it is necessary to examine whether there is any substantive risk that Internet users may believe there to be a real connection between the domain name and the Complainant and/or its goods and services. Paragraph 1.2 of the WIPO Overview 2.0 indicates that panels have determined this question by reference to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark, and whether an Internet user unfamiliar with any meaning of the disputed domain name seeking the Complainant’s goods or services on the world wide web would necessarily comprehend such distinguishing value vis-à-vis the relevant mark.
The Respondent focuses upon its approach that the combination of the two words “asso” and “intesa” creates a meaningful distinction between the domain name and the trademark. It notes that both are Italian words which if taken in isolation are generic; “asso” translating as “ace” and/or various geographic meanings and “intesa” as “understanding”. However, the Complainant contends that the term “asso” when combined with one or more words or other abbreviations can constitute an abbreviation of “associazione” in Italian. The printout from the Virgilio website produced by the Complainant provides such examples as “Assobancaria” which may be expanded to “Associazione Bancaria Italiana” and “Assocalor” which may be expanded to “Associazione nazionale tra i produttori dei servizi di calore”. The Respondent’s answer on this point is that the word “asso” does not feature on its own on the website produced by the Complainant.
In order to assess the meaning of the disputed domain name, the Panel consulted two online Italian to English dictionaries which produced the same result. Such limited factual research is consistent with the provisions of paragraph 4.5 of the WIPO Overview 2.0 which specifically mentions the acceptability of reviewing dictionaries or encyclopedias to determine any common meaning. It would appear that the “intesa” component of the disputed domain name in its generic sense is appropriately translated as “harmony” (perhaps the favoured translation of the Complainant) or as a secondary meaning “accord” or “agreement”. The word “understanding” is meant only in that sense and not in the sense of “to understand something”. This in the Panel’s view renders the Respondent’s translation “understanding ace” somewhat spurious and not something which would make sense to Italian speaking Internet users. The Panel agrees based upon the dictionary results that “asso”, if taken as a word rather than an abbreviation, can be read as “ace” meaning a playing card and can be used in common phrases such as “avere un asso nella manica” (“to have an ace up one’s sleeve”).
The Panel considers that there is a genuine risk that Italian speaking Internet users searching for the Complainant or its services may actually believe there to be a real connection between the disputed domain name and the Complainant in light of the fact that they may read the disputed domain name as an abbreviation of the term “Associazione Intesa”. In the Panel’s opinion, such users would not necessarily appreciate the distinguishing value of the term “asso” with its generic meanings and would simply not read “asso intesa” as “understanding ace” as contended for by the Respondent. The Panel is satisfied that the disputed domain name would strongly lead an average Internet user [average here meaning one who understands Italian] back to the Complainant’s trademark. Furthermore, and contrary to the Respondent’s submissions, the Complainant does not have to demonstrate the exclusivity of its trademark to prevail on this point.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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”.
The consensus of previous decisions under the Policy is that a complainant may establish this second element by making out a prima facie case not rebutted by the respondent. The Complainant in the present case states that neither the Respondent nor its director have any connection with the Complainant and the disputed domain name does not correspond to the name of the Respondent or its director. The Complainant also asserts that any use of the Complainant’s trademark requires to be authorized or licensed by the Complainant and that the Respondent has not been so authorized or licensed. The Panel considers that this is sufficient to constitute a prima facie case and accordingly the burden shifts to the Respondent to demonstrate that it has rights and legitimate interests in the disputed domain name.
The Respondent’s submissions focus squarely on the fact that it was making a bona fide offering of goods or services at the disputed domain name (within the meaning of paragraph 4(c)(i) of the Policy) via pay-per-click parking. The WIPO Overview 2.0 considers such a prospective defence at paragraph 2.6 which states:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” [see also paragraph 3.8 below] or from “legitimate noncommercial or fair use” of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
The Panel in Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964 held that using domain names for advertising links can in certain circumstances represent legitimate interests for the purposes of paragraph 4(c) of the Policy, such as when:
“the respondent regularly engages in the business of using domain names to display advertising links;
the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
the domain name in question is a “dictionary word” or a generic or descriptive phrase;
the domain name is not identical or confusingly similar to a famous or distinctive trademark; and
there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
In the present case, the Respondent provides evidence that it has been in the business of acquiring domain names for monetization and development and to service the domain name aftermarket since 2008 and that it acquired the disputed domain name in that context. As noted above, this does not of itself confer rights or legitimate interests upon the Respondent arising from a bona fide offering of goods and services. The question is whether the Respondent has engaged in a permissible use of a descriptive phrase genuinely related to the generic meaning of the disputed domain name and whether it has made good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others.
The Panel considers that in the present case the disputed domain name is not a “dictionary word” or a generic or descriptive phrase but is in fact an “uncommon name” which does not translate as “understanding ace” as the Respondent contends, nor does “understanding ace” make any particular sense as a descriptive phrase in English or Italian. This is a matter which either was or ought reasonably to have been in the Respondent’s contemplation at the point when it registered the disputed domain name particularly since the Respondent’s own search for “asso intesa” produced no results whatsoever showing its use as a phrase per se.
In the case of Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc., v. Jake Porter,WIPO Case No. D2007-1254, the panel noted that while the Policy does not routinely require registrants to conduct a trade mark search, it does suggest that a respondent has some obligation when registering an uncommon name for potential resale and using it to generate revenue from third-party advertising, to avoid a likelihood of confusion with the trade marks of others. The panel pointed out that this possibility can be revealed with a simple search engine query.
Accordingly, it is necessary to examine the searches which the Respondent says that it carried out. The Respondent explains that it conducted G searches on the terms “asso intesa” and “assointesa”. The presence of quotation marks is important here as it indicates that the Respondent was searching for the terms as phrases and not as independent words. What would have happened had the Respondent searched for “asso” and “intesa” as separate words? The Complainant suggests, and the Panel accepts, that a basic search on “intesa” would necessarily have yielded obvious references to the Complainant. Indeed, the Complainant produces an example of just such a search which clearly shows this.
In the Panel’s view it was not reasonable for the Respondent to search for the term in the disputed domain name as a phrase only, particularly when “asso intesa” is clearly not a common or descriptive phrase in Italian or in its English translation. The Respondent was aware that the term “asso intesa” consisted of two separate Italian words and as such the Respondent was on notice that either or both of the words might have special significance in the Italian marketplace. In other words, it should reasonably have been in the Respondent’s contemplation (particularly given his familiarity as a domain name registrant) that either word might be a trademark in its own right whereby the addition of the other word might be insufficient to distinguish the disputed domain name from the trademark.
The Panel considers that the Respondent’s failure to search on “intesa” is the crucial issue in considering whether the Respondent’s searches went far enough to be considered “good-faith efforts”. However, for completeness, the Panel will also consider whether the abbreviation of “asso” could reasonably have been in the Respondent’s contemplation. The Respondent simply denies that the term is an abbreviation. However, it is apparent to the Panel the Respondent could and perhaps should have readily identified the business use of the term from its own searches. The Respondent notes that it identified a business known as “Asso Intesa” (apparently unconnected with the Complainant) which operates under the domain name . The Respondent states that this business is using the term “asso” in a generic sense relative to travel, given that the word can refer to a geographic region. However, it is apparent from the Respondent’s own G search that the manner in which this organization uses “asso” is likely to be closer to that contended for by the Complainant. The synopsis for on the relative Google listing produced by the Respondent uses no less than three words from the “asso” root, namely the words “Associazionismo”, “associati” and “Associazioni”.
The Respondent points out that the trademark INTESA is not well known in the United States and that other organisations exist named “Intesa” (including presumably the business named “Asso Intesa” noted above). However, as the panel noted in Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448 it is not necessary for the Panel to make a finding on whether the evidence is sufficient to show that the Complainant and its mark are “famous” or “well known”. It is enough for present purposes to find that the Respondent should have conducted adequate good faith searches before registering the disputed domain name, and that if it had done so, it would have readily found reference to the Complainant and appreciated the likelihood of confusion between the disputed domain name and the Complainant.
It is accepted by the Respondent that the pay-per-click links produced on the website associated with the disputed domain name when displayed in Italy were targeted to the trademark value of the word INTESA. Where a business such as the Respondent’s is genuinely attempting to avoid such an outcome it must take particular care in the selection of its domain names. While the operation of a business using wholly generic words or common phrases in association with pay-per-click parking pages can constitute a legitimate interest in terms of the Policy, in this case the Respondent was not using a common phrase and was not apparently even working in its native language, given its reliance on machine translations. In the Panel’s opinion, these circumstances heightened the Respondent’s obligation to perform adequate good faith searches. That obligation would only be fulfilled in the present case had the Respondent considered whether either of the words in the disputed domain name had obvious trademark connotations and had searched against them individually. Failure to make the searches which are clearly called for in such a case results in the Respondent having effectively closed its eyes to whether the disputed domain name was identical or confusingly similar to the Complainant’s trademark.
In all of the above circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
It is accepted by both Parties in the present case that the disputed domain name pointed to links targeting the Complainant’s trademark when the associated website was viewed in Italy. With the benefit of hindsight, this was bound to happen once the Respondent registered the disputed domain name and pointed it to a pay-per-click landing page where the Respondent effectively handed over control of what advertisements were served to a third party who had the power to ignore the master keyword which the Respondent states that it selected. However, the Panel may not deal in hindsight and must consider the likely position at the point of the Respondent’s registration of the disputed domain name.
As noted in the preceding section B, based upon the principle in the case of Starwood Hotels, supra, it was the Respondent’s obligation to conduct good faith searches when registering an uncommon name and had it done so it would clearly have had knowledge of the Complainant’s trademark. However, while the Panel cannot say with certainty whether the Respondent had actual knowledge of the Complainant’s trademark, past cases indicate that it is reasonable for a panel to make an inference of knowledge in certain circumstances. In the case of mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141, which also involved domain names pointing to pay-per-click landing pages, the panel stated the following:
“As for Respondent’s claim that it was not specifically familiar with Complainant’s trademark, even if the Panel would credit that assertion, that assertion is not enough to avoid a finding of bad faith registration. Although there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.
Furthermore, if a party elects to conduct such searches to show its absence of bad faith, the searches should be properly done to make it likely that any existing trademark rights will be found.”
In the present case, as the Panel has already found, the Respondent did not conduct its searches properly. Accordingly this raises an inference of knowledge of the Complainant’s trademark on the part of the Respondent and thus that the disputed domain name was registered and used in bad faith. The Panel is fortified in this view by certain additional factors which all point in the direction of registration and use in bad faith. While some of these are ex post facto the registration of the disputed domain name itself, the Panel considers that they are still relevant to a consideration of the overall question of whether the Respondent was operating as a registrant in good faith or otherwise.
First, there is the fact that the term “understanding ace” is meaningless and indeed appears to be a mistranslation of “asso intesa”. The Respondent’s comment that the Panel should find that the term was a “make-sense expression” to the Respondent is in the Panel’s view disingenuous.
Secondly, the fact that the term “asso” can in certain circumstances mean “associazione” was placed directly in front of the Respondent during its researches and the Respondent’s position is entirely lacking in credibility where it simply denies that the abbreviation exists and challenges the Virgilio page produced by the Complainant, with its clear examples of how the term is used (one of which relates to banking) by stating that the word “asso” does not feature.
Thirdly, the manner in which the Respondent handled the receipt of the Complainant’s cease and desist letter is of significance. As a sophisticated operator of pay-per-click parking pages the Respondent was evidently aware of the possibility that the advertising feed provider was capable of over-riding the master keyword which it claimed to have set. Nevertheless, the Respondent chose to ignore the Complainant’s letter entirely on the grounds that it was without merit. The letter was issued by a firm of lawyers based in Italy on behalf of an Italian client which is described therein as an institution of some significance. The letter makes it clear that the website associated with the disputed domain name is showing “links sponsoring banking and financial services, i.e. the services for which the trademark INTESA is registered and used”. The Respondent would nevertheless have the Panel believe that it was reasonable to consider that this was without merit and did not warrant any response whatsoever, even on the grounds of professional courtesy alone. Furthermore, the Panel finds that the Respondent’s argument that it was the obligation of the Complainant to include a screenshot of the offending website if it expected any response, investigation or action from the Respondent is disingenuous.
In the Panel’s opinion the more typical response of a registrant in good faith would be to respond immediately to such a letter seeking further information as to the links complained of and indeed requesting a screenshot, rather than simply ignoring the communication because it did not already contain this, then subsequently renewing the disputed domain name. This is at least indicative of the fact that the Respondent’s actions are not entirely consistent with a good faith registrant. The Respondent asserts that its good faith can be demonstrated by the fact that it attempted to change its website after receipt of the Complaint, however the Panel does not consider that this is particularly significant as the Respondent had had notice some considerable time before then of the Complainant’s concerns yet had taken no steps whatsoever to follow up with the Complainant.
Finally, the Panel notes the terms of the Respondent’s letter to the Complainant’s representatives of April 30, 2011 in which the Respondent proposed an offer of settlement whereby it would transfer the disputed domain name in return for a payment of USD 10,000. The Complainant asserts that this offer is indicative of bad faith. The Respondent strongly denies this allegation, describing it as “outrageous” and characterises the letter as a discussion between attorneys of a possible settlement before a case goes to trial. The WIPO Overview 2.0 provides a consensus view on this subject at paragraph 3.6 which states: “Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith. This is so both in relation to offers by a respondent to sell made prior to a complainant’s filing of a UDRP complaint, or after such filing. The latter takes account of the fact that cybersquatters often wait until a trademark holder launches a complaint before asking for payment. The legal criteria for showing bad faith directly specify that an offer for sale can be evidence of bad faith, and panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Admissibility may turn to some extent on which party - complainant or respondent - initiated the settlement discussions, and on whether the complainant itself may have solicited any offer to sell.”
Clearly this is not a case where the Complainant itself directly or indirectly solicited any offer to sell. The Complainant’s approaches to the Respondent were limited to its cease and desist letter and reminder and to the Complaint itself. The Respondent does not deny that its letter contained an offer to transfer the disputed domain name to the Complainant for a sum considerably in excess of its out of pocket costs. There is no reason given in the letter itself, in the Response or in the Respondent’s supplementary filing as to how the Respondent came to fix the sum of USD 10,000 as the value for the disputed domain name and how it considers that this figure is justifiable. The Panel finds it difficult to see how the approach of the Respondent can be truly described as a good faith effort to compromise, particularly where at the date the letter was written the Respondent was already aware of the Complainant’s cause for complaint arising from the advertising links which were being displayed in Italy and from which the Respondent was presumably profiting, however inadvertently if the Respondent is to be believed.
The Respondent points out that for the letter to constitute evidence of bad faith registration and use in terms of paragraph 4(b)(i) of the Policy the Complainant would be required to make an additional showing that it had been the Respondent’s primary purpose to sell the disputed domain name in bad faith. While that may be so, paragraph 4(b) describes non-exclusive circumstances which may be evidence of bad faith and the Panel is not restricted to a consideration of this matter in terms of paragraph 4(b)(i). Consequently, the Panel finds that the Respondent’s letter of April 30, 2011 cannot be described as a good faith effort to compromise and that this is a further factor pointing in the direction of bad faith registration and use.
The Respondent notes that it has an unblemished record with regard to its 50,000 domain name registrations which it has effected since 2008 and that the Panel should thus infer good faith conduct in the same way as it is reasonable to make an inference of bad faith from bad faith conduct. The Panel does not find this approach persuasive in the present case. Previous determinations of bad faith by panels in cases under the Policy regarding a particular respondent are matters upon which a panel may confidently rely in its assessment of bad faith. Furthermore, the panel in that circumstance may review those cases to assure itself that they are relevant and arise from similar circumstances. The fact however that a respondent with a large number of domain names has never been the subject of a complaint under the Policy before is not the direct converse. There may be many reasons why this could be the case. Accordingly, in the Panel’s view the Respondent’s domain name portfolio apparently being to-date largely unchallenged under the UDRP is not of particular assistance in the determination of the present Complaint.
For the sake of completeness, the Panel notes that it does not believe that the Respondent’s failure to provide accurate contact details on the WhoIs for the disputed domain name is a factor pointing in the direction of bad faith in this case but is simply neutral. The Panel does not believe that the Respondent was intentionally attempting to conceal its identity from parties such as the Complainant. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15 of the Rules, the Panel
orders that the domain name, , be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Dated: June 16, 2011
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