The Complainant is Intesa Sanpaolo S.p.A., of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Igor Stojanovic, of Belgrade, Serbia. 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 July 1, 2011. On July 1, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 6, 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 July 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2011.
The Center appointed Thomas M. Legler as the sole panelist in this matter on August 11, 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. 4. Factual Background
The Complainant is a leading Italian banking group resulting from the merger between 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 11.4 million customers in Italy. Intesa Sanpaolo has put in place an international network specialized in supporting corporate customers; it is present in 29 countries, such as countries in the Mediterranean area, the United States, Russia, China and India.
The Complainant submits evidence according to which it owns the following trademark registrations for the term "INTESA":
1. International trademark registration number 793367 “INTESA”, granted on September 4, 2002, in class 36;
2. Community trademark registration number 2803773 “INTESA”, applied on August 7, 2002, and granted on November 17, 2003 in class 36;
3. Community trademark registration number 3105277 “INTESA”, applied on March 21, 2003, and granted on February 13, 2009, in classes 16, 35, 36, 38, 41 and 42;
4. Italian trademark registration number 873777 "INTESA", applied on August 12, 2002, and granted on September 4, 2002, in class 36.
The disputed domain name was registered by the Respondent on October 27, 2010. It resolves to a website showing, among others, links to financial and banking services. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name is an exact reproduction of its trademark INTESA, with the only addition of the letter "E". The Complainant deems that this difference cannot prevent the disputed domain name from being considered as confusingly similar. The Complainant points out that the prefix "E" is a generic term in the Internet language, since the letter "E" usually indicates an online service. The Complainant therefore concludes that the disputed domain name is confusingly similar with its trademark.
The Complainant further contends that the Respondent has no rights on the disputed domain name, as any use of its trademarks INTESA has to be authorized by the Complainant, and the Complainant has never provided such authorization to the Respondent. The Complainant asserts that the disputed domain name does not correspond to the Respondent's name and that the Respondent is not commonly known as "EINTESA". The Complainant also submits that the disputed domain name is not being used in a fair or non commercial way.
The Complainant indicates that the Respondent has registered and is using the disputed domain name in bad faith. The fact that the Respondent has registered a domain name which is confusingly similar to the Complainant's trademark suggests that the Respondent was aware of the Complainant's trademark at the time of registration of the disputed domain name. The disputed domain name is connected to a website sponsoring, among others, financial and banking services which are Complainant's competitors. Internet users are therefore misled to the website of the Complainant's competitors when seeking for information about the Complainant. The Complainant asserts that the Respondent's sponsoring activity is being remunerated. The Complainant also points out that the awareness of the Respondent about the Complainant's identity can be demonstrated by the lack of response by the Respondent to the Complainant's cease and desist letter dated April 8, 2011. B. Respondent
The Respondent did not submit any answer to the Complaint. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order 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
This element consists of two parts: first, does the Complainant have rights in a relevant trademark; and, second, is the disputed domain name identical or confusingly similar to that trademark.
The Panel finds that the Complainant has duly established that it has rights in the trademark INTESA (see above section "Factual Background").
The relevant part of the disputed domain name for a comparison is "eintesa". It differs from the Complainant's trademark by one letter: the adjunction of an "E" in front of "INTESA". The question arises whether the disputed domain name is confusingly similar to the Complainant's trademarks. A phonetic comparison of the two words "INTESA" and "EINTESA" is not conclusive as it depends in which language the pronunciation of the "E" is done, in particular if the "E" in front of the disputed domain name is stressed. However, the Panel finds that the addition of the "E" in front of the trademark is visually not sufficient to characterize the domain name as independent and original. Quite to the contrary, the overall impression is that Respondent has chosen a term which is too close to the registered trademarks (although it did not choose to replace a letter but to add one, which distinguishes this matter from the "typo-squatting" cases).
In addition, the "E" is commonly known as referring to online or electronic services as the examples of "e-market", "email" and "e-finance" show. The fact that there is or not a hyphen between the letter "E" and the rest of the word can not be considered as relevant, since it is common in domain name spelling to delete specific signs in order to simplify it. By choosing the "E" in front of the relevant trademark, Respondent showed no originality but, quite to the contrary, suggests that the domain name represents an address for electronic finance services with the Complainant.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not authorized to use the disputed domain name, as "EINTESA" does not correspond to the Respondent's name and the Respondent is not commonly known as "EINTESA". The Complainant also indicates that the Respondent is not involved in any fair or non commercial use of the disputed domain name.
Those assertions are undisputed. Indeed, in lack of any response of the Respondent or any presentation of circumstances which may demonstrate the Respondent's rights or legitimate interests to the disputed domain name according to paragraph 4(c) of the Policy, the Panel considers that the Complainant has sufficiently demonstrated that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets four non-exclusive circumstances, that if found by the Panel, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on its website or location.
The disputed domain name has been registered by the Respondent on October 27, 2010.
The Complainant submits evidence according to which it has registered its trademark INTESA long before the Respondent's disputed domain name registration (see above section "Factual Background"). This fact and the circumstance that the Complainant is one of Europe's leading banks, indicate that the Respondent could not have been unaware of the Complainant's trademark registration at the time of its domain name registration.
In addition, the Complainant contends that the Respondent, by using the disputed domain name, attempted to divert Internet users from its website by creating a likelihood of confusion with its trademark.
This assertion appears not to be unfounded as the Respondent is reproducing links, among others, towards financial services accessible online as also reflected in the disputed domain name where the Respondent added the letter "E" (also used in the sense of an abbreviation for "electronic"; see above) to Complainant's trademark.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
Thomas Legler
Sole Panelist
Dated: August 22, 2011
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