Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella of Milan, Italy.
Respondent is Wei Jinping of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen eName Network Technology Corporation Limited, d/b/a eName Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2011. On August 2, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On August 3, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 4, 2011, Complainant submitted a request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on August 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 31, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 12, 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
Complainant is an Italian banking group based in Italy and was formed in 2007 through a merger between two entities, namely Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. Complainant owns multiple trademark registrations for INTESA SANPAOLO covering banking, investment, and finance services and related goods including registrations in the European Community and Italy and in jurisdictions including China, the United States of America, Singapore, South Korea, the Russian Federation, and Switzerland under designations of a WIPO International registration under the Madrid Protocol and Madrid Agreement.
The disputed domain name was created on March 17, 2011. 5. Parties’ Contentions A. Complainant
Complainant claims to be one of the top banking groups in Europe and the leading banking group in Italy in the areas of retail, corporate, and wealth management. Complainant claims to have over 11 million customers in Italy, over 8.5 million customers in Central-Eastern Europe, and an international network providing support to corporate customers in 29 countries outside of Europe including China, the United States of America, the Russian Federation, and India.
Complainant alleges that the disputed domain name is confusingly similar to its INTESA SANPAOLO trademark, noting that the only difference between the trademark and the disputed domain name is the inclusion of an additional letter “s” in the disputed domain name. Complainant maintains that Respondent is unrelated to Complainant and that Complainant has not authorized Respondent or any other individual or entity to use the disputed domain name.
Complainant argues that Respondent registered primarily for the purpose of selling, renting, or transferring the disputed domain name to Complainant for valuable consideration which exceeds out-of-pocket costs related to its registration. In support of this claim, Complainant has presented email correspondence received from Respondent requesting USD 2000 in exchange for the disputed domain name. Regarding use of the disputed domain name, Complainant argues that Respondent has used in an attempt to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s INTESA SANPAOLO trademark. In support of this argument, Complainant has provided a copy of content displayed on the disputed domain name which consists of links to third party websites which advertise banking and financial services. Complainant alleges that this content includes monetized links which provide Respondent with compensation when accessed by Internet users, and maintains that these links are evidence of bad faith use which may cause confusion for Internet users and divert Internet traffic away from Complainant’s websites and to the websites of Complainant’s competitors. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Language of Proceeding
The Panel has reviewed the communications received from Complainant and Respondent regarding the language of the proceeding. Complainant has requested that English be recognized as the language of the proceeding because (1) the website displayed at the disputed domain name contained English language content; and (2) Respondent has demonstrated an understanding of the English language in communications with Complainant.
The record shows that Respondent has knowledge of the English language. Specifically, Respondent has communicated with Complainant in English, and the record shows that the website associated with the disputed domain name has displayed content in the English language. Additionally, all English language communications concerning this case transmitted to Respondent have been accompanied by Chinese translations. Based on the foregoing, the Panel decides that English should be the language of the administrative proceeding in this case. A. Identical or Confusingly Similar
Complainant has owned trademark rights in INTESA SANPAOLO since as early as 2006. These rights precede the creation of the disputed domain name on March 17, 2011. It is clear from the record that Complainant offers banking, finance, and investment services under the INTESA SANPAOLO mark.
The disputed domain name is confusingly similar to the INTESA SANPAOLO mark in which Complainant has rights. The only difference between the disputed domain name and Complainant’s INTESA SANPAOLO trademark is the inclusion of an additional letter “s” in the disputed domain name between the literal elements “intesa” and “sanpaolo”. The Panel considers this to be a simple misspelling and notes that similar domain names have been held to be confusingly similar to the trademarks at issue. See, e.g., E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043 (holding that the disputed domain name to be confusingly similar to Complainant’s trademark EDMUNDS).
Furthermore, the disputed domain name also incorporates Complainant’s INTESA SANPAOLO trademark in its entirety. It has been held that the incorporation of a trademark in its entirety into a domain name is sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505.
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
As noted above, Complainant has provided evidence of its prior rights in the INTESA SANPAOLO trademark. These rights precede the creation of the disputed domain name.
There is no evidence indicating that Respondent is licensed to use Complainant’s INTESA SANPAOLO trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the terms “Intesa Sanpaolo”. As such, Complainant has made out its prima facie case, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant has established trademark rights in INTESA SANPAOLO which precede the registration of the disputed domain name and are recognized in China, the jurisdiction identified as Respondent’s country of residence. Given the distinctiveness of Complainant’s INTESA SANPAOLO trademark, the trademark’s lack of generic meaning in reference to other goods and services, and the notoriety of the trademark given Complainant’s substantial business operations, it is difficult to believe that Respondent was unaware of Complainant’s business when registering a domain name which incorporates Complainant’s trademark in its entirety.
Registration and use of a domain name incorporating a Complainant’s trademark and providing links which expressly refer to services provided under that Complainant’s trademark has been held to be indicative of a Respondent having knowledge of the services provided under the trademark. See Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517. There is evidence suggesting that the links displayed on Respondent’s website are efforts to trade off the goodwill of Complainant’s trademarks. Specifically, the record indicates that Respondent’s website displayed links relating to websites advertising financial services provided by third party competitors of Complainant. These websites included a bank rate comparison webpage, a webpage advertising services of ING Direct and Orange, a webpage advertising services of Gruppo Mutui, a credit provider, and a webpage advertising services of Saxo Bank, an entity specializing in online financial trading services. The incorporation of third party links regarding services competitive to those provided under another party’s trademark supports a finding that a domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728.
By registering the disputed domain name and using the website to display links to websites advertising services provided by third party competitors of Complainant, Respondent is diverting Internet traffic from Complainant’s websites featuring its INTESA SANPAOLO mark. Moreover, bad faith is also evident from Respondent’s reply to Complainant’s letter regarding the matter, as it requested USD 2000 in exchange for transfer of the disputed domain name. This fee clearly exceeds any out-of-pocket costs paid by Respondent to register the disputed domain name. A request for fees in excess of out-of-pocket costs is evidence of bad faith. See, e.g., Clairol Incorporated v. Jean-Pierre Fux,WIPO Case No. DTV2001-0006, CBS Broadcasting, Inc. v. Gaddoor Saidi,WIPO Case No. D2000-0243, and Nokia Corporation v. David Wills,WIPO Case No. DWS2001-0004. The only exceptions are situations where Respondent can show rights to or legitimate interests in a domain name, but this is not the case here because the record shows that Respondent has used the disputed domain name to trade off of Complainant’s INTESA SANPAOLO mark.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 Complainant.
Kimberley Chen Nobles
Sole Panelist
Dated: September 26, 2011
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