The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Alessio Beltrami of Milan, Italy. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2011. On August 8, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On August 10, 2011, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 11, 2011 providing the registrant and contact information disclosed by GoD, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 11, 2011.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 2, 1011.
The Center appointed Eva Fiammenghi 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
The Complainant is an Italian Bank group and also one of the top banking groups in Europe. The Complainant, Intesa Sanpaolo S.p.A., is the company resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.
The Complainant has a strong presence in Italy and Central-Eastern Europe with its capillary branches and it has an international network to support corporate customers, which is active in 29 countries.
One of the Complainant’s banks is named “Banco di Napoli”.
The Complainant is the owner of the following trademarks for BANCO DI NAPOLI:
Community trademark BANCO DI NAPOLI, Registration No. 5816178, filed on April 5, 2007, registered on January 17, 2008, in classes 9,16,35,36,38 and 41;
Community trademark BANCO DI NAPOLI, Registration No. 6067532, filed on July 4, 2007, registered on June 6, 2008, in classes 9,16,35,36,38,41 and 42;
Community trademark BANCO DI NAPOLI, Registration No. 6068795 filed on July 4, 2007, registered on May 21, 2008 in classes 9,16,35,36,38,41 and 42.
The Complainant is also the owner of the following domain names using “bancodinapoli”:
;
;
;
;
;
.
The Domain Name was registered on June 8, 2011. 5. Parties’ Contentions A. Complainant
The Complainant argues that the Domain Name is confusingly similar to its BANCO DI NAPOLI trademarks and domain names.
The Domain Name reproduces exactly the Complainant's trademarks and domain names.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.
The Complainant requests that the Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements is satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.B.); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 6.C).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate. A. Identical or Confusingly Similar
The Complainant has shown that it owns trademark rights in the BANCO DI NAPOLI trademark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark BANCO DI NAPOLI. The sole addition of hyphens (the symbol “-”) between one word and another does not eliminate the confusing similarity. This kind of "typosquatting" uses similar confusion resulting from typing errors commonly made by Internet users (see Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314).
In view of the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years.
The first element of the Policy has, therefore, been met. B. Rights or Legitimate Interests
The Panel finds that with regard to whether the Respondent has any rights or legitimate interests in respect of the Domain Name (paragraph 4(c) of the Policy), the Complainant has made an adequate prima facie showing that the Respondent does not have such rights or legitimate interests.
“BANCO-di-NAPOLI” does not correspond to the Respondent’s name, and there is no evidence that the Respondent is otherwise commonly known as “Banco-di-Napoli”.
The Complainant also declares that the Respondent has not been authorized or licensed to use the Domain Name .
The Respondent did not come forward with any evidence that it has any rights or legitimate interests in respect of the Domain Name. Moreover, the website associated with the Domain Name displays some commercial links to products and services competing with those of the Complainant’s. Such use of the Domain Name does not constitute a bona fide use that could give the Respondent rights or legitimate interests pursuant to the Policy.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Name.
The second element of the Policy has, therefore, been met. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith. This list is not exhaustive, but merely illustrative.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, the [Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on its web site or location.”
Based on the record the Panel considers that the Respondent, by registering and using the Domain Name incorporating the Complainant’s well-known registered trademark BANCO DI NAPOLI, is in effect attempting to attract the customers to his web page. The Panel notes in this regard that the Respondent’s website could be easily confused with the Complainant’s website and that Internet users may be lead to disclose confidential information.
This fact can be deduced from the possibility for the Internet users to give their e-mail address through the form that can be find at the end of each webpage at the Domain Name.
The Panel finds it likely that Internet users and consumers think that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.
For all the foregoing reasons, the Panel concludes that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 Domain Name, be transferred to the Complainant.
Eva Fiammenghi
Sole Panelist
Dated: September 23, 2011
Full & Egal Universal Law Academy