Complainant is Intesa Sanpaolo S.p.A. of Turin, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Freelive Invest Ltd of Stafford, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names and are registered with PSI-USA, Inc. dba Domain Robot. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2012. On January 20, 2012, the Center transmitted by email to PSI-USA, Inc. dba Domain Robot a request for registrar verification in connection with the disputed domain names. On January 23, 2012, PSI-USA, Inc. dba Domain Robot transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 16, 2012.
The Center appointed Halvor Manshaus as the sole panelist in this matter on February 23, 2012. 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 corporation, with legal seat in Turin, Italy. Complainant is the leading Italian banking group, and is also present in Central and Eastern Europe, the Middle East and North Africa.
Complainant was founded in 2007, resulting from the merger between Italian banks Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. With over 12 million customers and a market capitalization of some EUR 31.7 billion, Complainant's brand is well known, particularly in Italy and Central and Eastern Europe.
Complainant is the owner of several registered trademarks, including Community Trade Mark no. 4717674 BANCA INTESA BEOGRAD, Serbian trademark registration no. 51809 BANCA INTESA BEOGRAD, Community Trade Mark no. 3105277 INTESA, Community Trade Mark no. 779793 BANCA INTESA and International trademark no. 831572 BANCA INTESA.
Further, Complainant is the owner of several domain names containing “bancaintesabeograd", with the following suffixes: .rs, .com, .net, .org, .biz, .co.yu, .eu and .it.
Respondent is a company registered in Stafford, United Kingdom.
The disputed domain names and were registered by Respondent on July 26, 2011. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain names are confusingly similar to Complainant’s trademarks.
Complainant further holds that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that the disputed domain names do not correspond to a trademark registered in the name of Respondent, and refers to the fact that Complainant has never authorized or licensed any use of Complainant’s trademark BANCA INTESA BEOGRAD by Respondent. Further, Complainant holds that the disputed domain names do not correspond to the name of Respondent, nor may Respondent’s use of the disputed domain names be described as a fair use.
In addition, Complainant holds that Respondent has registered and is using the disputed domain names in bad faith. Complainant argues that Respondent intentionally attempts to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with Complainant’s trademark. Complainant therefore finds that Respondent is intentionally trading on the goodwill associated with Complainant's trademarks for commercial gain, as Respondent uses the disputed domain names solely for providing sponsored links, most of which refer to websites containing banking and financial services.
Complainant requests that the disputed domain names and be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
From the presented evidence, Complainant has demonstrated its rights to the marks BANCA INTESA BEOGRAD, INTESA, and BANCA INTESA through the registration and use of said marks. The disputed domain name incorporates in full the mark BANCA INTESA, whereas the disputed domain name incorporates the mark BANCA INTESA BEOGRAD, with the only difference being that the letter “c” in “banca” has been replaced with the letter “k”.
The disputed domain name only differs from Complainant’s domain name (as well as other domain names owned by Complainant, with a different suffix) with regard to the city name, with Respondent’s disputed domain name using the English translation of Beograd.
The disputed domain name only differs from Complainant’s domain name by replacing the “c” in “banca” with a “k”, and by adding the generic term “online” to the name.
It follows from previous UDRP decisions that the mere addition of a generic or common term such as “belgrade” or “online” to a registered trademark is insufficient to avoid confusing similarity between a domain name and the trademark of a complainant. Reference is made to Siemens AG v. Private Registration Aktien Gesellschaft,WIPO Case No. D2011-1163; Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; and Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022.
Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks. B. Rights or Legitimate Interests
According to Complainant, Respondent does not have any rights to or legitimate interests in the disputed domain names, as the disputed domain names do not correspond to any trademark registered by Respondent. Further, any use of Complainant’s trademarks has to be authorized by Complainant, and Complainant has never given Respondent any authorization or license for such use.
Respondent is neither called nor commonly known as “onlinebankaintesabeograd” or “bancaintesabelgrade”, nor does Respondent appear to trade under these names or any related names.
It follows from previous UDRP decisions that it is sufficient for a complainant to make a prima facie showing of its assertion under paragraph 4(c) of the Policy, cf. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The presented evidence and circumstances referred to by Complainant is, in the Panel’s view, sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names.
The Panel therefore, on the basis of the available record, concludes that Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The website corresponding to the disputed domain names consist solely of sponsored links, most of which refer to services within the field Complainant operates, namely banking and financial services. As a consequence, Respondent achieves or may achieve commercial gain when web users, searching for services offered by Complainant, are diverted to the websites corresponding to the disputed domain names.
The Panel accepts Complainant’s assertion that Respondent must have been aware of the BANCA INTESA BEOGRAD, BANCA INTESA and INTESA trademarks at the time of registering the disputed domain names. BANCA INTESA and other variations of the name are marks well known in a not insignificant part of Europe. Further, BANCA INTESA is so distinctive, and the disputed domain names so similar to said distinctive name, that it is a strong indicator of Complainant having knowledge of Complainant’s marks and names at the time of registration.
Further, the Panel finds that Respondent, by registering and using the disputed domain names, seeks to use the confusing similarity between Complainant’s well-known trademarks and the disputed domain names for the purpose of intentionally attracting Internet users to websites corresponding to the disputed domain names, thus causing damage to Complainant’s business and tarnishing Complainant’s trademark, whilst at the same time achieving or making it possible to achieve commercial gain through this diversion. The Panel finds that Respondent is “trading off” the reputation of Complainant.
In addition, as referred to by Complainant, it follows from previous UDRP decisions that the registration and use of a domain name to re-direct Internet users to websites featuring organizations that offer products and services in competition with Complainant’s services, such as other banking and financial services, constitutes a bad faith registration and use. Reference is made to Encyclopaedia Britannica Inc. v. S,WIPO Case No. D2000-0753 and YAHOO! Inc. v. David Murray,WIPO Case No. D2000-1013.
The Panel also acknowledges that banking and financial institutions in particular have suffered from domain speculation and diversion practices, due to the high number of online bank users. Complainant has been part of several WIPO UDRP cases as Complainant.
Thus, the Panel finds that the disputed domain names have been registered and are 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 names and be transferred to the Complainant.
Halvor Manshaus
Sole Panelist
Dated: March 8, 2012
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