Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Moniker Privacy Services of Pompano Beach, Florida, United States of America (“United States”), and Rui Zhang [ . . . ] @ of Nanjing, Jinagsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2012. On January 25, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On January 25, 2012, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 26, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 31, 2012. 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 Respondent of the Complaint, and the proceedings commenced on February 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 22, 2012.
The Center appointed Halvor Manshaus as the sole panelist in this matter on March 5, 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-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-Eastern Europe.
Complainant is the owner of several registered trademarks, including International trademark no. 920896 INTESA SANPAOLO, European Union Community trademark no. 5301999 INTESA SANPAOLO, and Italian trademark registration no. 1042140 INTESA SANPAOLO.
Moreover, Complainant is the owner of several domain names containing its trademark INTESA SANPAOLO, including , .org, .eu, .info, .net, and .biz, as well as , .org, .eu, .info, .net, and .biz.
Respondent is Rui Zhang [ . . . ] @ of Nanjing, Jinagsu, China. It registered the disputed domain name through Moniker Privacy Services of Pompano Beach, Florida, United States. According to the publicly available WhoIs database, the disputed domain name was registered on February 25, 2011. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to Complainant's trademarks.
Complainant further holds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that the disputed domain name does 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 INTESA SANPAOLO by Respondent. Further, Complainant holds that the domain names do not correspond to the name of Respondent, nor may Respondent's use of the domain names be described as a fair use.
In addition, Complainant holds that Respondent has registered and is using the disputed domain name in bad faith. Complainant argues that Respondent intentionally attempts to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the 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 services via sponsored links, most of which refer to websites containing banking and financial services. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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
From the presented evidence, Complainant has demonstrated its rights to the trademark INTESA SANPAOLO through the registration and use of said trademark. The disputed domain name incorporates the trademark INTESA SANPAOLO, with the only difference being that the letters “a” and “o” have been switched and that the “sa” in “Sanpaolo” has been omitted.
The disputed domain name only differs from Complainant's domain name (as well as other domain names owned by Complainant, with a different suffix) by switching the “a” and “o” and omitting the “sa” in “Sanpaolo”.
The Panel makes reference to Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc.,WIPO Case No. D2001-1314, regarding the domain names and , where the panel stated that “typosquatting” is when a “domain name is a slight alphabetical variation from a famous mark [ . . . ] UDRP [sic] jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user – particularly when the mark is another language from that of the user's mother tongue”. The Panel finds that this is a clear case of so called typosquatting, and thus that the disputed domain name is confusingly similar to Complainant's trademark. B. Rights or Legitimate Interests
According to Complainant, Respondent does not have any rights to or legitimate interests in the disputed domain name, as the disputed domain name does not correspond to any trademark registered by Respondent. Further, any use of Complainant's trademarks has to be authorized by the Complainant, and Complainant has never given Respondent any authorization or license for such use.
Neither is Respondent is commonly known as “Intesanpoalo”, nor does Respondent appear to trade under these names or any related names.
The Panel therefore, on the basis of the available record, concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The website corresponding to the disputed domain name consists 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 Internet users, searching for services offered by Complainant, are diverted to the website corresponding to the disputed domain names.
The Panel accepts Complainant's assertion that Respondent was aware of the INTESA SANPAOLO trademark at the time of registering the disputed domain name. INTESA SANPAOLO and other variations of the name are well-known trademarks in a not insignificant part of Europe. Further, the name is so distinctive, and the disputed domain name so similar to said distinctive name, that it is a strong indicator of Respondent known or should have known about Complainant's trademarks and names at the time of registration of the disputed domain name.
Further, the Panel finds that Respondent, by registering and using the disputed domain name, seeks to use the confusing similarity between Complainant's well-known trademarks and the disputed domain name for the purpose of intentionally attracting Internet users to websites corresponding to the disputed domain name, 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 Encyclopedia Britannica Inc. v. S,WIPO Case No. D2000-0753 and E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
The Panel also acknowledges that banking and financial institutions in particular have suffered from domain name speculation and diversion practices, due to the high number of online bank users. Complainant has been part of several UDRP administrative proceedings as the Complainant.
Thus, 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.
Halvor Manshaus
Sole Panelist
Dated: March 19, 2012
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