Complainant is Intesa Sanpaolo S.p.A of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is PrivacyP, Domain Admin of Nobby Beach, Australia / Ma Ying Jo of Shanghai, China.1 2. The Domain Name and Registrar
The disputed domain name is registered with RegisterM Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2012. On March 21, 2012, the Center transmitted by email to RegisterM Corp. a request for registrar verification in connection with the disputed domain name. On April 3, 2012, RegisterM Corp. 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 April 3, 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 April 4, 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 April 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 26, 2012.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 2, 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 banking group with legal domicile in Torino, Italy, and a significant number of branches worldwide, in particular in the United States of America, Russian federation, China and India.
Complainant is the owner of at least the following registrations for the trademark INTESA SANPAOLO:
- Word mark INTESA SANPAOLO, World Intellectual Property Organization (WIPO), Registration Number: 920896, Registration Date: March 7, 2007; Status: Active;
- Word mark INTESA SANPAOLO, Office for the Harmonization in the Internal Market (OHIM), Registration Number: 005301999, Registration Date: June 18, 2007; Status: Active.
The disputed domain name was registered on November 1, 2011; it redirects to a website at “www.” which is a typical PPC website redirecting to commercially active websites of numerous third parties.
Complainant requests the disputed domain name to be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant contends to be the leading Italian banking group and also one of the protagonists in the European financial arena with approximately 5,800 branches and 11.4 million customers worldwide.
Complainant allegedly owns a number of domain names relating to the INTESA SANPAOLO trademark, namely: , , , , as well as , all of which redirect to Complainant’s official website at “www.”.
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s INTESA SANPAOLO trademark because (1) the disputed domain name exactly reproduces the INTESA SANPAOLO trademark with the sole difference of the addition of the letter “r” between the letters “e” and “s” in the first verbal component “Intesa” and (2) such slight alphabetical variation from Complainant’s famous mark is a clear example of a case of “typo-squatting”.
Complainant further suggests that Respondent has no rights or legitimate interest in respect of the disputed domain name because (1) Complainant has never granted Respondent any license or other authorization to use its INTESA SANPAOLO trademark, (2) the disputed domain name does not correspond to Respondent’s name and (3) Complainant may not find any fair or non-commercial use of the disputed domain name.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) Complainant’s trademark INTESA SANPAOLO is distinctive and well-known all around the world which indicates that Respondent had knowledge of Complainant’s trademark at the time of registration of the disputed domain name, (2) there are several circumstances indicating that, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website, namely because the disputed domain name is connected to a website sponsoring, among others, banking and financial services, for whom Complainant’s trademarks are registered and used and (3) Respondent did not react upon Complainant’s attempt to contact Respondent using the form available on the website “www.privacyp” indicated in the disputed domain name’s Whois sheet. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the INTESA SANPAOLO trademark in which Complainant has shown to have rights.
The disputed domain name fully comprises Complainant’s registered trademark INTESA SANPAOLO with the mere typo-squatting arising from the addition of the letter “r” in the first verbal component “Intesa”. Numerous WIPO UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is at least confusingly similar to a registered trademark (see e.g. 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). The fact that the disputed domain name obviously includes a simple misspelling of Complainant’s trademark INTESA SANPAOLO varying from the correct version by just one added letter “r” is not at all in contrast to such finding of a confusing similarity. Typo-squatted domain names are on the contrary intended to be confusing so that Internet users, who unwillingly make common type errors, will enter the typo-squatted domain name instead of the correctly spelled trademark (see also: Intesa Sanpaolo S.p.A. v. Ni Hao/Two Stooges LLC,WIPO Case No. D2011-1640; National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate non commercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name redirects to a typical PPC website at “www.” which in turn redirects Internet users to a variety of third parties’ websites which are not at all specifically tailored to Complainant but redirect, inter alia, to some of Complainant’s (direct) competitors on the financial market.
The Panel, therefore, concludes that Respondent – irrespective of the alleged notoriety of the INTESA SANPAOLO trademark throughout the world – apparently was aware of Complainant’s said trademark at the time of the registration of the disputed domain name and that the latter obviously alludes to Complainant’s trademark and financial services. Such use of the disputed domain name to seek “pay-per-clicks” from those diverted Internet users who are trying to reach Complainant, but due to the confusing similarity of the disputed domain name with Complainant’s trademark INTESA SANPAOLO end up with Respondent’s Internet presence at “www.” is neither “non commercial” because it was predominantly for the purpose of generating advertising revenues, nor it is “fair” because Internet users by confusion are brought to a general website with information about a variety of (financial) matters that are not specifically tailored to Complainant.
Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods or services because (1) Respondent obviously has neither been authorized to use Complainant’s INTESA SANPAOLO trademark as a domain name or on Respondent’s website or in any other way and (2) Respondent’s name apparently does not correspond to Complainant’s trademark INTESA SANPAOLO nor is any other reasonable explanation apparent why Respondent should rely on the designation “Intersa Sanpaolo” as it is contained in the disputed domain name.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on April 5, 2012.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s trademark INTESA SANPAOLO by means of a typical typo-squatting, to a standardized PPC website in order to generate “pay-per-click” commissions without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to his own website, by creating a likelihood of confusion with Complainant’s INTESA SANPAOLO trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Such circumstances, however, shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see also: Intesa Sanpaolo S.p.A. v. Moniker Privacy Services/Charlie Kalopungi,WIPO Case No. D2011-0758; Intesa Sanpaolo S.p.A. v. Caribbean Online International Ltd.,WIPO Case No. D2007-0816).
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a Privacy Service in order to conceal its true identity but that Respondent neither reacted upon Complainant’s pre-procedural attempts to contact Respondent on January 30, 2012 nor did he reply to Complainant’s contentions as they were included in the Complaint duly notified to Respondent on April 5, 2012. All of those circumstances may well be legitimate if viewed upon isolated, but taken all together throw a light on Respondent’s behavior which at least supports the finding of a registration and use of the latter in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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.
Stephanie G. Hartung
Sole Panelist
Dated: May 10, 2012
1 In accordance with Complainant’s amendment to the Complaint dated April 4, 2012, the term “Respondent“ as used by the Panel in the case at hand refers to the underlying registrant Ma Ying Jo of Shanghai, China whose complete contact details were disclosed and confirmed by the Registrar on April 3, 2012.
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