The Complainant is Intesa Sanpaolo S.p.A. of Turin, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Host Master, Transure Enterprise Ltd of Tortola, British Virgin Islands of Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2012. On April 27, 2012, the Center transmitted by email to A, Inc. a request for registrar verification in connection with the disputed domain name. On April 30, 2012, A, Inc. 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 email communication of the registrar A, Inc. on April 30, 2012, also confirmed that the language of the registration agreement as used by the registrant of the disputed domain name was the English language.
The Center sent an email communication to the Complainant on April 30, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 3, 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 the Respondent of the Complaint, and the proceedings commenced on May 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2012.
The Center appointed Olivier E. Itéanu as the sole panelist in this matter on June 12, 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
According to the Complaint, the Complainant is the company resulting from a 2007 merger of two major Italian banking groups: “Banca Intesa S.p.A.” and “Sanpaolo IMI S.p.A.”, and it is still widely known by the name of “Banca Intesa” by consumers.
The Complainant owns several semi-figurative international and European trademarks BANCA INTESA, covering numerous products and services and in particular banking and financial services, and numerous domain name registrations incorporating “bancaintesa”
Prior to the date the Complaint was filed, the Complainant’s counsel sent an email on January 24, 2012 to the Respondent using the privacy service proxy email address indicated on the WhoIs to contact the registrant of the domain name, informing it of the Complainant’s existing trademarks and rights and requesting disclosure of the identity of the registrant. The Complainant received no response to this email from the Respondent.
According to the information provided by the concerned Registrar A, Inc., the Respondent registered the disputed domain name on October 26, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademarks, since they are identical save for the omission of the initial letter “b” and that such difference reveals that the Respondent is engaged in a typosquatting type of activity.
The Complainant contents that the Respondent is not known to the Complainant as a licensee of its trademarks or otherwise as a legal entity authorized to register the disputed domain name , that the Respondent is not commonly known by the name of “Ancaintesa”, and that the current use of the disputed domain name is not a fair or noncommercial use.
Finally, the Complainant contents that such similarity with the trademark necessarily implies that the Respondent had knowledge of the trademark at the time of registration of the disputed domain name, and that it is being used to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website. B. Respondent
The Respondent did not submit any response to the Complaint, and thus did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the proceedings
The Complaint was filed in English language.
The Complainant requested in its Complaint that the language of the proceedings be the English language since English is “an international language” which can be understood by both parties, especially given that the Respondent appears to have declared its address in the British Virgin Islands of the United Kingdom, where the official language is English.
Though the latter of these elements could be relevant for the purpose of determination of the language of the proceeding, the Panel does not need to determine itself in relation to these facts and contentions, since in its email communication of April 30, 2012, the registrar A, Inc. confirmed that the English language was the language of the Registration Agreement as used by the registrant of the disputed domain name, and since the paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the registration agreement.
In view of this, the Panel finds that English is the language of the proceedings, and the Complaint was duly filed in such language. 6.2 Identity of the Respondent
The Complaint was filed by the Complainant in compliance with the Policy and the Rules, stating the information known to the Complainant concerning the Respondent as shown by the publicly-available WhoIs database, where the Respondent appeared using a privacy service, identified as “A Domain Privacy”.
In its email communication of April 30, 2012, the registrar A, Inc. disclosed the identity of the Respondent which was concealed by the use of the privacy service, and identified it as being “Host Master, Transure Enterprise Ltd”. An amendment to the Complaint was filed by the Complainant on May 3, 2012, whereby the designated Respondent is now “Host Master, Transure Enterprise Ltd”. The Complaint is thus directed against “Host Master, Transure Enterprise Ltd.”
In this circumstance, the Panel accordingly finds that the proper Respondent in this case is “Host Master, Transure Enterprise Ltd.” 6.3 Requirements of Paragraph 4(a) of the Policy
According to paragraph 4(a) of the Policy, the Complainant must prove the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(ii) that the 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. A. Identical or Confusingly Similar
The Complainant contends that Intesa Sanpaolo is the company resulting from the merger of two major Italian banking groups: “Banca Intesa S.p.A.” and “Sanpaolo IMI S.p.A.”, which occurred in 2007. It also argues that the Complainant is still widely known by the name of “Banca Intesa” by consumers. Also, the Complainant argues that it owns numerous domain name registrations “bancaintesa” in Top-Level Domains (TLDs) such as “.com”, “.org”, “.eu”, etc. The Complainant nevertheless does not provide documentary evidence of these contentions.
In turn, the Complainant provides documentary evidence that it is the owner of several semi-figurative international and European trademarks which contain the stylized words BANCA INTESA, or containing a logo and where the words “Banca Intesa” appear distinctively and prominently.
Such trademarks correspond to applications which were made, and registrations which were obtained, prior and long before the Respondent’s registration of the disputed domain name in 2011.
The Panel agrees, in principle, as argued by the Complainant, that the disputed domain name is confusingly similar to the trademarks BANCA INTESA in which the Complainant has rights, since they differ only by the initial letter “b” which is missing in the disputed domain name . Also, the Panel considers that the fact that there seems to be no particular meaning in the terms “anca”, or “intesa”, or in the combination of the two “ancaintesa” is an aggravating factor, since a likely meaning that the public could derive from the disputed domain name is that it is a typographical error of the BANCA INTESA trademarks in which the Complainant has rights (see for instance Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,WIPO Case No. D2004-0896, where, in particular, the domain name was considered to be confusingly similar to complainant’s trademarks).
In view of this, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, as contemplated by the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Complainant’s contentions that the Respondent is not known to the Complainant as a licensee of its trademarks or otherwise as a legal entity authorized by the Complainant to register the disputed domain name , and that the Respondent is not commonly known by the name of “Ancaintesa”, have not been contradicted by the Respondent.
More significant is the argument that, according to the Complainant, the Respondent is intending, for commercial gain, to misleadingly divert consumers from the official website of the Complainant through registration of a typosquatting type of domain name.
Regarding any possible use of the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services, it appears from the evidence provided by the Complainant, that the disputed domain name is activated for directing the Internet users to a pay-per-click (“PPC”) landing page.
Numerous panels applying the Policy and the Rules have repeatedly established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to services which are competitive with the trademark owner, do not establish rights or legitimate interests (see for instance VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925; O, Inc. v. Metro Media,WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368; Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881; and Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404).
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name, which has not been rebutted by the Respondent.
In view of this, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, as contemplated by the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant contents that the confusing similarity between the disputed domain name and the trademark necessarily implies that the Respondent had knowledge of the trademark at the time of registration of the disputed domain name, and that this constitutes bad faith at the time of registration.
Also, to this Panel, the fact that there seems to be no particular meaning in the terms “anca”, or “intesa”, or in the combination of the two “ancaintesa” suggests that the only reason for registration of the disputed domain name is the likelihood that Internet users may make a typographical error by trying to access the domain name corresponding to the trademarks BANCA INTESA by omitting the initial “b” letter by accident.
With regards to use of the disputed domain name, while the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue has previously been found to be bad faith use (see for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, and also Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258 for a domain name with a missing letter compared to the trademark WIDGETBUCKS in that case).
Further, the Panel notes that the Respondent has used a privacy service in order to conceal its identity. It appears that the disputed domain name holder seems to be a legal entity engaged in a commercial activity, as opposed to an individual acting for its private purposes, who may legitimately have privacy concerns. While the use of a privacy service is not in itself illegitimate, given the circumstances of this case, the deliberate typographical error in the disputed domain name, and the fact that it is used for a PPC website, the Panel concurs with other UDRP panels having known of similar cases that “it is difficult to see why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting.” (Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598).
For the above mentioned reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith, as contemplated by the Policy, paragraph 4(a)(iii). 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.
Olivier E. Itéanu
Sole Panelist
Dated: June 26, 2012
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