The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Croitoru Daniel of Brasov, Romania. 2. The Domain Names and Registra
The disputed domain names and are registered with NetEarth One Inc. d/b/a NetEarth. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2012. On May 30, 2012, the Center transmitted by email to NetEarth One Inc. d/b/a NetEarth a request for registrar verification in connection with the disputed domain names. On May 30, 2012, NetEarth One Inc. d/b/a NetEarth transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2012.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on August 6, 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
The Complainant is an Italian banking group, which resulted from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banks. The merger is effective as of January 2007. The Complainant is one of the leading banking corporations in Europe, being present not only in Italy but in 29 different countries.
The Complainant owns, among others, registrations for trademarks SANPAOLO, LINKS SANPAOLO, INTESA SANPAOLO IMI, SANPAOLO IMI, in Italy and in the European Union (community trademark). Further to the merger mentioned above, the Complainant uses as its main mark LINKS INTESA SANPAOLO.
Besides these marks, the Complainant owns and uses several domain names, such as , and .
Proof of these registrations was duly presented. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names and reproduce its trademark SANPAOLO IMI, with the addition of the words “links” and “imprese” (Italian for “companies”). The disputed domain names, in addition, are virtually identical to some of the domain names owned by the Complainant, such as and ,.
The Complainant claims not to have any relationship with the Respondent, nor has given the Respondent permission to use its mark or to register a domain name incorporating this mark.
The Complainant also states that the disputed domain names do not correspond to the Respondent’s name or at least to part of it, and that the Respondent is not commonly known by the disputed domain names.
Lastly, the Complainant alleges that the Respondent has no right to, and is not making a legitimate use of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy, in paragraph 4(a), states that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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
Regarding the first of the elements, the Panel finds that the Complainant presented competent proof demonstrating its rights in the marks SANPAOLO, LINKS SANPAOLO, INTESA SANPAOLO IMI and SANPAOLO IMI, which are duly registered in the countries where the Complainant does business and consequently used regularly in those countries.
Further, the Panel finds that the disputed domain names and are indeed imitations of the Complainant’s marks (with only the inclusion of the generic word “imprese”) and could certainly be considered confusingly similar.
Hence, the Panel finds that the Complainant has established the first element in this dispute. B. Rights or Legitimate Interests
The Panel finds that the marks SANPAOLO, LINKS SANPAOLO, INTESA SANPAOLO IMI and SANPAOLO IMI are undoubtedly linked to the Complainant, since they are not only registered in its name in the European Community, but also are used to identify the Complainant’s business, being part of the Complainant’s domain names.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. Further, the Respondent has not rebutted the Complainant’s contentions.
The Complainant, in the Panel’s view, has provided enough evidence of the renown of its marks. Hence, the Panel considers it unlikely that the Respondent would be unaware of the marks and their direct relation to the Complainant. In addition, the Panel has not found any indication that the Respondent is commonly known by the disputed domain names or is using the disputed domain names for any fair or noncommercial use.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and the Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered the disputed domain names with the purpose of taking advantage of the renown of the Complainant’s marks.
The inactivity of the disputed domain names cannot be considered as a relieving factor in the present case. On the contrary, this fact can be seen as evidence of bad faith of the Respondent in obtaining and using the disputed domain names, considering that the Complainant and its marks are widely known and the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Furthermore, by registering the disputed domain names containing the Complainant’s trademarks, the Respondent harms the Complainant’s activity, as it diverts potential clients to an inactive website.
The Panel finds that the circumstances, as described above, shows that the Respondent registered and has been using the disputed domain names in bad faith. The Panel, hence, finds the Complainant has established the third element 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 names and be transferred to the Complainant.
Alvaro Loureiro Oliveira
Sole Panelist
Dated: August 20, 2012
Full & Egal Universal Law Academy