The Complainant is Intesa Sanpaolo S.p.A of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Belcanto Investment Group Limited of Charlestown, Nevis, Saint Kitts And Nevis / A Domain Privacy of Beaumaris, Victoria, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with A, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2012. On December 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 2012, the Registrar 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 the Complainant on December 6, 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 December 11, 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 December 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2013
The Center appointed Kevin C. Trock as the sole panelist in this matter on January 25, 2013. 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 the owner of the following registrations for the marks INTESA SANPAOLO and INTESA SANPAOLO PRIVATE BANKING (Annex E of the Complaint):
- International trademark registration no. 920896 INTESA SANPAOLO, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;
- Community trademark registration no. 5301999 INTESA SANPAOLO, applied on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;
- Community trademark registration no. 6067789 INTESA SANPAOLO PRIVATE BANKING, applied on July 4, 2007 and granted on May 20, 2008, in classes 9, 16, 35, 36, 38, 41 and 42;
- Community trademark registration no. 6069603 INTESA SANPAOLO PRIVATE BANKING & colored device, applied on July 4, 2007 and granted on May 20, 2008, in classes 9, 16, 35, 36, 38, 41 and 42;
- Community trademark registration no. 6067862 INTESA SANPAOLO PRIVATE BANKING & device, applied on July 4, 2007 and granted on June 6, 2008, in classes 9, 16, 35, 36, 38, 41 and 42.
The Complainant is also the owner of the following domain names incorporating the marks INTESA SANPAOLO and INTESA SANPAOLO PRIVATE BANKING:
- , “.org”, “.eu”, “.info”, “.net”, “.biz”;
- , “.org”, “.eu”, “.info”, “.net”, “.biz”, “.it”; and
- , “.org”, “.com” and “.it”.
On May 30, 2012, the Respondent registered the disputed domain name . 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant further contends that the disputed domain name is virtually identical and confusingly similar to the Complainant’s registered trademarks; that the Respondent does not provide a bona fide offering of goods or services in connection with the disputed domain name; that the Respondent has no connection or affiliation with the Complainant; that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain; that the Respondent registered the disputed domain name in bad faith, has engaged in typosquatting and is diverting Internet users to the Complainant’s competitors; and that the Respondent had prior knowledge of the Complainant’s trademarks and domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is the owner of a community trademark registration for the mark INTESA SANPAOLO PRIVATE BANKING which was registered on May 20, 2008. The Complainant is also the owner of the domain name . The Respondent registered the disputed domain name on May 30, 2012. The disputed domain name contains substantially the entirety of the Complainant’s registered trademark and domain name except for omitting the second letter “n” in the word “banking” resulting in the misspelling “bankig”.
This minor difference in spelling is insignificant and does not preclude a finding of confusing similarity with the Complainant’s registered trademark and domain name. See Columbia Pictures Industries, Inc. v. Caribbean Online Int’l Ltd.,WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of [c]omplainant”). Altering a mark by only one letter in this manner is not enough to escape a finding of similarity. See Microsoft Corp. v. Domain Registration Philippines, NAF Claim No. 877979 “Such a small alteration is insufficient to avoid a finding of confusing similarity under Policy paragraph 4(a)(i).”).
The Panel concludes that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s registered trademark and domain names. B. Rights or Legitimate Interests
The Complainant contends that the Respondent is not commonly known by the disputed domain name and, therefore, cannot claim a right to or legitimate interest under paragraph 4(c)(ii) of the Policy. The Respondent has not contested this assertion.
The Respondent has no connection or affiliation with the Complainant, as the Complainant has not licensed, authorized or otherwise permitted the Respondent to use the Complainant’s mark in a domain name or in any other manner.
The Respondent has used the disputed domain name for a website that provides links to third-party websites that are in direct competition with the Complainant.
The Panel finds the Respondent is capitalizing on the Complainant’s goodwill in its trademarks by misdirecting Internet users seeking the Complainant’s website to its competitors’ websites. Use of a domain name as a portal to a competitor’s website does not constitute a bona fide offering of goods or services. See Humana, Inc. v. Henry Tsung,WIPO Case No. D2005-0221 (finding that the use of a website as a portal linking to competitors’ websites is not a bona fide offering of goods or services); Humana, Inc. v. Domain Deluxe,WIPO Case No. D2005-0231. The Respondent stands to commercially benefit from this misdirection.
Accordingly, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Respondent is intentionally attempting to attract users to its website by creating a likelihood of confusion with the Complainant’s registered trademark and domain names. The Respondent’s disputed domain name misdirects Internet users who misspell and/or mistype the Complainant’s trademark or domain name to the Respondent’s website, which provides links to the Complainant’s competitors. The Respondent has engaged in typosquatting which creates a confusingly similar domain name to the Complainant’s registered trademark and domain names. (See, La Touraine, Inc. v. A Domain Privacy / Transure Enterprise Ltd, Host Master,WIPO Case No. D2010-1118 (“Typosquatting occurs when a respondent purposefully includes typographical errors in the mark portion of a disputed domain name to divert Internet users who make those typographical errors.”); see, also, Wachovia Corp v. Peter Carrington,WIPO Case No. D2002-0775 (“This conduct, commonly referred to as ‘typo squatting,’ creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark under paragraph 4(a)(i) of the Policy.”).
By providing links to third-party competitor websites, the Respondent has registered and is using the disputed domain name in bad faith by attempting to attract users for commercial gain to its website by creating a likelihood of confusion with the Complainant’s registered trademark and domain names. See Eastman Chemical Company v. Manila Industries, Inc., NAF Claim No. 0450806; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Claim No. 0444468. See also, AltaVista Co. v. Saeid Yomtobian,WIPO Case No. D2000-0937 (“The use of misspellings alone is sufficient to prove bad faith under paragraph 4(b)(iv) of Policy because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by making a likelihood of confusion with the Complainant’s mark.”).
The Panel concludes that the Respondent has registered and is using the disputed domain name 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.
Kevin C. Trock
Sole Panelist
Date: February 4, 2013
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