The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Name Redacted of Salina, Kansas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2013. On May 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2013, the Registrar 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 May 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2013. On May 29 and May 30, 2013, the Center received informal communications from the Respondent stating he is not the owner of the Domain Name. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on June 14, 2013.
The Center appointed Alan L. Limbury as the sole panelist in this matter on June 20, 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.
As requested by the Complainant, the language of this proceeding is English, being the language of the Registration Agreement. 4. Factual Background
The Complainant, based in Italy, is a prominent banking group in Europe, with many millions of customers. In Ireland, it has operations through an affiliate, Intesa Sanpaolo Bank Ireland Plc.
The Complainant has registered inter alia the trademarks INTESA SANPAOLO and INTESA SANPAOLO BANK IRELAND as Community Trademark registration Nos. 5301999 and 5896188, granted on June 18, 2007 and March 3, 2008, respectively.
The Domain Name was registered on March 14, 2013 by an unknown person in the name of the Respondent. Prior to the filing of the Complaint, the Domain Name resolved to a website apparently sponsoring the banking and financial services of Intesa Sanpaolo Bank Ireland Plc and offering to users the possibility of opening an online account and engaging in Internet banking. 5. Parties’ Contentions A. Complainant
The Complainant says the Domain Name is confusingly similar to its trademarks and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, no-one on behalf of the Complainant has authorized use of the Complainant’s trademarks in the Domain Name, the Respondent is not commonly known as “Intesapaolo”, and there appears to be no fair or noncommercial use of the Domain Name.
As to bad faith, the Complainant’s trademarks are distinctive and very well known around the world, so the Respondent must have had knowledge of them when registering the Domain Name. It is highly probable that the Complainant’s clients will erroneously believe that the Respondent’s website is one of the official websites of the Complainant and they may accidentally provide the Respondent with their personal bank information. It is clear the main purpose of the Respondent is to use that website for “phishing” financial information in an attempt to defraud the Complainant’s customers. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions. However, in emails to the Center, dated May 29 and May 30, 2013, the Respondent denied any connection with the Domain Name, saying the name and address appearing on the Center’s the letter of Notification of the Complaint and Written Notice are his but that the email address listed is not, and expressing concern that his name and address could be attached to something that he has nothing to do with. 6. Discussion and Findings Preliminary Matter – Redaction of the Respondent’s Name
As in Moncler S.r.l. v. Name Redacted,WIPO Case No. D2010-1677, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted,WIPO Case No. D2012-0890 and Saudi Arabian Oil Company v. Name Redacted,WIPO Case No. D2013-0105, this is a case in which the Panel finds that the Domain Name was registered by a third-party without the involvement of the person identified in the Whois as the registrant of the Domain Name, against whom the Complaint was filed. The Panel has accordingly redacted the name of that person from the caption and body of this Decision. The Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorises the Center to transmit the Annex to the Registrar and the parties but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.
Henceforth, references in this Decision to the Respondent are to the unknown person who registered the Domain Name in the name of the Respondent. Consideration of the Merits
Under the Policy, paragraph 4(a), the Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080 and ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848. A. Identical or Confusingly Similar
The Complainant has produced registration certificates demonstrating that it clearly has rights, inter alia, in the INTESA SANPAOLO and INTESA SANPAOLO BANK IRELAND marks. The Domain Name is not identical to either of those marks since it omits the additional words “san” and “bank Ireland”. The Generic Top-level domain “.net” is typically disregarded; See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone; See Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812. The content of a respondent’s website is generally disregarded (See A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900) unless that content might indicate an intention on the part of the respondent to confuse Internet users, in which case the conclusion that the domain name is confusingly similar to the trademark may more readily be drawn. (See RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089.)
Here the omission from the Complainant’s trademark INTESA SANPAOLO of the word “san“ does nothing in the Panel’s opinion to detract from the distinctiveness of the Complainant’s mark. This alone justifies a finding of confusing similarity. Further, in this case the content of the Respondent’s website appears designed to reinforce the Internet user’s impression that the Domain Name belongs to the Complainant.
The Panel finds the Domain Name to be confusingly similar to the Complainant’s INTESA SANPAOLO mark. Since the words “Intesa Sanpaolo form the dominant feature of the Complainant’s INTESA SANPAOLO BANK IRELAND mark, the Panel finds the Domain Name also to be confusingly similar to that mark. The Complainant has established this element. B. Rights or Legitimate Interests
The Panel accepts that the Complainant’s marks are distinctive and well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of the absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that he does have rights or legitimate interests in that name; See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
As mentioned, the content of the website to which the Domain Name resolved at the time of this Complaint appeared designed to reinforce the Internet user’s impression that the Domain Name belongs to the Complainant. The website is presented as if it were an official website of the Complainant or its affiliate in Ireland. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 ( “Use which intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods or services).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has established this element. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submission that, by using the Domain Name as described above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of that website and of the products offered on that website. Under paragraph 4(b) of the Policy this shall be evidence of both the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that the Complainant has established this element. 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 Domain Name be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Date: June 28, 2013
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