Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Charles Duke / Oneandone Private Registration, of Abidjan, Ivory Coast, and Chesterbrook, Pennsylvania, United States of America, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2013. On May 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29 and June 3, 2013, 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 Complainant on June 3, 2013 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 June 4, 2013.
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 June 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2013.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on July 9, 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 trademarks upon which the Complaint is based are INTESA, BANCA INTESA and INTESA SANPAOLO BANK.
According to the documentary evidence and contentions submitted, Complainant owns a number of trademark registrations for the INTESA, BANCA INTESA and INTESA SANPAOLO BANK trademarks, including International Trademark Registration No. 793367 for INTESA, granted on September 4, 2002; Community Trademark Registration No. 3105277 for INTESA, granted on February 13, 2009; International Trademark Registration No. 1032908 for BANCA INTESA, granted on December 18, 2009; Community Trademark Registration No. 6661491 for BANCA INTESA & device, granted on December 12, 2008; and Community Trademark Registration No. 6661672 for INTESA SANPAOLO BANK & device, granted on January 23, 2009. In addition, Complainant is the owner of a number of domain names containing the terms “intesabank”, “bankintesa” and “intesabanca”.
Complainant is a leading Italian banking group, resulting from the merger of Banca Intesa S.p.A. and Sanpaolo IMI, S.p.A., which took place in 2007. According to the documentary evidence and contentions submitted, Complainant is present in 29 countries, particularly in those countries where Italian companies are most active, such as United States of America, Russian Federation, People’s Republic of China and India.
The disputed domain name was registered on March 13, 2013. 5. Parties’ Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to Complainant’s trademarks because (i) it incorporates the trademark INTESA, with the addition of the word “bnk”, which is a clear abbreviation of the word “bank”, (ii) it is also similar to the trademarks BANCA INTESA and INTESA SANPAOLO BANK, with descriptive variations used by Complainant to identify its online banking services; and (iii) this is a clear case of typosquatting as found in previous UDRP decisions.
Complainant further contends that Respondent Charles Duke does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent Charles Duke has never been authorized or licensed to use the trademarks INTESA, BANCA INTESA or INTESA SANPAOLO BANK; (ii) Respondent is not commonly known by the name “intesa bank”, nor his name consists of the denomination “intesa bank”, and (iii) Respondent Charles Duke is not making a legitimate noncommercial or fair use of the disputed domain name.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) there are circumstances indicating that Respondent has registered or acquired the disputed domain name for the purpose of selling, renting or otherwise transferring it to Complainant for valuable consideration; (ii) there are several UDRP decisions confirming that passive holding of a domain name which infringes on a third party’s trademark is evidence of bad faith registration and use; (iii) the risk of a wrongful use of a domain name is higher in the present case in view of the practice of phishing, which consists of imitating the webpage of a bank to attract for fraud bank’s customers; and (iv) there can be no other possible legitimate use of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Status of Respondent
When the Complaint was filed, the disputed domain name was registered in the name of Oneandone Private Registration, which is a privacy protection service to enable “real” owners of domain names to conceal their identities. By the time the Center transmitted to Registrar a request for registrar verification in connection with the disputed domain name the identity of the actual registrant was disclosed. Both the protection service and the actual registrant have been served with copies of the Complaint and neither has responded. The Panel sees no reason to distinguish between the two. The practice of having more than one respondent to a proceeding under the Policy where one is a protection service and the other is the beneficial party which was later disclosed by the registrar is well-recognized in UDRP cases, as it helps to inform interested parties. See Microsoft Corporation v. Whois Privacy Protection Service/Lee Xongwei,WIPO Case No. D2005-0642. B. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has established each of the three elements required therein. C. Identical or Confusingly Similar
The disputed domain name reproduces Complainant’s INTESA and BANCA INTESA trademarks with the omission of the letter “a” in the work “bank”, which is the English word for “banca”. As a result, this is an example of confusing similarity brought about through typing errors easily made by an Internet user: rather than typing the word “intesabank” to visit Complainant’s website, an Internet user could easily type the word “intesabnk” and be diverted to a different website.
A “typosquatting” case typically involves a slight variation in spelling from a registered trademark. This case may be considered a “typosquatting” case because Complainant also owns the trademark INTESA SANPAOLO BANK. The Panel takes into account previous UDRP decisions relating to the practice of “typosquatting” where such practice has consistently been regarded as creating domain names confusingly similar to the relevant mark. See, e.g., MasterCard International Incorporated v. DL Webb,WIPO Case No. D2008-0324; Breitling SA and Breitling USA Inc. v. Whois Privacy Protection Service, Inc. / Breitling USA, Inc.,WIPO Case No. D2008-0302; ACCOR v. Brigit Klostermann,WIPO Case No.. D2005-0627; Sharman License Holdings, Limited v. IcedIt.com,WIPO Case No.. D2004-0713; Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994.
The confusing similarity is greater where the disputed domain name incorporates a word descriptive of the product or service identified by the registered trademark, which is the case of the disputed domain name . It is clear that the public may be led to think that the disputed domain name is somehow connected to the owner of the registered trademarks.
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the disputed domain name. See, e.g., RX America, LLC. v. Matthew Smith, supra.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademarks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
The disputed domain name is not the name of Respondent Charles Duke or the name by which Respondent Charles Duke is commonly known, and the disputed domain name is not Respondent’s trade name or trademark. Respondent has not been authorized or licensed by Complainant to use the trademarks INTESA, BANCA INTESA or INTESA SANPAOLO BANK pursuant to Complainant’s contention, which remains undisputed.
The practice of using a proxy service to achieve registration of domain names creates a potential for abuse by cybersquatters. The Panel concurs with the finding of a previous UDRP panel that “the use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide’”. The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156. Taking into account the circumstances of this case, the Panel draws such a negative inference from Respondent’s use of a proxy service.
On July 26, 2013, the Panel tried to visit the webpage to which the disputed domain name resolved, but that attempt was unsuccessful since the disputed domain name resorts to no active page. Therefore, it appears that the disputed domain name has been unexploited since its registration. The Panel finds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since passive holding may under appropriate circumstances evidence bad faith. The passive holding issue will be further elaborated below.
The consensus view in the UDRP decisions is that a complainant is required to make out a prima facie case. If such a case is made, the respondent carries the burden of producing evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (WIPO Overview 2.0, paragraph 2.1).
The Panel is convinced that Complainant has done enough to establish a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name, and by defaulting Respondent has failed to provide the Panel with any evidence of Respondent’s rights to or legitimate interests therein. In addition, none of the three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the disputed domain name (paragraph 4(c) of the Policy) shows a result in favor of Respondent.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. E. Registered and Used in Bad Faith
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of the trademarks INTESA, BANCA INTESA and INTESA SANPAOLO BANK when Respondent registered or otherwise acquired the disputed domain name. In fact, the Panel finds no reason why Respondent would choose the term “intesabnk” other than to create an association with Complainant’s trademarks for the purpose of obtaining a financial advantage, whether or not by selling or otherwise transferring the disputed domain name to Complainant. Therefore, Respondent showed opportunistic bad faith because the disputed domain name was connected with the activities identified by Complainant’s trademarks.
In addition, The Panel is of the opinion that, under appropriate circumstances, passive holding evidences bad faith use. The consensus view in the UDRP panel decisions has been that “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.” (WIPO Overview 2.0, paragraph 3.2). In the instant case the majority of the facts referred to above are present and, therefore, the Panel concludes that the disputed domain name is being used in bad faith.
The Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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.
Manoel J. Pereira dos Santos
Sole Panelist
Date: July 29, 2013
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