The Complainant is Intesa Sanpaolo S.p.A. of Turin, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Ferdinando Santovito,of Castel Maggiore, Bologna, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2014. On January 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2014, 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 January 27, 2014 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 January 31, 2014.
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 with the amendment, and the proceedings commenced on February 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2014. On February 6, 2014, the Respondent sent an email communication to the Center stating that “he had never violated the domain name0”. The Respondent did not submit any further communications to the Center by the due date. Accordingly, the Center notified the Respondent’s default on February 24, 2014.
The Center appointed Alessandra Ferreri as the sole panelist in this matter on March 3, 2014. 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 leading Italian banking group and is among the top banking groups in the euro zone, with a market capitalization exceeding EUR 29.2 billion. The Complainant is the leader in Italy, in all business areas (retail, corporate and wealth management). Through a network of approximately 4,800 branches capillary and well distributed all over the country, with market shares of more than 15% in most Italian regions, the Complainant’s Group offers its services to approximately 11 million customers.
Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1,400 branches and over 8.4 million customers. Moreover, the international network specialized in supporting corporate customers is present in 29 countries, in particular in the Mediterranean area, in the United States of America, Russian Federation, China and India.
The Complainant is the owner of numerous registrations for trademarks consisting of the wording “Intesa Sanpaolo”, and in particular:
- International trademark registration no. 920896 INTESA SANPAOLO, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42, also covering the United States of America;
- Community trademark registration no. 5301999 INTESA SANPAOLO, applied on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;
- Italian trademark registration no. 1042140 INTESA SANPAOLO, applied on February 2, 2007 and granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42.
Moreover, the Complainant owns, among others, the following domain names incorporating the INTESA SANPAOLO trademark: , , , , , and , , , , , . All of these domain names are connected to the official website “www.”.
The disputed domain name was created on November 25, 2013 and according to the evidence submitted by the Complainant it resolves to a parking page displaying sponsored links related to banking and financial services. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s INTESA SANPAOLO trademark because it exactly reproduces that sign; the only difference is the addition of the letter “o” in the disputed domain name that is not sufficient to distinguish the disputed domain name from the Complainant’s INTESA SANPAOLO trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and has nothing to do with the Complainant. The Complainant has never authorized or licensed the Respondent or any other person to register or use the disputed domain name.
Moreover, the disputed domain name does not correspond to the name of the Respondent, who is not commonly known as “intesasanpaoloo”.
Finally, the disputed domain name is not use in connection with a bone fide offering of goods or services.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Respondent’s bad faith registration is established by the fact that the Respondent was aware of the existence of the Complainant’s trademark at the time of the registration, given the distinctiveness and the renown of the Complainant’s trademark INTESA SANPAOLO all over the word, and the reproduction in the disputed domain name of the INTESA SANPAOLO trademark in its entirety, with the mere addition of the letter “o”.
Moreover the disputed domain name is not used for any bone fide offerings. Indeed by using the disputed domain name 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 trademarks as to the source, sponsorship, affiliation, or endorsement of the website (paragraph 4(b)(iv) of the Policy): in fact, the disputed domain name is connected to a website sponsoring, among others, banking and financial services, for whom the Complainant’s trademarks are registered and used. Consequently the Respondent has registered and is using the disputed domain name in order to intentionally divert traffic away from the Complainant’s website.
Moreover the Respondent’s commercial gain is evident: the disputed domain name redirects Internet users to a webpage displaying pay-per-clicks links which are likely to generate revenues for the Respondent.
The Complainant contends that the Respondent’s bad faith use of the disputed domain name is also evidenced by the fact that, few weeks before the filing of the Complaint, the disputed domain name was connected to a website sponsoring the banking and financial services of the Complainant, even if such website had no relationship with the Complainant or any of its affiliates: it is clear that the main purpose of the Respondent was to use the above website for “phishing” financial information in an attempt to defraud the Complainant’s customers. Such circumstance has been also confirmed by the Google Safe Browsing Report, which has put down the disputed domain name because of its phishing activity.
As it was stated in many previous WIPO UDRP decisions “Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing’ website is perhaps the clearest evidence of registration and use of a domain name in bad faith”. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s INTESA SANPAOLO trademark, a well-known mark in which the Complainant has established rights through registration and extensive use all over the world, at least, in connection with the sector of banking services.
The disputed domain name incorporates the Complainant’s INTESA SANPAOLO trademark in its entirety; the only difference is the addition of the letter “o” at the end of the wording “Intesa Sanpaolo”.
Such minor difference cannot be considered factor of differentiation (see Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441) and is not enough to prevent a confusing similarity between the domain name and the incorporated trademark (see Crédit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. Laporte Holdings, Inc.,WIPO Case No. D2004-1110).
Furthermore, the disputed domain name is a mere misspelling or a predictable mistyping of the Complainant’s mark and, according with the Complainant’s view, the Panel finds that the Respondent has intentionally registered it in order to take advantage from the typographical errors made by Internet users seeking the Complainant’s website and to divert them to the Respondent’s website, and thus confusing similarity should be presumed (see Wachovia Corporation v. American Consumers First,WIPO Case No. D2004-0150; Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035; Playboy Enterprises International Inc. v. SAND WebNames – For Sale,WIPO Case No. D2001-0094; Telstra Corp. Ltd. v. Warren Bolton Consulting Pty Ltd.,WIPO Case No. D2000-1293).
Finally, with regards to the suffix “.com” (which indicates that the disputed domain name is registered in the “.com” generic Top-Level Domain (gTLD)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society,WIPO Case No. D2000-0135,Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@,WIPO Case No. D2000-1400, Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industrile et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the gTLD suffix is a necessary component of the domain name and does not give any distinctiveness.
There is no doubt that the disputed domain name is confusingly similar to the Complainant’s trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
The Respondent did not formally reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain names, such as:
(i) use or preparation to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the disputed domain names (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any right or legitimate interest in the disputed domain name.
The Complainant states that there is and has never been a relationship between the Complainant and the Respondent. The Respondent is not affiliated or related to the Complainant, nor is a licensee of the Complainant and no authorization has been granted to the Respondent to use the INTESA SANPAOLO trademark.
The Respondent is not generally known by the disputed domain name, and it has not acquired any trademark or service mark rights in the name or mark.
Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name, the Respondent clearly intended to profit from the use of the disputed domain name which is confusingly similar to the Complainant’s trademark, diverting Internet users, solely for commercial gain.
Indeed, the Complainant provided evidences in the annexes F and I to the Complaint that by typing the disputed domain name
- currently, Internet users are diverted to website where pay-per-click links exist and generate gain for the Respondent, while
- before the filing of the Complaint, the Internet traffic was redirected to a web page sponsoring the banking and financial services of the Complainant, while there was no relationship with the Complainant or any of its affiliates. Said circumstance proves that the Respondent’s main purpose was to use its website for “phishing” financial information in an attempt to defraud the Complainant’s customers.
The infringing website, to which the disputed domain name resolved before the filing of the Complaint, was an example of a phishing website and cannot constitute a bona fide use of the disputed domain name pursuant to paragraph 4(c)(i) of the Policy (see Australia and New Zealand Banking Group Limited v. Bashar Ltd,WIPO Case No. D2007-0031 and MasterCard International Incorporated v. Capital Conservator Group LLC,WIPO Case No. D2009-1051).
Since the Respondent has registered and is using the disputed domain name with the clear intention to use the Complainant’s mark and name for its own profit it can be stated that such use does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
Therefore, based on the evidence, the Panel is satisfied that the second element is met. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s trademark and activity are well established and well known throughout the world, in connection with the sector of banking services.
Accordingly in the Panel’s belief, the Respondent must have known about the Complainant’s existence and rights at the time of the registration of the disputed domain name .
Indeed, the Respondent’s awareness of the Complainant’s activity and rights is proven by the fact that the Respondent registered a domain name consisting in a misspelled version of the Complainant’s trademark.
As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name, in line with other prior UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano,WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395) the Panel believes that, given the circumstance of this case and in the absence of any rights or legitimate interests and lacking any contrary evidence by the Respondent, the Respondent’s registration of the disputed domain name confusingly similar to the Complainant’s worldwide well-known trademark suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates,WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc.,WIPO Case No. D2007-1411).
Concerning the use of the disputed domain name, the Complainant has proven that it currently resolves to a parking web-page offering several commercial links to different websites where information concerning banking, insurance and financial services and products provided by the Complainant’s competitors was offered.
In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s services and to obtain information about the Complainant’s activity, to another variety of advertising banking, insurance and financial products and services, by creating a likelihood of confusion with the Complainant’s trademark and business. By exploiting the renown of the Complainant’s trademark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the disputed domain name by providing sponsored links to several other websites and obtaining revenues from the diverted traffic (besides the decisions mentioned by the Complainant, see also MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios,WIPO Case No. D2008-0325).
Moreover, as mentioned above and as proved by the Complainant, before the filing of this Complaint, the disputed domain name resolved to a web page sponsoring the banking and financial services of the Complainant, while there was no relationship with the Complainant or any of its affiliates.
In this Panel’s opinion this circumstance suggests that the Respondent used the disputed domain name to attract Internet users to a phishing website and deceive them into divulging private information. The Respondent very likely gained from the illegitimate use of users’ sensitive information. As state in several previous UDRP decisions, these actions constitute bad faith registration and use pursuant to the Policy (See Halifax Plc. v. Sontaja Sanduci,WIPO Case No. D2004-0237 and MasterCard International Incorporated v. Capital Conservator Group LLC,WIPO Case No. D2009-1051).
Furthermore, in the Panel’s view the use of a privacy/proxy service to avoid disclosing the name and contact details of the real party owner of the disputed domain name, is also consistent with an inference of bad faith in registering and using the disputed domain name, given the evidence in this case of evasive and irresponsible conduct and of the Respondent’s blatant exploitation of the Complainant’s mark and name for commercial gain (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696 cited by Complainant, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov,WIPO Case No. D2004- 0311).
In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name was registered and is being used 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.
Alessandra Ferreri
Sole Panelist
Date: March 17, 2014
Full & Egal Universal Law Academy