The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is On behalf of OWNER, c/o Ltd. of Auckland, New Zealand / DCW Group Investments, webmaster administration of Walnut, California, United States of America (“USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 2, 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 June 10, 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 June 12, 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, and the proceedings commenced on June 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2014.
The Center appointed Amarjit Singh as the sole panelist in this matter on July 24, 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 also one of the protagonists in the European financial arena. Intesa Sanpaolo is the company resulting from the merger (effective as of January 1, 2007) between Banca Itesa S.p.A and Sanpaolo IMI S.p.A., two of the top Italian banking groups.
Intesa Sanpaolo is among the top banking groups in the euro zone, with a market capitalization exceeding EUR 40,1 billion. It has network of approximately 4,700 branches capillary and well distributed throughout the country, with market shares of more than 14% in most Italian regions, the Group offers its services to approximately 11.1 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 and those areas where Italian companies are most active, such as the USA, Russia, China and India.
The Complainant is the owner, among many others, of the following registrations for the trademark INTESA SANPAOLO.
- 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, granted on June 18, 2007, in classes 35, 36 and 38;
- Italian trademark registration No. 1042140 INTESA SANPAOLO granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42.
The Complainant is also the owner, among the others, of the following domain names bearing the sign “Intesa Sanpaolo”: , , , , , and , , , , , . All of them are now connected to the official website “www.in”.
The disputed domain name has been registered by the Respondent on March 2, 2014 and according to Annexure F as submitted by the Complainant, the disputed domain name resolves to a parking page having sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks.
The Complainant further contends that the disputed domain name exactly reproduces the trademark INTESA SANPAOLO. The only difference is the deletion of letters “i” and “n” (in the first verbal portion “Intesa”).
The Complainant further contends that the Respondent’s domain name is confusingly similar with the Complainant’s marks above mentioned, as it evidently represents a minor variation of the cited trademarks, used by the Complainant to identify its online banking service.
The Complainant further contends that neither the Respondent nor anyone else within the context has rights on the disputed domain name, since the Respondent has nothing to do with Intesa Sanpaolo. Nobody has been authorized or licensed by the above-mentioned banking group to use the disputed domain name.
The Complainant further contends that the disputed domain name does not correspond to the name of the Respondent and, to the best of our knowledge, the Respondent is not commonly known as “Tesasanpaolo”.
The Complainant further contends that they do not find any fair or noncommercial use of the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant further submits that the fact that the Respondent has registered a domain name that is confusingly similar to it indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. Therefore, it is more than likely that the disputed domain name would not have been registered if it were not for Complainant’s trademarks. This is clear evidence of registration of the domain name in bad faith.
The Complainant further contends that the disputed domain name is not used for any bona fide offerings. More particularly, there are present circumstances indicating that, by using the 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.
The Complainant further submits that Internet users, while searching for information on the Complainant’s services, are confusingly led to the websites of the Complainant’s competitors, sponsored on the websites connected to the disputed domain name. Therefore, the Complainant deems that the Respondent has registered and is using the domain name at issue in order to intentionally divert traffic away from the Complainant’s website.
The Complainant through its attorneys sent a cease & desist letter to the Respondent asking the voluntary transfer of the disputed domain name to the Complainant. The Complainant has annexed the said notice as Annexure I to its Complaint. The Respondent never replied to the said cease & desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to be entitled to the transfer of the disputed domain name:
(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.
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 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 omission of the letters “in” at the beginning of the wording “Intesa Sanpaolo”.
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 confusingly 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 We Names – For Sale,WIPO Case No. D2001-0094; Telstra Corporation Ltd. v. Warren Bolton Consulting Pty Ltd.,WIPO Case No. D2000-1293).
“[…] a case of ‘typosquatting’ where the domain name is a slight alphabetical variation from a famous mark. WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user – particularly when the mark is another language from that of the user’s mother tongue.”
Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.
The Respondent did not dispute the contentions as have been revised by the Complainant in its Complaint and the contentions remain unrebutted.
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 second element requires the Complainant to prove that the Respondent has no right or legitimate interest in respect of the disputed domain name. The Respondent did not reply to the Complainant’s contentions.
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 name, such as:
(i) Use or preparation to use the disputed domain name or a name corresponding to the disputed domain name 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 name (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 name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence on record that the Respondent has any rights or legitimate interests in the disputed domain name.
The Complainant in its Complaint has contended that neither the Respondent nor anyone else apart from the Complainant has rights or legitimate interests in the disputed domain name. Furthermore, the Respondent has not been authorized or licensed by the Complainant to use the mark as part of the disputed domain name.
The Respondent does not appear to be commonly known as “Tesasanpaolo”.
The evidence, as has been filed by the Complainant, clearly shows that the disputed domain name is not being used for noncommercial use and the Respondent has been using the disputed domain name for commercial means by placing competitive advertisements amongst others on the disputed domain name. Clearly, Internet users are being diverted to the website where advertisements amongst others links exist which ultimately provide wrongful gain to the Respondent and wrongful loss to the Complainant. The earliest trade mark registrations held by the Complainant dates back to July 7, 2007. The Respondent has registered the disputed domain name on March 2, 2014, which is much subsequent to the adoption of the mark on the part of the Complainant.
The Respondent has not disputed any of the contentions raised by the Complainant and the contentions remain unrebutted.
The Panel on the basis of the evidence as placed before it concludes that the disputed domain name has been registered with the clear intention to profit from typosquatting and such use does not constitute bona fide offering of goods or services nor legitimate noncommercial fair use of the disputed domain name.
The Panel finds that the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrate that (1) the domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In terms of evidence as has been placed before this Panel, it is clear that the disputed domain name has not been registered to offer any bona fide offering of goods or services.
In the Panel’s opinion, had there been any intention to use the disputed domain name for a bona fide reason, the Respondent would have responded to:
- The cease & desist letter, sent by Complainant’s attorneys on April 28, 2014.
- To the Notification of Complaint and commencement of administrative proceeding sent by the Center on June 18, 2014.
In the Panel’s view, the above clearly indicates that the Respondent does not have any interest in respect of bona fide using the disputed domain name and is only interested in attracting Internet users by confusing them as to the source of the products and services as are being advertised on the disputed domain name’s website.
The Panel is in complete agreement with the UDRP decisions as has been cited by the Complainant in its Complaint with regard to the registration and use of the disputed domain name to attract Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. The cases cited:
Encyclopaedia Britannica Inc. v. S, WIPO Case No. D2000-0753 (“Respondent’s Ownership of a site which is a mis-spelling of Complainant’s B site and which Respondent used to hyperlink to a gambling site demonstrates Respondent’s bad faith registration and use of the domain name”), YAHOO! INC. v. David Murray, WIPO Case No. D2000-1013 (finding bad faith where respondent chooses a domain name similar to the complainant’s mark for a site which offers services similar to the complainant); E v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“[…] registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“[…] registration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s web site to the web site of […] a company which directly competes with the Complainant, constitutes bad faith registration and use”); Zwack Unicum Rt. v. Duna, WIPO Case No. D2000-0037 (respondent’s linking to complainant’s competitor held to constitute bad faith); Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd., Ningbo Eurosin International Trade Co,. Ltd., WIPO Case No. D2004-0554; Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500; Baudville, Inc. v. Henry Chan, WIPO Case No. D2004-0059; National City Corporation v. MH Networks LLC,WIPO Case No. D2004-0128.
The Respondent’s commercial gain is evident, since it is obvious that the Respondent’s sponsoring activity is being remunerated.
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.
Amarjit Singh
Sole Panelist
Date: August 7, 2014
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