The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Rika Doi, Apple of Urawa-ku, Saitama, Japan / Whois Privacy Protection Service by of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 October 28, 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 October 30, 2014.
On October 28, 2014, the Center transmitted an email to the parties in English and Japanese regarding the language of the proceeding. On October 30, 2014, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not submit its comments on the language of the proceeding within the specified due date.
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 in Japanese and English, and the proceedings commenced on November 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2014. The Center received an email from the Respondent in Japanese on November 5, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent of the proceeding to the panel appointment on November 24, 2014.
The Center appointed Ho-Hyun Nahm, Esq. as the sole panelist in this matter on December 11, 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 one of the leading Italian banking groups. The Complainant is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.a. and Sanpaolo IMI S.p.A., two of the Italian banking groups. The Complainant is the owner, among many others, of the following trademark registrations for INTESA SANPAOLO and INTESA SANPAOLO EURODESK.
Trademark: INTESA SANPAOLO EURODESK
Community Trademark Registration number: 6701239
Filing date: February 27, 2008
Registration date: January 20, 2009
Classes: 9, 16, 35, 36, 38, 41 and 42
Trademark: INTESA SANPAOLO
International Trademark Registration number: 920896
Registration date: March 7, 2007
Classes: 9, 16, 35, 36, 38, 41 and 42 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is confusingly similar to the Complainant’s registered trademarks INTESA SANPAOLO EURODESK and INTESA SANPAOLO in which the Complainant has rights.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
(a) Neither the Respondent nor anyone else within the context has rights on the disputed domain name, since “Apple”has nothing to do with Intesa Sanpaolo.
(b) Nobody has been authorized or licensed by the Complainant to use the disputed domain name.
(c) The disputed domain name does not correspond to the name of the Respondent and “Apple” is not commonly known as INTESASANPAOLO EURODESK
(d) The Complainant does not find any fair or noncommercial uses of the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith by the Respondent:
(a) The Complainant’s trademarks INTESA SANPAOLO EURODESK and INTESA SANPAOLO are distinctive and well known around the world. The Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name.
(b) The disputed domain name is not used for any bona fide offerings.
(c) Internet users are confusingly led to the commercial advertisement page of the Respondent. The Respondent has registered and is using the disputed domain name in order to intentionally divert traffic away from the Complainant’s website.
(d) It is no coincidence that the disputed domain name has involved a big financial institution such as Intesa Sanpaolo.
(e) The Respondent never replied to the Complainant’s cease-and-desist letter and the disputed domain name has not been disconnected from its current website. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. The disputed domain name was registered on May 24, 2014. 6. Discussion and Findings Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. The Complainant requested that these proceedings be conducted in English. The Respondent did not submit any objection to the Complainant’s request within the specified due date. Pursuant to paragraph 11(a) of the Rules, the Panel determines that the language requirement has been satisfied through the Japanese language Commencement Notification, and, absent any formal Response from the Respondent, determines that the remainder of the proceedings shall be conducted in English.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
In view of the Respondent’s failure to submit a formal response, the Panel decides this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draws such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009 (in the absence of a response, it is appropriate to accept as true all allegations of the Complaint). A. Identical or Confusingly Similar
The Complainant is one of the leading Italian banking groups. The Complainant is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.a. and Sanpaolo IMI S.p.A., two of the Italian banking groups. The Complainant contends that its trademarks INTESA SANPAOLO and INTESA SANPAOLO EURODESK are well known around the world. It also owns numerous registered trademarks consisting of or incorporating the word “Intesa Sanpaolo” in many countries including Japan.
The Complainant has provided sufficient evidence showing that it is the owner of the INTESA SANPAOLO EURODESK mark the registration of which predates the Respondent’s registration of the disputed domain name. The Complainant, inter alia, owns the following trademark registration:
Trademark: INTESA SANPAOLO EURODESK
Community Trademark Registration number: 6701239
Filing date: February 27, 2008
Registration date: January 20, 2009
Classes: 9, 16, 35, 36, 38, 41 and 42
Accordingly, the Panel finds that the Complainant’s Community Trademark Registration of the INTESA SANPAOLO EURODESK mark sufficiently establishes its rights in the mark pursuant to Policy, paragraph 4(a)(i). The Panel holds that the disputed domain name is confusingly similar to the Complainant’s mark INTESA SANPAOLO EURODESK especially in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.”
The Panel also finds that the “.net” is a descriptive suffix commonly used as a generic Top-Level Domain (gTLD), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the gTLD suffix “.net” in the disputed domain name does not have any impact on the avoidance of confusing similarity. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name.”
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
The Complainant must first make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden shifts to the Respondent to demonstrate it does have rights or legitimate interests. (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends that i) neither the Respondent nor anyone else within the context has rights in the disputed domain name, since “Apple” has nothing to do with the Complainant; ii) nobody has been authorized or licensed by the Complainant to use the disputed domain name; iii) the disputed domain name does not correspond to the name of the Respondent and “Apple”.com is not commonly known as INTESASANPAOLO EURODESK; and iv) the Complainant does not find any fair or noncommercial uses of the disputed domain name.
The Panel finds that the Respondent has no connection or affiliation with the INTESA SANPAOLO EURODESK mark in the disputed domain name or in any other manner. The Panel finds that the website resolved by the disputed domain name displays a webpage in Japanese characters titled “Hair loss to be bothered” that is completely unrelated to the Complainant and seems to be sponsoring beauty hair treatment (see Annex E to the Complaint). As such, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and that nor is such use a legitimate noncommercial or fair use.
Under the circumstance that the Respondent did not formally reply to the Complainant’s contentions and that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel concludes that the second element of the Policy, paragraph 4(a)(ii) has been established. (See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; and Accor v. Eren Atesmen, WIPO Case No. D2009-0701). C. Registered and Used in Bad Faith
The Complainant asserts that the disputed domain name was registered and is being used in bad faith by the Respondent because i) the Complainant’s trademarks INTESA SANPAOLO EURODESK and INTESA SANPAOLO are distinctive and well known around the world, and thus the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name; ii) the disputed domain name is not used for any bona fide offerings; iii) Internet users are confusingly led to the commercial advertisement page of the Respondent, and thus the Respondent has registered and is using the disputed domain name in order to intentionally divert traffic away from the Complainant’s website; iv) it is no coincidence that the disputed domain name has involved a big financial institution such as Intesa Sanpaolo; and v) the Respondent never replied to the Complainant’s cease-and-desist letter and the disputed domain name has not been disconnected from its current website.
Paragraph 4(b) of the Policy provides that the following circumstances, among others, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (paragraph 4(b)(iv)).
The Panel recognizes that the Complainant’s mark is a well-known trademark internationally in the field of financing. In light of the well-known status of the Complainant’s mark established well before the registration date of the disputed domain name, it is inferred that the Respondent registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s mark. This is because it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the trademark INTESASANPAOLO EURODESK or that the disputed domain name might be of some type of economic advantage in association with the Complainant’s mark (see The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517). Registration of the disputed domain name incorporating the well-known Complainant’s mark INTESASANPAOLO EURODESK by an entity that has no legitimate relationship with the Complainant itself demonstrates bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel observes that the website resolved by the disputed domain name displays a web page in Japanese titled “Hair loss to be bothered” that is completely unrelated to the Complainant (see Annex E to the Complaint). As such, the Panel infers that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to its website where beauty hair treatment is apparently sponsored, making them believe that the website resolved by the disputed domain name is associated or recommended by the Complainant. As a result, the Respondent may generate unjustified revenues for its redirecting to such a website. The Respondent is therefore illegitimately capitalizing on the reputation of the Complainant’s mark. See Dolce & Gabbana s.r.l. v. Domain ID Shield Service / Misato Takahashi, bkt,WIPO Case No. D2013-0600. See also Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
For all of the above considerations, the Panel finds that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to the website resolved by the disputed domain name, making them believe that the website is associated with or recommended by the Complainant. The Respondent is therefore illegitimately capitalizing on the goodwill of the Complainant’s mark.
As such, the Panel concludes that the Respondent 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.
Ho-Hyun Nahm, Esq.
Sole Panelist
Date: December 24, 2014
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