The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati – Studio Legale, Italy.
The Respondent is Petr Statevsky, Bankakoper L.L.C of Lewes, Delaware, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2015. On July 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 7, 2015, 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 proceeding commenced on July 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2015. The Panel notes that delivery of the hard copy of the Written Notice at the address shown in the WhoIs for the disputed domain names was refused. The Panel is satisfied that the Center employed all reasonably available means calculated to achieve actual notice to the Respondent in accordance with paragraph 2(a) of the Rules.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 18, 2015. 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 a leading Italian banking group with the market capitalization in excess of 4.7 billion euros. It has a number of subsidiaries throughout Europe including Banka Koper d.d. which was established in 1995 in Slovenia. The Complainant is the owner of several community trademark registrations of the trademarks BANKA KOPER and KOPER registered in international classes 9, 16, 35, 36, 38, 41 and 42 since 2007 and 2008. The Complainant is also the owner of domain names incorporating the trademark BANKA KOPER, in, inter alia, the “.si”, “.it” and “.xxx” domains.
Between May and October 2014 the Respondent registered the disputed domain names. The disputed domain names and (the “active domain names”) each resolves to an active website containing material critical of the Complainant’s Banka Koper subsidiary. The remaining disputed domain names (the “passive domain names”) do not resolve to an active webpage.
The Complainant has provided evidence to indicate that the name and address given for the Respondent company, Bankakoper LLC are false. The Complainant has provided a printout of a search of the records of the State Department for the State of Delaware returning a nil result for a search for the term “BankaKoper”. 5. Parties’ Contentions A. Complainant
The Complainant submits that each of the disputed domain names comprises solely the Complainant’s BANKA KOPER trademark with the addition only of the respective generic Top-Level Domain (gTLD) which, the Complainant submits should be ignored in accordance with well-established authority under the Policy.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names as it is not authorized to use the Complainant’s trademark in the disputed domain names. The Complainant submits that the disputed domain names have not been used in connection with a bona fide offering of goods or services and have not been the subject of noncommercial, legitimate or fair use. Translations provided by the Complainant of the text at the webpage of the active disputed domain names show that the Respondent is purporting to offer annuity services in competition with the Complainant. The Complainant further submits that the Respondent cannot claim to be commonly known by any of the disputed domain names and that the results of its enquiry to the Delaware State Department show that the name Bankakoper L.L.C is false and that this is further evidence of bad faith on the part of the Respondent.
With regard to the passive disputed domain names, the Complainant submits that, coupled with other evidence of bad faith discussed above, the registration and holding of these disputed domain names constitutes registration and use in bad faith as established in Telstra Corporation v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
With regard to the active domain names, the Complainant submits that the use of the disputed domain names for the purpose of posting criticism of the Complainant is not a legitimate free speech use of the disputed domain names and is primarily a pretext for obtaining commercial advantage. The Complainant cites many prior UDRP panel decisions holding that using a domain name comprising solely the complainant’s trademark to direct to a criticism site is not a bona fide or fair use, see for example, Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 where the panel noted that:
“… the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views.”
The Complainant further submits that the comments posted at the websites of the active domain names are unfounded and not based on any credible evidence. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is the owner of several community trademark registrations of the trademark BANKA KOPER and KOPER. Those marks have been used since 1955 by the Complainant’s Slovenian subsidiary Banka Koper d.d. Each of the disputed domain names comprises the word “banka koper” or “banka-koper” with the addition only of the respective gTLD. Such additions do not serve to distinguish the disputed domain names from the Complainant’s trademarks. The Panel therefore finds that each of the disputed domain names is substantially identical to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant’s Slovenian subsidiary is one of the largest banks in that territory and has been operating since 1955 well prior to the registration of the disputed domain names. There is no conceivable reason why the Respondent should claim a right to use the disputed domains names in the bona fide offering of goods or services. As explained more fully below the use which it has made has been a commercial use for a site which the Respondent has attempted to present as a criticism site. Even if the use were for a genuine criticism site it is not legitimate to use as a domain name for that site a name which is indistinguishable from the Complainant's trademark. The Respondent registered the disputed domain names without the license or authority of the Complainant and the Respondent is not commonly known by the disputed domain names. The name “Bankakoper L.L.C” is apparently fictitious and correspondence to the address given in the WhoIs for the disputed domain names was not accepted.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The fact that the disputed domain names are identical to the Complainant’s trademark and the fact that the trademark has been in use in the financial industry for over 60 years raises the clear presumption that the Respondent knew of the Complainant’s trademark at the time it registered the disputed domain names. The Respondent has not sought to rebut that presumption.
The Respondent has used the active disputed domain names, under the cloak of criticism, for the purpose of soliciting applications for an annuity program, a service which is clearly in competition with the services of the Complainant. The Panel is therefore satisfied that the Respondent’s intended use for the active disputed domain names is to cause Internet users to enter the websites of the Respondent in the belief that those websites are the websites of the Complainant. The fact that a user, once entering the site, may realize that it is not the Complainant’s website does not alter the fact that the Respondent has, by using the disputed domain names, intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its websites.
With regard to the passive disputed domain names, the indicators of bad faith discussed above, including the use of a fictitious name and the bad faith use of the active disputed domain names, clearly indicate a bad faith passive holding of those disputed domain names, see Telstra Corporation v. Nuclear Marshmallows, supra.
The Panel therefore finds that each of the disputed domain names has been 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 names, , , , , , and be transferred to the Complainant.
Desmond J. Ryan AM
Sole Panelist
Date: August 31, 2015
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