Complainant is Intesa Sanpaolo S.p.A of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
Respondent is Janja Filipic of Vrhnika, Slovenia. 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 January 8, 2016. On January 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 5, 2016.
The Center appointed Peter Wild as the sole panelist in this matter on February 12, 2016. 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
- Complainant is a major Italian bank with international activities. One of Complainant's subsidiaries is "Banka Koper d.d.", a bank established in 1955, with over 50 branches in Slovenia.
- Complainant is the owner of Community trademark registration no. 6432983 BANKA KOPER, filed on November 13, 2007 and granted on September 29, 2008, in connection with classes 9, 16, 35, 36, 38, 41and 42; Community trademark registration n. 6433312 KOPER, filed on November 13, 2007 and granted on October 23, 2008, in connection with classes 9, 16, 35, 36, 38, 41and 42; and Community trademark registration n. 6662563 BANKA KOPER (& device), filed on February 12, 2008 and granted on December 17, 2008, in connection with classes 9, 16, 35, 36, 38, 41 and 42.
- Complainant is also the owner of the following domain names: , and . 5. Parties' Contentions A. Complainant
Complainant contends that Respondent's domain names , , and are basically identical to its trademarks with the mere addition of the geographical term "Slovenija".
Complainant further claims that Respondent has no legitimate interests and that the disputed domain names were registered and are used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant asserts that it is a well-established and well-known Italian bank with a subsidiary in Slovenia which is well-represented in that country with more than 50 branches. Its subsidiary is named Banka Koper and has used the BANKA KOPER mark in connection with banking services since 1955.
Complainant further asserts that it is the owner of numerous trademark registrations for BANKA KOPER in, inter alia, the European Union (of which Slovenia is a member). None of this is disputed by Respondent.
In light of Complainant's assertions and the lack of any response by Respondent, the Panel accepts that Complainant's Trademark is associated with Complainant. Complainant argues that the disputed domain names incorporate, as a dominant part, its registered trademark BANKA KOPER, with the addition of the geographical term "slovenija", which defines the geographic territory in which Complainant trades under the trademark BANKA KOPER. The Panel finds that Internet users are likely to regard the word "slovenija" as descriptive.
For these reasons the Panel finds:
a) Complainant has rights in respect of BANKA KOPER trademark.
b) The disputed domain names are confusingly similar to Complainant's trademark in so far as they contain the distinctive element "bankakoper" accompanied by the term "slovenija".
Accordingly, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
Complainant asserts that Respondent is not using 3 of the 4 disputed domain names at all and the 4th disputed domain name, , resolves to a placeholder website with no real or relevant content. Whether Respondent has rights or legitimate interests in the disputed domain names must be assessed against Complainant's rights taking into account the manner in which Respondent uses the disputed domain names. In the absence of real use and of Respondent's comments, and in light of the evidence submitted by the Complainant, the Panel finds that Complainant satisfied its burden to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names.
In these circumstances, it is difficult to see how Respondent's conduct could be characterized as legitimate and thus permissible. On this basis the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
On November 13, 2015 Complainant's attorney sent a cease and desist letter to Respondent, asking for the voluntary transfer of the disputed domain names to Complainant. Respondent did not comply with such request.
Respondent chose domain names which not only incorporate Complainant's Trademark, which appears to be well known in the banking field, but also added the descriptor "slovenija" as the place of Complainant's business activities under the trademark.
As Complainant points out, a simple Internet search, prior to registering the disputed domain names, would have shown to Respondent that the distinctive element of the disputed domain names is a registered and used company name and trademark.
The disputed domain names are not used for any bona fide offerings. In fact, they are not used at all with the only exception of , which is connected to a website template with no relevant contents. The Panel interprets this situation as a passive holding of the disputed domain names.
Such passive holding of a domain name may be interpreted as of bad faith registration and use in the terms of paragraph 4(a)(iii) of the Policy. The Panel finds the following circumstances to be indicative of bad faith registration and use: Complainant's trademark and corporate name are reasonably well present in Slovenia, the country which Respondent indicates as domicile. In addition, Respondent, by filing 4 confusingly similar domain names, differing only in the term "slovenija" and the generic Top-Level Domains ("gTLDs") ".com", ".org", ".name" and ".info", shows a pattern of conduct of preventing Complainant from reflecting the trademark in a number of attractive domain names. Furthermore, Respondent did not file a response to the Complaint and did not answer Complainant's cease and desist letter. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273; and Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798.
For these reasons, the Panel finds the third element 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 names, , , and be transferred to Complainant.
Peter Wild
Sole Panelist
Date: February 17, 2016
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