Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
Respondent is Francesc Valls Martinez of Barcelona, Spain. 2. The Domain Name and Registrar
The disputed domain name is registered with Nominalia Internet S.L. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2016. On February 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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.
On February 29, 2016, the Center notified the Parties in both English and Spanish that the language of the Registration Agreement for the disputed domain name is Spanish and that the Complaint had been filed in the English language. Complainant filed its request for English as the language of the proceeding on March 1, 2016. Respondent did not submit a language of the proceeding request.
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 in both English and Spanis of the Complaint, and the proceeding commenced on March 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2016.
The Center appointed Fernando Triana, Esq., as the sole panelist in this matter on March 31, 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. Language of the Proceeding
On February 26, 2016, the Center informed the Parties that as per paragraph 11 of the Rules: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement for the disputed domain name is Spanish and the Complaint had been filed in English.
Following the Center’s instructions, Complainant filed a request for English to be the language of the administrative proceeding arguing that: i) Complainant is an Italian company; ii) the Complaint was written in English as an international language comprehensible to a wide range of Internet users worldwide; and iii) the Registration Agreement of the disputed domain name has an English version which was enclosed as Annex B to the Complaint.
Consequently, Complainant requested the Center to accept the complaint in English, accept the Response either in English or Spanish and appoint a Panel familiar with both languages.
Taking into account Complainant’s request for English to be the language governing this dispute, that Respondent neither filed a response to the Complaint nor to the language inquiry and the discretion granted to the Panel by paragraph 11 of the Rules to determine the language of the proceeding, this Panel determines English to be the language of this proceeding. 5. Factual Background
According to Annex E to the Complaint, Complainant is the owner, among others, of the trademarks INTESA and BANCA INTESA, including the following trademark registrations:
- International Trademark Registration No. 793,367, INTESA, granted on September 4, 2002, in force until September 4, 2022, regarding services of international class 36.
- International Trademark Registration No. 831,572, BANCA INTESA, granted on June 24, 2004, in force until June 24, 2024, regarding services of international class 36.
- EU Trademark Registration No. 2,803,773, INTESA, granted on November 17, 2003, in force until August 7, 2022, regarding services of international class 36. 6. Parties’ Contentions A. Complainant
Complainant in an Italian banking group, and is one of the top banking groups in the Euro Zone.
Complainant is the owner of several INTESA and BANCA INTESA trademark registrations.
Complainant has registered the trademark INTESA as a domain name in, inter alia, the generic Top-Level Domains (“gTLDs”) “.com”, “.org”, “.info”, “.biz” and “.mobi”.
The disputed domain name is confusingly similar to the trademark registration, since it exactly reproduces Complainant’s trademark INTESA.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent does not have a commercial or personal relationship with Complainant and has not been authorized by Complainant to use the trademark in the disputed domain name.
Respondent is not commonly known by the trademark INTESA.
Respondent is not making a fair or noncommercial use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
Complainant’s trademarks INTESA and BANCA INTESA are well-known.
Respondent knew or should have known of Complainant’s trademarks at the time of the registration of the disputed domain name.
The disputed domain name is not used for any bona fide offerings of goods or services.
Respondent has intentionally attempted to attract Internet users for commercial gain via confusion with Complainant’s mark, since the disputed domain name resolves to a website with pay-per-click advertisements for banking and financial services.
Complainant sent a cease and desist letter to Respondent, asking for the voluntary transfer of the disputed domain name. Nonetheless, Respondent did not comply with the request. B. Respondent
Respondent did not reply to Complainant’s contentions despite being duly notified of the Complaint. 7. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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”.
Likewise, paragraph 10(d) of the Rules, provides that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
The Panel wishes to place special emphasis on the evidence filed by the Parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving at a decision. The statements that have been accompanied by evidence have been given more importance than the mere unsubstantiated assertions made by the Parties.
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the Parties, will be discussed as follows:
First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent. A. Identical or Confusingly Similar
Complainant contends it is the owner of the trademarks INTESA and BANCA INTESA throughout the world, to identify banking services.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark or service mark rights.
The generally accepted definition of a trademark involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the products or services of other participants in the market.
When a sign is registered as a trademark, it is granted a presumption of sufficient distinctive force, and the owner is granted an exclusive right over the trademark, which entitles the owner to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks1 and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient that a UDRP complainant to have rights over an unregistered trademark in order to deserve protection under the Policy, based solely on that mark’s use in commerce.
In this case, Complainant has proven, on the basis of its aforementioned EU and International trademark registrations (Annex E to the Complaint), its rights in the mark INTESA. The registration of a trademark is prima facie evidence of validity.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark INTESA for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain name is identical to Complainant’s trademark.
In the first place, before establishing whether or not the disputed domain name is confusingly similar to Complainant’s trademark INTESA, the Panel wants to point out that the addition of gTLDs, i.e., “.com”, “.biz”, or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark. The same applies to country code Top-Level Domains (“ccTLDs”), i.e., “.co.”, “.de”, “.cr”, “.es” and to the sponsored Top-Level Domain (“sTLD”) “.cat”.
UDRP panels have unanimously accepted that the inclusion of a TLD in a disputed domain name may be disregarded in analyzing whether that disputed domain name is identical or confusingly similar to a mark in which a complainant asserts rights. In Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico,WIPO Case No.D2000-0477, the panel stated that:
“The addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, “.com” is one of only several such gTLDs, and “.com” does not serve to identify a specific enterprise as a source of goods or services”.
Furthermore, the Panel believes that the disputed domain name is confusingly similar to the trademark INTESA as per the typical UDRP criteria. The Panel considers that the reproduction of the trademark INTESA within the disputed domain name is sufficient to establish that the disputed domain name is confusingly similar to the trademark 2 . Especially since the disputed domain name reproduces entirely Complainant’s trademark without including any other distinctive elements. Consequently, it is likely that consumers will assume (incorrectly) that the owner of the disputed domain name is Complainant.
In consequence, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark INTESA and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with. B. Rights or Legitimate Interests
i)Prima FacieCase
Regarding this second element of paragraph 4(a) of the Policy, UDRP panels have agreed that requiring a complainant to prove the lack of rights or legitimate interests of a respondent in a domain name is often an impossible task: it not only requires proving a negative but also demands access to information that is usually solely within the knowledge of a respondent3 .
Therefore, a complainant is required to make a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once this prima facie case is made, the burden of production shifts to the respondent, who must come forward with concrete evidence of its rights or legitimate interests4 . If the respondent fails to do so, a complainant is deemed to have met the second element of paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because: i) Respondent does not have a commercial or personal relationship with Complainant; ii) Respondent has not been authorized by Complainant to use the trademark INTESA in any manner; iii) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because the disputed domain name connects to a website which offers sponsored links for competing services, hence, Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name; iv) Respondent has no prior rights or legitimate interests in the disputed domain name; and v) Respondent must have known of Complainant’s trademark since it is a well-known trademark.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
ii) Respondent’s rights or legitimate interests in the disputed domain name
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that Respondent has failed to submit a Response to the Complaint filed against it. In particular, Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests to the disputed domain name. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as it is consider appropriate, which are that Respondent is unable to adduce evidence of any rights or legitimate interests in the disputed domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(i) There has been no evidence proving that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of legitimate use of the disputed domain name or reasons to justify the choice of the word “intesa” in its business operation.
(ii) There has been no evidence to show that Complainant has licensed or otherwise allowed Respondent to use the trademark INTESA or to apply for or use any domain name incorporating the trademark INTESA.
(iii) There has been no evidence proving that Respondent has been commonly known by the disputed domain name.
(iv) There has been no evidence proving that Respondent has any registered or unregistered trademark rights with respect to the disputed domain name.
(v) The disputed domain name is confusingly similar to Complainant’s INTESA trademark.
(vi) There has been no evidence proving that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Thus, Complainant has established at least a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name , which Respondent did not rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her 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 his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith, since Respondent knew or should have known of the trademark INTESA by September 29, 20155 .
The Panel agrees with Complainant. The fact that Respondent chose the word “intesa” to make up the disputed domain name is in the Panel’s view evidence per se of bad faith. The Panel finds that this selection was deliberate and not a product of chance: “intesa” is not a common word in English, Spanish or Catalan. Given the extent of the trademark INTESA’s well-known character, Respondent simply could not have been unaware of it. Thus, the Panel finds Respondent deliberately took someone else’s trademark to register the disputed domain name and to create a business around it. Indeed, INTESA is a well-known trademark and was well established before the registration of the disputed domain name:
“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”6 .
“Based on the evidence submitted, the Panel accepts that the INTESA SANPAOLO trademark is well-known in the context of Italian banking services”7 .
“Second, there are no doubts that the trademarks relied upon are well-known trademarks and that only the Complainant can authorize third parties to make use of its renowned trademarks. The natural consequence is that the Respondent could not ignore the existence of such renowned trademarks at the time he registered the disputed domain name, and that the unauthorized registration of was an abuse”8 .
Additionally, as shown in Annex D to the Complaint, the trademark INTESA was ranked third in the Euro Zone Ranking of 2015.
Thus, this Panel shares the view that the mere fact of knowingly incorporating a third-party’s well-known mark in a domain name constitutes registration in bad faith9 . See Compagnie Générale des Etablissements Michelin v. A Domain Privacy / Direct Navigation Data Inc.,WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, Complainant contends in the Complaint that Respondent is using the disputed domain name in bad faith, since the disputed domain name resolves to a website which displays pay-per-click advertisements for banking related services. Thus, Respondent chose the word “intesa” in order to generate traffic to a commercial site.
The Panel finds that Respondent must have known that the word “intesa” within the disputed domain name would attract Internet users seeking Complainant’s trademark, to the website from which Respondent expected to make money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark.
As in Compagnie Générale des Etablissements Michelin v. A Domain Privacy / Direct Navigation Data Inc.,WIPO Case No. D2012-1448, this Panel believes that “pay-per-click advertisement is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith. However, this Panel also believes that registering a domain name which comprises someone else’s well-known mark so as to make profit from diverted Internet users in the form of pay-per-click fees, is use in bad faith as per Policy 4(b)(iv)”.
Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes an attempt to use Complainant’s trademark to attract Internet users to its site for commercial gain which constitutes evidence of bad faith usage under paragraph 4(b)(iv) of the Policy.
Furthermore, Respondent has registered the disputed domain name primarily for the purpose of disrupting Complainant’s business, since Respondent registered a well-known trademark as a domain name and refused to respond to the cease and desist letter sent by Complainant requesting Respondent to transfer the disputed domain name, as per Annex K to the Complaint. At least since the cease and desist letter was received by Respondent, Respondent was aware of Complainant’s rights in the disputed domain name and could have transferred the disputed domain name to its rightful owner. Not doing so is evidence of bad faith.
Consequently, the three elements of the Policy, paragraph 4(a) are satisfied in the present case in respect to the disputed domain name. 8. 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 Complainant.
Fernando Triana, Esq.
Sole Panelist
Date: April 11, 2016
1 See MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205; see also The British Broadcasting Corporation v. Jamie Renteria,WIPO Case No. D2000-0050.
2 See Oki Data Ams., Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
3 See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyP,WIPO Case No. D2012-0875; see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services,WIPO Case No. D2012-0474.
4 See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624.
5 See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services,WIPO Case No. D2012-0474.
6 See Intesa Sanpaolo S.p.A. v. Rika Doi, Apple / Whois Privacy Protection Service by ,WIPO Case No. D2014-1862.
7 See Intesa Sanpaolo S.p.A. v. Huang You Bao / Huang You Bao,WIPO Case No. D2015-0623.
8 See Intesa Sanpaolo S.p.A. v. Angelo Tristano,WIPO Case No. D2015-0792.
9 See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
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