Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Dario Rossi of Roma, Italy. 2. The Domain name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2016. On April 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 2016, 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 Complainant on April 28, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on April 29, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 25, 2016.
The Center appointed Richard Hill as the sole panelist in this matter on June 3, 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 owns the mark INTESA SANPAOLO and uses it to market financial services around the world. The mark is very well-known.
Complainant's registration of its mark dates back to 2007. For instance, International trademark registration no. 920896 INTESA SANPAOLO (word mark) was registered on March 7, 2007.
The disputed domain name was registered on January 5, 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is not being actively used. 5. Parties' Contentions A. Complainant
Complainant states that it is the leading Italian banking group, in all business areas (retail, corporate and wealth management). It is also among the top banking groups in the euro zone, with a market capitalisation exceeding EUR 40.7 billion. Thanks to a network of approximately 4,100 branches capillary and well distributed throughout Italy, with market shares of more than 14% in most Italian regions, the Group offers its services to approximately 11.1 million customers. Complainant has a strong presence in Central-Eastern Europe with a network of approximately 1,200 branches and over 8.2 million customers. Moreover, the international network specialised in supporting corporate customers is present in 28 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States, the Russian Federation, China and India. Complainant is the owner of numerous registrations for the trademark INTESA SANPAOLO, with rights dating back to 2007. The registrations include national registrations in numerous countries and European community registrations. The disputed domain name was registered on January 5, 2016.
According to Complainant, it is obvious that the disputed domain name is almost identical to the Complainant's trademark, because it exactly reproduces the mark, with the mere addition of the descriptive and generic term "agenzia" (the Italian term for "branch office"). Such a difference is clearly a minor and merely descriptive variation of the cited mark.
Complainant alleges that Respondent has no rights to the disputed domain name. Respondent has not been authorized or licensed by Complainant to use its mark. The disputed domain name does not correspond to the name of Respondent and Respondent is not known by the disputed domain name. Respondent is not making fair or noncommercial use of the disputed domain name because the disputed domain name is not being used at all.
According to Complainant, the disputed domain name was registered and is used in bad faith, even though it is not being used. Firstly, Complainant's trademark is distinctive and well known all around the world. The fact that Respondent registered a domain name that is confusingly similar to it indicates that Respondent had knowledge of Complainant's trademark at the time of registration of the disputed domain name. In addition, the disputed domain name is not used for any bona fide offerings. More particularly, there are circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy). Countless UDRP decisions confirmed that the passive holding of a domain name with knowledge that the domain name infringes another party's trademark rights is evidence of bad faith registration and use. Complainant cites UDRP precedents to support its position.
Further, says Complainant, the risk of a wrongful use of the disputed domain name is high, since Complainant has already been targeted by some cases of phishing in the past few years. Such a practice consists of attracting the customers of a bank to a web page which imitates the real page of the bank, with a view to having customers disclose confidential information like a credit card or bank account number, for the purpose of unlawfully charging such bank accounts or withdrawing money out of them. It happened that some of Complainant's clients have received email messages asking, by the means of web pages which were very similar to those of the Complainant, the sensitive data of the clients, like user ID, password etc. Then, some of the clients have been cheated of their savings. Also in the present case, Complainant believes that the actual owner registered the disputed domain name with the "phishing" purpose, in order to induce and divert Complainant's legitimate customers to its website and steal their money. In particular, the use of the descriptive term "agenzia", together with Complainant's trademark INTESASANPAOLO, clearly let Internet users believe that the disputed domain name may be related to an official bank branch office. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates Complainant's mark in its entirety and adds the dictionary term "agenzia" which means "branch office" Italian. The addition is not sufficient to avoid a finding of confusing similarity between the disputed domain name and Complainant's mark. See TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361; GA Modefine S.A. v. Mark O'Flynn,WIPO Case No. D2000-1424.
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy. B. Rights or Legitimate Interests
Respondent has not been licensed or otherwise authorized to use Complainant's mark. There is no evidence in the file to indicate that Respondent is commonly known by the disputed domain name.
The disputed domain name is not being actively used. Thus the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name. See Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483.
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy. C. Registered and Used in Bad Faith
Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for his use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
The disputed domain name is not being actively used. According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), "[p]anels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa."
In the present case, the disputed domain name was registered through a privacy service that hid Respondent's identity and contact details. That is, Respondent concealed his identity. Complainant's trademark is very well- known. There has been no response to the Complaint. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy. 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 Complainant.
Richard Hill
Sole Panelist
Date: June 5, 2016
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