The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Milen Radumilo of Bucharest, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2016. On January 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complaint was filed naming the privacy shield as the Respondent. The Center sent an email communication to the Complainant on January 10, 2017 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 January 12, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on January 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2017.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on February 8, 2017. 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 the leading Italian banking group and also one of the protagonists in the European financial arena. Intesa Sanpaolo 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 top Italian banking groups.
The Group offers its services to approximately 11.1 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1,200 branches and over 7.9 million customers. The international network specialized in supporting corporate customers is present in 29 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, Russia, China and India.
The Complainant is the owner of several trademarks:
- International trademark INTESA SANPAOLO No. 920896, registered on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42, protected in the European Union, in the United States of America, as well as in other countries;
- European Union trademark INTESA SANPAOLO No. 5301999, filed on September 8, 2006 and registered on June 18, 2007 in classes 35, 36 and 38, the Panel could check that it has been renewed;
- European Union trademark INTESA SANPAOLO & DEVICE No. 5421177, filed on October 27, 2006 and registered on November 5, 2007 in classes 9, 16, 35, 36, 41 and 42, the Panel could check that it has been renewed.
The disputed domain name was created on November 30, 2016.
The domain name redirected to a parking website, which was sponsoring banking and financial services.
On December 14, 2016, the Complainant sent a cease and desist letter to the email address indicated in the WhoIs. He did not receive any answer.
The Complaint indicates that the disputed domain name resolved to a website with links sponsoring banking and financial services for Complainant’s competitors. On January 13, 2017, the domain name redirected to a webpage informing that the domain name is “for sale”. 5. Parties’ Contentions A. Complainant
The Complainant affirms that the disputed domain name is confusingly similar to its trademarks INTESA SANPAOLO and INTESA SANPAOLO & DEVICE and to its domain names , , , , and , which all resolve to the website “www.”.
The addition of the letters “sa” between “INTESA” and “SANPAOLO” is minor.
The Complainant relies on Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001‑1314, in which the Panel considered that the domain name was confusingly similar and that it was a “case of typo squatting”.
The Complainant affirms that the Respondent has no rights or legitimate interests on the disputed domain name. Indeed, the Complainant never authorized or licensed the Respondent to use the trademarks INTESA SANPAOLO and never authorized him to create the disputed domain name and to use it.
Moreover, the Respondent is not commonly known as “INTESASASANPAOLO” and there is no evidence of any fair or noncommercial use of the disputed domain name by the Respondent.
According to the Complainant, the disputed domain name was registered and used in bad faith.
The Complainant’s trademarks are well-known around the world and the disputed domain name is confusingly similar with them. Even if the Respondent did not know the trademarks, a basic Google search of “intesa sanpaolo” was enough to know that.
The disputed domain name is not used for any bona fide offerings. More particularly, there are present circumstances indicating that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website.
The disputed domain name redirected to a website sponsoring banking and financial services, for whom the Complainant’s trademarks are registered and used.
Consequently, Internet users, while searching for information on the Complainant’s services, are confusingly led to the websites of the Complainant’s competitors which are sponsored on the websites connected to the domain name at issue. The Respondent has registered and used the domain name at issue in order to intentionally divert traffic away from the Complainant’s website.
This practice causes great damages to the Complainant, due to the misleading of their present clients and to the loss of potential new ones.
According to the Complainant, the Respondent’s commercial gain is evident, since it is obvious that the
Respondent’s sponsoring activity was being remunerated.
Finally, the Respondent did not answer to the cease and desist letter sent on December 14, 2016 by the Complainant’s representative. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To prevail in the proceedings under the Policy, the Complainant must show that the three requirements set forth in paragraph 4(a) of the Policy are met. Those requirements are:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
Likewise, under paragraph 4(c) of the Policy, the Respondent can demonstrate its rights and legitimate interests in the disputed domain name in its response to the Complaint by demonstrating, among others, the circumstances mentioned under this paragraph of the Policy. A. Identical or Confusingly Similar
The Complainant has clearly established its registered rights on the trademarks INTESA SANPAOLO and INTESA SANPAOLO & DEVICE.
The disputed domain name entirely reproduces the Complainant’s trademark INTESA SANPAOLO, with the mere adjunction of the letters “sa” between the words “INTESA” and “SANPAOLO”. Such addition does not avoid a finding of confusing similarity.
Like in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., supra, on which the Complainant relies, the present case may be considered typosquatting.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The condition of paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the Respondent of the dispute, its 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 it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not respond to the Complaint. Consequently it did not provide any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy.
In the circumstances of this case, the Panel finds that the Complainant has established a prima facie case of the Respondent’s absence of rights or legitimate interests in the disputed domain name.
The Respondent has not been licensed or authorized to use the trademarks INTESA SANPAOLO or to register the disputed domain name.
The Respondent did not make a fair or noncommercial use of the disputed domain name. He used it to direct to a website with links sponsoring banking and financial services for Complainant’s competitors. Those services are the business activities of the Complainant and its trademarks are registered for those services.
Moreover, on the day of the amendment of the Complaint, i.e., on January 12, 2017, the disputed domain name resolved to a page informing the Internet users that it was for sale.
There is no fair or noncommercial use of the disputed domain name by the Respondent.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by an Administrative Panel to be evidence of the bad faith registration and use of a domain name. It provides that:
“For the purposes of Paragraph 4(a)(iii), 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 a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Complainant has demonstrated the well-known character of its trademarks. The Respondent could not ignore the Complainant’s rights on the trademarks INTESA SANPAOLO and INTESA SANPAOLO & DEVICE when he registered the disputed domain name , in order to use it in relation with financial activities.
The Panel finds that the disputed domain name was registered in bad faith with the Complainant in mind, to make a commercial gain and disrupting the Complainant’s activity.
The Respondent used the disputed domain name to redirect to a parking website sponsoring bank and financial services, which is the Complainant’s business activity, and sponsoring the Complainant’s competitors.
The goal was to attract the Internet users on the website by creating a likelihood of confusion with the Complainant’s trademarks in order to mislead the Internet users, the Complainant’s clients or the new ones, for a commercial gain.
Moreover, after sending the cease and desist letter, the disputed domain name was no longer used to resolve to a parking webpage, but to a page on which it was offered for sale.
The Panel finds that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location, in the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by the Complainant. 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.
Marie-Emmanuelle Haas
Sole Panelist
Date: February 22, 2017
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