The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati, Italy.
The Respondent is Courage Ogiugo of Chiuduno, 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 February 20, 2018. On February 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2018.
The Center appointed Andrea Mondini as the sole panelist in this matter on April 3, 2018. 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 major Italian banking group and is the owner of several registrations for the trademark INTESA SANPAOLO, including the International Registration No. 920896 INTESA SANPAOLO, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42, covering among other, Australia, China, United States of America, Japan, Russian Federation and European Union Trade Mark registration No. 5301999 INTESA SANPAOLO, granted on June 18, 2007, in classes 35, 36 and 38.
The disputed domain name was registered on August 21, 2017, and is passively held. 5. Parties’ Contentions A. Complainant
The Complainant contends in essence:
- that the disputed domain name is confusingly similar to its trademark INTESA SANPAOLO;
- that the Complainant has not authorized the Respondent to use its trademark INTESA SANPAOLO, and that the disputed domain name does not correspond to the Respondent’s name;
- that the Respondent is not making any fair or noncommercial use of the disputed domain name;
- that the Respondent registered the disputed domain name in bad faith because it must have been aware of the Complainant’s trademark;
- that the Respondent is using the disputed domain name in bad faith because it has been blocked by Google Safe Browsing through a warning page, which indicates that the Respondent’s purpose was to use the disputed domain name for illicit “phishing” activities.
- that in any event, passive holding of a domain name qualifies as use in bad faith. B. Respondent
The Respondent did not respond to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown that it owns several registrations for the trademark INTESA SANPAOLO, including the International Registration No. 920896 INTESA SANPAOLO, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42, covering among other Australia, China, United States of America, Japan, Russian Federation and European Union Trade Mark registration No. 5301999 INTESA SANPAOLO, granted on June 18, 2007, in classes 35, 36 and 38.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, because it includes the identical distinctive word elements “Intesa Sanpaolo”, whereas the addition of the descriptive word “online” does not dispel confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends, credibly, that the Respondent has no right to use, nor other rights or legitimate interests in respect of the disputed domain name. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademark in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Considering that the Complainant is a major Italian banking group and that its trademark INTESA SANPAOLO is well known, the Panel concludes that the Respondent must have been aware of the Complainant’s trademark and that it registered the disputed domain name in bad faith.
The fact that the disputed domain name has been blocked by Google Safe Browsing through a warning page is a strong indication that the disputed domain name is used in bad faith by the Respondent. In any event, the Panel also finds that the Respondent is using the disputed domain name in bad faith, since it is
well-established that the passive holding of a domain name can, in cases such as this, where no plausible good faith use of the domain name presents itself, constitute use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 the Complainant.
Andrea Mondini
Sole Panelist
Date: April 10, 2018
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