The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Domain Admin PrivacyProtect, LLC of Burlington, Massachussets, United States of America (“United States”) / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2018, 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 the Complainant on October 29, 2018 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 October 29, 2018.
The Center verified that the Complaint together with 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 October 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2018.
The Center appointed Theda König Horowicz as the sole panelist in this matter on December 7, 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 an Italian banking group which results from a merger of January 1, 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two major Italian banking groups. The Complainant has a strong business presence in Italy as well as in several other Central-Eastern European countries and in other parts of the world (United States, Russian Federation, China, and India).
The Complainant operates an Internet banking platform named “Inbiz” and holds several trademark registrations including the names IN BIZ such as the International Trademark registration No. 1024681, of November 5, 2009, in class 36, which notably covers the United States.
The Complainant is also the proprietor of the trademark registrations for INTESA SANPAOLO, including the International Trademark Registration No. 920896 of March 7, 2007, in classes 9, 16, 35, 36, 38, 41, and 42, which also covers the United States.
In addition, the Complainant owns many domain names including the trademarks IN BIZ and INTESA SANPAOLO, for example and , domain names which are connected to official webpages.
On March 30, 2012, the Respondent registered the disputed domain name. The disputed domain name resolves to a parked website.
On August 14, 2018, the Complainant’s legal representative sent a cease and desist letter to the Respondent asking for the voluntary transfer of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant makes the following allegations:
- The disputed domain name is almost identical to the Complainant’s trademarks.
- The Respondent has no rights on the disputed domain name and is not authorized by the Complainant to use the disputed domain name. The Respondent is not commonly known by the disputed domain name. Furthermore, the Respondent does not make a fair or noncommercial use of the disputed domain name.
- The disputed domain name was registered and is used in bad faith. In particular, the Complainant’s trademarks IN BIZ and INTESA SANPAOLO are distinctive and well-known around the world. The Respondent must therefore had knowledge of these marks at the time of the registration of the disputed domain name. A simple Internet search shows that these names references to the Complainant. Furthermore, the disputed domain name is not used for any bona fide offering of goods or services. It is indeed linked to a parking page promoting banking and financial services which are not linked to the Complainant. There is no possible legitimate use of the disputed domain name by the Respondent which tends to indicate that the latter registered it to resell it to the Complainant. Finally, the Respondent did not respond to the Complainant’s cease and desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has shown to have trademark rights over the marks IN BIZ and INTESA SANPAOLO.
Both trademarks are reproduced in their entirety in the disputed domain name.
The Panel therefore concludes that the disputed domain name is identical or confusingly similar to the Complainant’s marks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Respondent submitted no reply to the case against it. No evidence is contained in the case file which would evidence that the Respondent has rights or legitimate interests in the disputed domain name, in particular that he would be known by the disputed domain name.
The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element requires that the respondent registered and is using the disputed domain name in bad faith. See the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy enumerates non-exhaustive circumstances in which evidence of bad faith registration and use can be found; shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has 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 he has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his web site or location or of a product or service on his web site or location.
The Complainant evidenced that its trademarks INBIZ and INTESA SANPAOLO have been registered since several years and have been continuously used in an extensive manner in many countries (particularly Italy where the Complainant is based) and on the Internet through its official webpages and payment platform.
The IN BIZ and INTESA SANPAOLO trademarks are therefore widely known and there is no doubt that the Respondent must have known these trademarks when registering the disputed domain name.
Furthermore, the association of these two distinctive trademarks by the Respondent in order to create and register the disputed domain name cannot be incidental. It is a clear indication that the Respondent knew of these trademarks and the business of the Complainant.
The case file also shows that the disputed domain name has been linked to a webpage promoting banking and financial services of other companies than the ones operated by the Complainant. Such a scheme is a typical bad faith use.
The fact that the Respondent used a privacy service for registering the disputed domain name and the silence of the Respondent within these proceedings are also suggestive of bad faith, in this case.
Considering the above-mentioned circumstances, the Panel finds that the Complainant has also satisfied the requirements of 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.
Theda König Horowicz
Sole Panelist
Date: December 21, 2018
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