The Complainant is Intesa Sanpaolo S.p.A. of Turin, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondents are Rosario Mautone of Rome, Italy, Rosario Giorda of Rome, Italy, Bruno Amaranto of Lucca, Italy, Rosario Bellucci of Vergiate, Italy, Marco de Lorenzo of Rome, Italy, Luca Demasto of Rome, Italy, Roberto Castellani of San Pietro Vernotico, Italy, Marco de Giorgio of Rome, Italy, Mario Improte of Rome, Italy, Giorgio Fiaba of Rome, Italy, Luca Ferdi of Rome, Italy, Marco Gioconda of Rome, Italy, Riccardo Trevisano of Rome, Italy, Luca De Leo of Rome, Italy, Marco Polo of Rome, Italy, Luca Tortorella of Rome, Italy, Francesco Romano of Rosolina, Italy, Luca Dilorenzo of Rome, Italy, Fabrizio Murale of Rocca Canterano, Italy, Luca Giordano of Rome, Italy, Francesco Montanari of Ancona, Italy, Marco Fabrizione of Rome, Italy, Luca Merandi of Rome, Italy, Marco Laurenti of Rome, Italy, Mario Torrone of Rome, Italy, Fabrizio Curante of Rome, Italy, Marco Castello of Rome, Italy, Marco Olivero of Rome, Italy, Fabrizio Modellini of Rome, Italy, Carmelo Fernando of Rome, Italy, Mauro Demagi of Rome, Italy, Fabrizio Leone of Rome, Italy, and Ferdinando Coppola of Milan, Italy. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2018. On December 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names, as well as the domain name . On December 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names. On January 9, 2019, the Center sent a communication to the Registrar requesting a clarification regarding the domain name . On the same day, the Center received the Registrar’s clarification. The Center sent an email communication to Complainant on January 10, 2019 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 January 14, 2019 which, inter alia, removed from the Complaint. On January 14, 2019, the Center sent a communication to the Registrar and the Parties regarding the removal of the domain name . On January 25, 2019, the Center sent a communication to the Parties regarding the consolidation of multiple Respondents.
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 Respondents of the Complaint, and the proceedings commenced on January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on February 15, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on March 1, 2019. 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, a leading Italian banking group, is a company resulting from a merger in 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the main Italian banking groups.
Complainant has a market capitalization exceeding EUR 34.2 billion. Complainant has approximately 4,000 branches and 11.9 million customers in Italy. Complainant also has approximately 1,000 branches and over 7.5 million customers in Central and Eastern Europe.
Complainant owns, inter alia, the following trademark registrations:
- INTESA, International trademark Reg. No. 793367, granted on September 4, 2002 and duly renewed until September 4, 2022, covering services in International Class 36;
- INTESA, European trademark Reg. No. 2803773, granted on November 17, 2003, filed on August 7, 2002, and duly renewed until August 7, 2022, covering services in International Class 36;
- INTESA SANPAOLO, International trademark Reg. No. 920896, granted on March 07, 2007 and duly renewed, covering goods and services in International classes 9, 16, 35, 36, 38, 41 and 42;
- INTESA SANPAOLO, European trademark Reg. No. 5301999, granted on June 18, 2007 filed on September 08, 2006, duly renewed, covering services in International Classes in International Classes 35, 36 and 38;
- INTESA SANPAOLO and device, European trademark Reg. No. 5421177, granted on November 5, 2007, filed on October 27, 2006, and duly renewed, covering goods and services in International Classes 9, 16, 35, 36, 38, 41 and 42.
Complainant also owns the domain names , , , , , , , , , , and .
The disputed domain name was registered on September 19, 2018.
The disputed domain name was registered on September 22, 2018.
The disputed domain name was registered on September 28, 2018.
The disputed domain name was registered on October 8, 2018.
The disputed domain names , and were registered on October 9, 2018.
The disputed domain name was registered on October 11, 2018.
The disputed domain names , and were registered on October 17, 2018.
The disputed domain names and were registered on October 20, 2018.
The disputed domain names and were registered on October 25, 2018.
The disputed domain names , and were registered on October 26, 2018.
The disputed domain names , and were registered on October 30, 2018.
The disputed domain name was registered on October 31, 2018.
The disputed domain names , and were registered on November 1, 2018.
The disputed domain name was registered on November 5, 2018.
The disputed domain name was registered on November 7, 2018.
The disputed domain name was registered on November 12, 2018.
The disputed domain names , and were registered on November 13, 2018.
The disputed domain name was registered on November 19, 2018.
The disputed domain name was registered on December 3, 2018.
The disputed domain name was registered on December 4, 2018.
Presently, the disputed domain names do not resolve to any active website. 5. Parties’ Contentions A. Complainant
In its amended Complaint, Complainant contends as follows:
The disputed domain names are identical to Complainant’s trademarks in that they reproduce Complainant’s trademarks INTESA and INTESA SANPAOLO, with the mere addition of generic terms such as “banca”(Italian for “bank”), “convalida”(the Italian for “confirmation”), “gruppo”(Italian for “group”), “sistema bancario”(Italian for “banking system”), and other neutral or descriptive terms like “groups”, “recapito”(Italian for “address”), “bancario” (Italian for “banking”)and “news”. In addition, some of the disputed domain names also represent a clear example of typosquatting (see, in particular, the disputed domain names and ). In any case, the above differences are clearly minor and merely descriptive variations of the cited marks, used by Complainant to identify its online banking service for the enterprises.
Respondents have no rights or legitimate interests in respect of the disputed domain name. Respondents have nothing to do with Intesa Sanpaolo. In fact, any use of the trademarks INTESA and BANCA INTESA has to be authorized by Complainant. Nobody has been authorized or licensed by Complainant to use the disputed domain names at issue. The disputed domain names do not correspond to the name of Respondent and, to the best of Complainant`s knowledge, Respondents are not commonly known by the disputed domain names.
There are no fair or noncommercial uses of the disputed domain names, as can be seen on the home pages of the websites at the disputed domain names. See Annex F to the Complaint.
The disputed domain names were registered and are used in bad faith. Complainant’s trademarks INTESA and INTESA SANPAOLO are distinctive and well known all around the world. The fact that Respondent has registered domain names that are confusingly similar to these marks indicates that Respondent had knowledge of Complainant’s trademarks at the time of registration of the disputed domain names. In addition, had Respondent carried even a basic Google search in respect of the words “intesa” and “intesa sanpaolo”, the search would have yielded obvious references to Complainant. Complainant submits, as Annex G to the Complaint, an extract of a Google search in support of its allegation. These results allow a clear inference of knowledge of Complainant’s trademark by Respondent. Therefore, it is more than likely than not that the disputed domain names would not have been registered if it were not for Complainant’s trademarks. This is a clear evidence of registration of the disputed domain names in bad faith.
In addition, the disputed domain names are not used for any bona fide offerings. There are circumstances indicating that, by using the disputed domain names, Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names 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 disputed domain names according to Policy paragraph 4(b)(i).
As stated above, the disputed domain names are not used for any bona fide offerings, even if they presently are not connected to any website. See Annex F to the Complaint. Countless previous UDRP decisions confirmed that the passive holding of a domain name with knowledge that the domain name infringes third party’s trademark rights is evidence of bad faith registration and use (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The UDRP panel consensus view is that the passive holding of a disputed domain name may, in appropriate circumstances, be consistent with a finding of bad faith. Panels have tended to make such findings in circumstances in which, for example, a complainant’s mark is well known, and there is no conceivable use that could be made of the domain name that would not amount to an infringement of the complainant’s trade mark rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 3.3. Complainant has already extensively proved the renown of its trademarks INTESA and INTESA SANPAOLO. In respect of the second circumstance, it must be underlined that it is objectively not possible to understand what kind of use Respondent could make with the disputed domain names which correspond to Complainant’s trademarks and domain names which Complainant currently is using by to provide online banking services.
The risk of a wrongful use of the disputed domain names is even higher in the present case, since Complainant has already been targeted by phishing in the past few years, 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 from them. It happened that some clients of Complainant have received email messages eliciting, by using web pages which were very similar to Complainant’s webpages, sensitive data, such as user ID, password, etc. Because of these maneuvers, some clients of Complainant have been cheated. In the present case, Complainant believes that the actual owner of the disputed domain names registered them with a “phishing” purpose, in order to induce and divert Complainant’s legitimate customers to its website and steal their money. B. Respondents
Respondents did not reply to Complainant’s contentions. 6. Discussion and Findings A. Request for Consolidation
After receiving from the Center the registrant and contact information disclosed by the Registrar, i.e., the names and addresses of the underlying registrants of the disputed domain names, Complainant submitted an amended Complaint, naming such underlying registrants as Respondents. In its amended Complaint, Complainant requested consolidation in a single complaint against these multiple Respondents.
The Panel considers that such consolidation is appropriate, based on the following facts:
a) All the disputed domain names incorporate one or both Complainant’ s marks INTESA or INTESA SANPAOLO, or a close variation thereof (including mistypings), with or without the addition of generic or common terms.
b) The disputed domain names are registered with the same registrar.
c) The addresses provided by the registrants to the registrar at the time of the disputed domain names registration do not seem to exist, i.e., are most likely to be false. This fact, alleged by Complainant in the amended Complaint, was confirmed by the courier entrusted with delivering the notification of the Complaint to each Respondent. Moreover, the contact details including the (fake) postal addresses and email addresses all share striking similarities (including email addresses in the format [first name].[last name]@).
In the view of the Panel, these facts, considered together, strongly suggest that one or more individuals are controlling or acting in a coordinated way all the registrations of the disputed domain names and the activity (or inactivity) of the corresponding websites, and are hiding the identities and/or locations of the registrants. This is strong evidence that the disputed domain names are under common control. Accordingly, the Panel grants the request for consolidation. See WIPO Overview 3.0, section 4.1. B. Identical or Confusingly Similarity
Complainant has shown to the satisfaction of the Panel that it owns trademark registrations for the trademarks INTESA and INTESA SANPAOLO. See section 4 above.
The Panel notes that the disputed domain names incorporate one or both of these marks, with the addition of descriptive, generic or common terms such as “convalida” and “convalidare” (Italian for “confirm”), “banca” (Italian for “bank”), “recapito” and “recapiti” (Italian for “address” and “addresses”), “nuova” (Italian for “new”), “gruppo bancario” (Italian for “banking group”), “int”, “in”, “banc” (French for bank), “banco” (Spanish or Portuguese for “bank”), “banking”, “it” and “in” (abbreviations for “Italia” and “India”), “conto” (Italian for “account”), “bancario” (Italian for “banking”), “grups” and “sistema bancario” (Italian for “banking system”). The Panel further notes that in the disputed domain name the Complainant’s INTESA SANPAOLO trademark is recognizable, as it consists of a natural abbreviation of the “INTESA” element. Furthermore, the Complainant’s INTESA SANPAOLO trademark is recognizable in the disputed domain names which invert the elements in the mark, i.e., . All these additions clearly do not avoid a finding of confusing similarity between the disputed domain names and Complainant’s marks INTESA and INTESA SANPAOLO. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”)
The Panel concludes that the disputed domain names are confusingly similar to the marks INTESA and INTESA SANPAOLO, in which Complainant has rights. C. Rights or Legitimate Interests
Complainant contends that Respondents have not been authorized or licensed by Complainant to use its marks in the disputed domain names. The Panel is unaware of any evidence or element in the case file suggesting otherwise. Complainant adds that the disputed domain names do not correspond to the names of Respondents, and that Respondents are not commonly known by the disputed domain names. The Panel agrees that the names of Respondents have nothing in common with the disputed domain names, which contain Complainant’s marks INTESA and/or INTESA SANPAOLO or variations thereof, and there is no allegation or evidence that any of Respondents are known – commonly or otherwise – by the disputed domain names. This fact discards the application of Policy paragraph 4(c)(ii).
Complainant also contends that Respondents make no fair or legitimate noncommercial use of the disputed domain names. As proof of this, Complainant submits screen captures of the websites at the disputed domain names showing a legend stating either that the disputed domain names cannot not be resolved, or that it corresponds to a deceptive site, i.e., a website where Internet users are been deceived by means phishing or other maneuvers.
In exercise of its general powers under Rules paragraph 10(a), the Panel attempted to connect its browser to the websites at the disputed domain names. In the cases of the disputed domain names , and , the browser returned a text stating that the website in question was deceptive, i.e.,it is used to deceive Internet users by means of phishing or other social engineering schemes. In this regard, the Panel notes that several of the disputed domain names contain the terms “convalida”, “recapito convalidare”, “recapito”, “recapiti”, “convalidare” and the like, suggesting that Respondents registered the corresponding websites to elicit the addresses of Internet users presumably searching for Complainant’s official website, marks and services, a typical phishing maneuver.
As to the remaining thirty-one disputed domain names, the Panel’s browser returned an error message reading, “ERR_NAME_NOT_RESOLVED”. In the view of the Panel, although these error messages are not a direct evidence that the websites at the disputed domain names were used for phishing, they show at least that the disputed domain names are not being used at all. This, in light of the circumstances of this case, suffices to exclude a use in connection with a bona fide offering of goods or services according to Policy paragraph 4(c)(i), or a fair or legitimate noncommercial use without intent for commercial gain misleadingly to divert consumers, according to Policy paragraph 4(c)(iii). Thus, Complainant has succeeded in establishing a prima facie case that Respondents lack rights or legitimate interests in the disputed domain names.
Considering that Respondents have not provided any reasons or explanations for registering the disputed domain names, the Panel concludes that Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel notes that the disputed domain names contain Complainant’s marks INTESA and INTESA SANPAOLO in its entirety or in a recognizable variation. Complainant is an Italian banking institution with thousands of branches that is notorious in Italy, where Respondents reside.1 Thus, it would be unconceivable that they do not know of Complainant and its INTESA and INTESA SANPAOLO marks. Accordingly, the Panel concludes that Respondents knew or should have known quite well of Complainant, its marks and banking activities, and that they had Complainant and its marks in mind, and targeted them at the time of registering the disputed domain names. In the circumstances of this case, this means that the registration of the disputed domain names was in bad faith.
Moreover, in application of the doctrine of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, it is not possible to conceive of a plausible circumstance in which Respondents could legitimately use the disputed domain names, or of a plausible situation in which Respondents would have been unaware of this fact at the time of registration.
Since the disputed domain names do not resolve to any active website, the Panel visited the Wayback Machine at in search for archived web pages. As a result, for each of the thirty-four disputed domain names, the Machine returned a legend stating, “Hrm. Wayback Machine doesn't have that page archived”, which suggests that there is no web activity associated with the disputed domain names.
This does not mean that the disputed domain names are not being used in bad faith. According to Telstra Corporation Limited v. Nuclear Marshmallows, supra, the passive holding of a domain name can amount to use in bad faith if certain circumstances are present. The Panel considers that in this case all the circumstances listed in Telstra are present:
a) Complainant is notorious in Italy and well known in other European countries;
b) Respondents have not provided any evidence whatsoever of any actual or contemplated good faith use of the disputed domain names.
c) The courier entrusted with delivering the notification of the complaint reported that the addresses furnished by Respondents do not seem to exist. Thus, it appears that Respondents have furnished false addresses at the time of registering the disputed domain names, in breach of their registration agreements, which is additional evidence of bad faith.
d) Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by Respondents that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of Complainant’s rights under trademark law.
In addition, the fact that Respondents, acting in concert or under common control, registered thirty-four disputed domain names containing Complainant’s marks shows that they have engaged in a pattern of registering disputed domain names containing third party marks, and that they have done so in order to prevent the owner of the mark from reflecting it in a corresponding domain name, which is evidence of bad faith under Policy paragraph 4(b)(ii).
For all of the above, the Panel concludes that the disputed domain names were registered and are being used in bad faith. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and , be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: March 13, 2019
1 The panel in Intesa Sanpaolo S.p.A. v. Santina Vindigni,WIPO Case No. D2016-2034, a case where the respondent resided in Italy, stated, “The mark INTESA SANPAOLO is a mark that can be defined as notorious and that the respondent could not ignore” (“Il marchio INTESA SANPAOLO è un marchio che può essere definito notorio e che la Resistente non poteva non conoscere.”)
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