WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. Steven Dowd Case No. DME2009-0003 1. The Parties
The Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Steven Dowd, London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Mesh Digital Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2009.
On March 16, 2009, the Center transmitted by email to Mesh Digital Limited a request for registrar verification in connection with the disputed domain name.
Between March 19, 2009 and March 25, 2009 the parties tried to find a possible settlement, without success.
A Supplemental Filing from the Complainant was filed with the Center on March 27, 2009 by e-mail.
On March 30, 2009, Mesh Digital Limited 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, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2009.
The Response was filed with the Center on April 22, 2009.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on May 7, 2009. 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.
The Respondent submitted a Supplemental Filing on May 19, 2009 in this proceeding. The Supplemental Filing was submitted after the Panel was appointed. Nevertheless the Panel has decided to consider the Respondent's Supplemental Filing, as it is unlikely to prejudice either party.
In this Supplemental Filing the Respondent indicates that he believes Jonathan Ive v. Harry Jones,WIPO Case No. D2009-0301 is very similar to the present case. The Respondent explains that in this case the panel ruled in favour of the respondent who registered a domain name incorporating the personal name of the complainant.
Actually, in the Jonathan Ive v. Harry Jones Case the panel found that the complainant had failed to establish the first element of the Policy, i.e. to establish he had trademark or service mark rights name which was the subject of the domain name registered by the respondent. In this case the panel did not discuss any other element of the Policy nor the question of the “commonly known by” defense. 4. Factual Background
The Complainant is an Italian banking group formed by the merger of Banca Intesa S.p.A. and SanPaolo IMI S.p.A. on January 1, 2007.
The Complainant is the owner of the following INTESA SANPAOLO trademarks including:
- International trademark registration n° 920896 INTESA SANPAOLO registered on March 7, 2007, extended to Montenegro, in classes 9, 16, 35, 36, 38, 41 and 42;
- International trademark registration n° 923982 INTESA SANPAOLO and device, registered on March 27, 2007, extended to Montenegro, in classes 9, 16, 35, 36, 38, 41 and 42;
- International trademark registration n° 924099 INTESA SANPAOLO and coloured device, registered on March 27, 2007, extended to Montenegro, in classes 9, 16, 35, 36, 38, 41 and 42;
- Community trademark registration n° 5301999 INTESA SANPAOLO, filed on September 8, 2006 and registered on June 18, 2007 in classes 35, 36 and 38;
- Community trademark registration n° 5421227 INTESA SANPAOLO and device, filed on October 27, 2006 and registered on September 25, 2007 in classes 9, 16, 35, 36, 38, 41 and 42;
- Community trademark registration n° 5421177 INTESA SANPAOLO and coloured device filed on October 27, 2006 and registered on November 5, 2007 in classes 9, 16, 35, 36, 38, 41 and 42.
Copies of the Certificates of registration and printouts from OHIM's official database were provided in an annex to the Complaint.
The Respondent registered the disputed domain name on August 21, 2008. The disputed domain name is connected to a parking page sponsoring, among others, banking and financial services. 5. Parties' Contentions A. Complainant
The Complainant considers that the disputed domain name is identical to the trademarks INTESA SANPAOLO in which it has rights.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name since:
- the disputed domain name does not correspond to a trademark registered in the name of the Respondent;
- the disputed domain name does not correspond to the Respondent's name and the Respondent is not commonly known as “Intesa Sanpaolo”;
- the Respondent does not make any fair or non-commercial use of the disputed domain name.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith and, more particularly, that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website because:
- the Respondent has registered a domain name that is identical to the Complainant trademarks, which indicates that the Respondent had knowledge of the Complainant's trademarks at the time of registration;
- the disputed domain name is not used for any bona fide offerings;
- the disputed domain name is connected to a website sponsoring banking and financial services and allowing access to the websites of the Complainant's competitors;
- the Respondent's sponsoring activity is being remunerated;
- the Respondent has registered the disputed domain name in order to resell or rent the same to the Complainant since at the top of the “www.” home-page, there is an announcement concerning detailed information about the domain name, which re-directs to a page containing instructions to contact the owner of the disputed domain name, stating that: “If you are interested in a possible purchase of this domain or would like to contact the owner, please fill in the following information and submit your message”. B. Respondent
The Respondent is technically in default since the due date for Response was April 20, 2009 and the Respondent did not file the informal Response with the Center until April 22, 2009.
Under the Rules, the admissibility of evidence is solely within the discretion of the Panel. The Respondent does not show any “exceptional cause” that excuses his late Response. Nevertheless, in the interest of giving both parties a full hearing, the Panel has considered all of the parties' submissions.
The Respondent claims that he did not act in bad faith registering the disputed domain name.
The Respondent argues that he is commonly known as “Intesasanpaolo” in his poker club. He explains that players in this club are commonly known by nicknames, some corresponding to banks they have worked for or have a connection to.
The Respondent states that he registered the disputed domain name intending to create a blog about his poker activity.
He contends that the Complainant had the opportunity to buy the disputed domain name during the sunrise period for “.me” domain names.
He also explains that he was naïve in connecting the disputed domain name to a parking page sponsoring banking and financial services.
Finally, the Respondent states that he never made any proactive approaches to the Complainant to sell the disputed domain name. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following:
(i) that the domain name registered by the respondent 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 respect of the domain name;
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it owns various INTESA SANPAOLO registered trademarks. The Panel finds that the disputed domain name is identical to the Complainant's INTESA SANPAOLO trademarks. It is well established under the Policy that the “.me” ccTLD can be ignored for the purposes of comparison under paragraph 4(a)(i) of the Policy.
The Complainant has therefore established the first element of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
First, the Panel notes that the fact that a domain name was not registered during the Sunrise period does not mean that trademark holders with potential rights in the domain name have waived those rights, nor that the domain name could be acquired by a member of the public to be used to trade off of the goodwill of the Complainant. Consequently, the fact that the Respondent registered the disputed domain name following the close of the Sunrise period does not per se confer any rights or legitimate interests to the Respondent.
Secondly, the Respondent states that he registered the disputed domain name intending to use it to document his personal poker activities. This intent does not confer rights or legitimate interests to the Respondent since this is not the current use of the disputed domain name and the Respondent has not provided evidence of any bona fide preparations to use the disputed domain name in this manner. The current use is neither a legitimate noncommercial nor a fair use as it involves sponsored links and therefore has a commercial purpose. In addition, there is no proven preparation to use the disputed domain name in connection with a bona fide offering of goods or services.
Third, the Respondent claims that he has been commonly known as Intesasanpaolo since it is his nickname related to his poker activities.
It is an established principle that the complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests and that once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name.
In this case, the Panel finds that the Complainant has made out a sufficient prima facie case. The disputed domain name is identical to the Complainant's INTESA SANPAOLO trademarks, and the Complainant has not authorized the Respondent to use its trademarks, whether in a domain name or otherwise. The Complainant and its trademarks are known in numerous countries around the world. In combination, the factors above-mentioned together with supporting document are sufficient to establish a prima facie case, and transfer to the Respondent the burden of proof under paragraph 4(a)(ii) of the Policy.
According to the approach followed by the panel in Banco Espirito Santo S.A. v. Bancovic,WIPO Case No. D2004-0890, “Since a ‘legitimate interest' is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has been ‘commonly known' by the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been ‘commonly known' by the domain name”. See also Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland,WIPO Case No. D2008-1025 and Red Bull GmbH v. Harold Gutch,WIPO Case No. D2000-0766, where the panel rejected the claim that respondent was known by the nickname “Red Bull” since childhood because respondent did not provide any evidence to support his claim.
To prove he is commonly known as Intesasanpaolo the Respondent provides only mere assertions except for two letters, received by e-mail, from presumed members of his poker club. The two letters are extremely similar (both in form and meaning), they are not signed and the Panel was not provided with any supporting documentation or method to check the identity of the authors or the veracity of the statements.
In previous UDRP cases, panels have considered the argument that a respondent was commonly known by a nickname, where the respondents have produced evidence of administrative or formal documents, documents from childhood, extracts from publications, web pages printouts, screenshots, e-mails or extracts from forum, history pages (see for instance AST Sportswear, Inc. v. Steven R. Hyken,WIPO Case No. D2001-1324 and Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596).
Consequently, the Panel finds that in order to establish that he was “commonly known” by the nickname Intesasanpaolo and invoke the circumstances referred to in Policy paragraph 4(c)(ii), the Respondent would need to have produced stronger evidence.
The Panel concludes that Respondent has failed to provide the substantial proof required to establish that “Intesasanpaolo” was his nickname and to prove he was commonly known by the disputed domain name under Policy paragraph 4(c)(ii).
Moreover, in the present case, the Respondent clearly declares he chose his nickname with reference to the Complainant's INTESA SANPAOLO trademarks. The Respondent explains that he chose this nickname because INTESA SANPAOLO is a well-known trademark in the world of financial business.
Thus, it would seem more likely that the disputed domain name does not correspond to a nickname the Respondent chose in good faith independently from the Complainant's trademark but on the contrary the Respondent chose the disputed domain name in order to take advantage of the goodwill with the Complainant's trademarks.
The Panel considers that such circumstances should by themselves prevent the Respondent from invoking the “commonly known by” defense.
Indeed, it seems to the Panel that the “commonly known by” defense demands the Respondent to demonstrate that by using a nickname and registering this nickname as a domain name his aim was not to directly benefit from the reputation or goodwill of a registered trademark.
The Panel finds therefore that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the Respondent was aware of Complainant's trademarks INTESA SANPAOLO at the time of registration.
Thus, the Panel finds that the circumstances establish that the disputed domain name was registered in bad faith.
The Panel further finds that Respondent's registration and use of the disputed domain name has been in bad faith based upon the fact that the disputed domain name leads to a website displaying sponsored links to, among others, the same kind of banking and financial services for which the trademarks INTESA SANPAOLO are registered and that the Respondent is making a commercial gain with this website. Moreover, some of the links on this website redirect Internet users to websites of the Complainant's competitors.
Such use of domain names has been found to be use in bad faith by previous UDRP panels.
Having found that the overall circumstances in this case establish Respondent's bad faith registration and use, the Panel concludes that the requirements of Policy paragraph 4(a)(iii) are fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Christiane Féral-Schuhl
Sole Panelist
Dated: May 22, 2009
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