The Complainant is Intesa Sanpaolo S.p.A of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Vasilii Yusikov of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2018. On December 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed an amendment to the Complaint and requested English to be the language of the proceedings on December 10, 2018.
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 December 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on January 10, 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
The Complainant is one of the leading Italian banking groups. Intesa Sanpaolo is the company resulting from the merger of two top Italian banking groups Banca Intesa and Sanpaolo effective as of January 1, 2007. The Complainant supports its corporate banking customers in 25 countries including the Russian Federation. The Complainant owns a number of INTESA SANPAOLO trademark registration, including:
- International trademark registration No. 920869 registered on March 7, 2007;
- European Union trademark registration No. 005301999 registered on June 18, 2007.
The Complainant operates via number of domain names capturing its trademark, including .
The disputed domain name was registered on March 21, 2018 and resolves to inactive web-page. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name reproduces the Complainant’s trademark adding numbers, which does not preclude the confusing similarity.
The Respondent has no rights or legitimate interest in respect to the disputed domain name. The Respondent has not been authorized or licensed by the Complainant to use the disputed domain name. The Respondent is not commonly known by the disputed domain name. There is no fair or noncommercial use of the disputed domain name.
The disputed domain name was registered and is used in bad faith. The Complainant’s trademark is well-known and the Respondent knew of the trademark while registering the disputed domain name. The disputed domain name is not used for any bona fide offering. The disputed domain name was registered primarily to sell, rent or otherwise to transfer it to the Complainant or its competitor for valuable consideration in excess of the costs spent for its registration. Passive holding of the disputed domain name constitutes bad faith, since the captured Complainant’s trademark is well-known and there is no conceivable use that could be made of it that would not amount to an infringement of the Complainant’s trademark rights. The Respondent ignored the Complainant’s cease and desist letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances”. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
The Complainant requested that the language of the proceedings be English, since while the Complainant is Italian company and the Respondent is a Russian private person, then English as an international language would be fair choice for the proceedings.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. B. Identical or Confusingly Similar
The generic Top-Level Domain (“gTLD”) “.pw” in the disputed domain name is viewed as a standard registration requirement and is disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered confusingly similar to that mark for purposes of the UDRP.
According to section 1.8 of the WIPO Overview 3.0 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 disputed domain name includes the Complainant’s trademark INTESA SANPAOLO, adding the apparently meaningless “231627”, which does not preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
Considering the above the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875).
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel considers that at the time of the registration of the disputed domain name the Respondent knew, or at least should have known about the existence of the Complainant’s prior famous trademark, which confirms bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the failure of the Respondent to address the Complainant’s cease and desist letter, (iv) the Respondent’s concealing its identity while registering the disputed domain name, and (v) the implausibility of any good faith use to which the disputed domain name may be put.
Considering the above the Panel finds on balance that the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case 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.
Taras Kyslyy
Sole Panelist
Date: January 17, 2019
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