The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Reza Bahadori of Khouzestan, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with .ir domain name registration authority (“IRNIC”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2015. On September 1, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Disputed Domain Name. On September 2, 2015, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on September 9, 2015.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 September 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2015. The Center received communications from the Respondent on September 15, 2015, September 19, 2015 and September 28, 2015. On October 4, 2015, the Respondent requested an extension of the due date for filing a Response. The Response due date was extended to October 9, 2015. The Respondent did not file a formal response.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 4, 2015. 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 well-known Italian bank, which was formed on January 1, 2007 following the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two well-known Italian banking groups. The Complainant holds registered trade mark rights in the INTESA SANPAOLO mark in various jurisdictions through a number of International registrations, including International Registration 920896 INTESA SANPAOLO, registered March 7, 2007, and also owns and uses numerous domain names that incorporate the INTESA SANPAOLO mark.
The Respondent is an individual based in the Islamic Republic of Iran. The Disputed Domain Name was registered by the Respondent on April 10, 2015, and is currently inactive. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Complainant is the registered owner of the International INTESA SANPAOLO trade marks since March 2007, which also cover the Islamic Republic of Iran (where the Respondent is based). The Complainant has registered multiple domain names incorporating its INTESA SANPAOLO mark.
(b) The Disputed Domain Name is identical to the Complainant’s INTESA SANPAOLO trade mark.
(c) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorized the Respondent to use the Disputed Domain Name, and the Respondent is in no way related to the Complainant. The Respondent’s name also does not correspond to the Disputed Domain Name, and there is no evidence that the Respondent is commonly known by the name “intesasanpaolo”.
(d) The Respondent registered the Disputed Domain Name primarily for the purposes of either: (i) selling it for valuable consideration; or (ii) using it for “phishing” purposes in order to commit fraud. The Disputed Domain Name is not being actively used, and is being passively held. Passive holding of a Disputed Domain Name, knowing that it infringes another party’s trade mark rights is evidence of bad faith. As the Complainant’s INTESA SANPAOLO mark is well known, there is no conceivable use that could be made of the Disputed Domain Name that would not amount to an infringement of the Complainant’s trade mark rights.
(e) On May 7, 2015, the Complainant’s legal representative had sent a cease-and-desist letter to the Respondent, requesting the voluntary transfer of the Disputed Domain Name. The Respondent initially agreed to transfer the Disputed Domain Name at no cost, but later changed his mind and asked the Complainant to “make an offer”. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The Panel notes that the Respondent sent an email to the Center on September 15, 2015 in the Persian language and in English stating “I can translate your documents please send your documents at Persian languages [sic]. However, the language of these proceedings (as confirmed by the Registrar) is English. On September 19, 2015, the Respondent sent another email stating that he would “answer [to the Center] as soon as possible”. On September 28, 2015, the Respondent also sent an email to the Center and the Complainant stating that he “donat have any Property from this domain But just you pay 500$ to me for registration this domain because i pay money for register this domain…[sic]”. The Panel notes the Respondent did not deny any of the contentions in the Complaint in his September 28, 2015 email.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).1 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 or is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the INTESA SANPAOLO trade mark, based on its International registrations also covering the Islamic Republic of Iran. The Disputed Domain Name incorporates the Complainant’s INTESA SANPAOLO mark in its entirety.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the country code Top-Level Domain (“ccTLD”) extension “.ir” may be disregarded (see Compagnie Générale des Etablissements Michelin v. Saeed Karimi,WIPO Case No. DIR2011-0001; and Kaspersky Lab Zao v. BaniSaz Co.,WIPO Case No. DIR2010-0004).
As such, the Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s INTESA SANPAOLO mark.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Shutterstock, Inc. v. Rahele Mahdavi,WIPO Case No. DIR2014-0004; and Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Hessamaldin Varposjty,WIPO Case No. DIR2014-0001.
The Panel accepts that the Complainant has not authorised the Respondent to use the INTESA SANPAOLO mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the INTESA SANPAOLO mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(1) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(2) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name.
The Disputed Domain Name does not currently resolve to an active website. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services or for noncommercial or fair use purposes.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith
It is generally recognised that the passive holding of a domain name does not as such prevent a finding of bad faith use. As stated in Giorgio Armani S.p.A., Milan, Swiss Branch Mendrisio v. Hessamaldin Varposjty,WIPO Case No. DIR2014-0001, “[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”.
In this case, the Panel finds that the passive holding of the Disputed Domain Name by the Respondent amounts to bad faith use and registration, in light of the following:
(a) the Complainant’s INTESA SANPAOLO trade mark is well-known, and has been in use since at least 2007;
(b) the Respondent has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name, or any explanation as to the reasons why he chose to register a domain name that incorporates “intesasanpaolo”, even after being given an extended time to file a Response;
(c) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name’s confusing similarity to the Complainant’s INTESA SANPAOLO mark and to the Complainant’s registered domain names would inevitably result in misleading Internet users into believing that the Disputed Domain Name is associated with the Complainant.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Gabriela Kennedy
Sole Panelist
Date: November 16, 2015
1 The Panel, noting the similarities between the .irDRP and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), has cited authorities decided under the UDRP where appropriate
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