WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. JimLim-BizDev

Case No. DCC2007-0001

 

1. The Parties

Complainant is Intesa Sanpaolo S.p.A., of Torino, Italy, represented by Studio Legale Perani, Milan, Italy.

Respondent is JimLim-BizDev, of United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <bancaintesa.cc> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2007. On March 23, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 23, 2007, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2007.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 15, 2007. 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 is a company engaged in the rendering of banking services resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two Italian banking groups, with legal seat in Torino, Italy.

The Respondent appears to be a natural person that according to the Whois information is resident in “JIMLIM-BIZ”, United States of America.

Complainant holds a large number of applications and registrations worldwide for trademarks, including the BANCA INTESA mark, which is registered before the OHIM, the Italian Trademark Office and before WIPO (as an International Trademark by the Madrid System). Among these trademarks, the following were informed by Complainant and not contested by Respondent:

Mark

Registration No.

Filing Date

Country

BANCA INTESA

818814

Dec 18, 1997

Italy

BANCA INTESA

779793

Mar 24, 1998

European Community

BANCA INTESA

831572

June 24, 2004 (Granting Date)

WIPO – International Trademark

 

5. Parties’ Contentions

A. Complainant

Complainant claims to be the leading Italian banking group and also one of the protagonists in the European financial arena. Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., the companies whose recent merger resulted in the creation of Complainant, were two of the top Italian banking groups. Banca Intesa was born as a result from the integration between Cariplo and Banco Ambrosiano Veneto. Banca Intesa had as from 2001 (after the merger with Banca Commerciale Italiana) over 60,000 employees and 4,000 branches and city offices worldwide. Sanpaolo IMI was born in 1998, after the merger between Banca San Paolo and Instituto Mobiliare Italiano. With the acquisition of Banco di Napoli and Gruppo Cardine, Sanpaolo IMI had nearly 44,000 employees and 3,200 branches and city offices worldwide.

Complainant claims that Intesa Sanpaolo is now the top banking group in the Euro zone, with a market capitalization of 70 billion Euro. The Group offers its services to approximately 12 million Italian customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with over 6 million customers. The international network is present in 34 countries, in particular in the Mediterranean area, in the United States of America, Russia, China and India.

Complainant alleges that its BANCA INTESA trademark is one of the most well-known trademarks in the banking and financial field.

Complainant claims that the domain name <bancaintesa.cc> exactly reproduces the trademark BANCA INTESA.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

(ii) that Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

The domain name <bancaintesa.cc> is identical to Complainant’s registered trademark BANCA INTESA. The ccTLD “.cc” designates the country Cocos (Keeling) Islands. However, no country code can be taken into consideration when judging confusing similarity between the domain name and a trademark.

Analogous conclusions considering the domain name identical to a mark and not taking into consideration the mere distinctiveness of the ccTLD can be found in several decisions, for example, F.Hoffmann-La Roche AG v. P-TCK41, WIPO Case No. DCC2006-0001; Red Bull GmbH v. ASTnA, WIPO Case No. DCC2004-0002 and AT&T v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001.

Also, the trademark of the Complainant is included in its entirety into the domain name under dispute. It is well-established that the incorporation in a domain name of a non-descriptive mark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant registered trademark.

In this sense, see decisions: Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249 and Microsoft Corporation v. Whois Privacy Protection Center / Lee Xongwei, WIPO Case No. D2005-0642.

An Internet user or consumer viewing the disputed domain name is likely to confuse it with Complainant’s trademark and can be misled to think that the disputed domain name is a sponsored or partner website, authorized by the Complainant.

Therefore, the Panel finds that the domain name <bancaintesa.cc> is identical to Complainant’s registered trademark BANCA INTESA and meets the first element of the Policy requirement.

B. Rights or Legitimate Interests

The registration of the disputed domain name occurred on February 26, 2001, which was after Complainant has already obtained its registrations for the trademark BANCA INTESA, suggesting that Respondent must have been aware of Complainant’s trademark at the time of registration and use of the said domain name.

Furthermore, examining Respondent’s web page it can be observed that Respondent does not run any business activity in connection with the disputed domain name and in such Web Page, which is a link farm, only posts a list of sponsored links. In this sense, the domain name <bancaintesa.cc> is not rightfully used by Respondent in connection with a bona fide offering of goods and services.

In addition, Complainant has never authorized Respondent to make use of trademark BANCA INTESA and there is no relationship between the parties.

Respondent has not replied to the Complaint and has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Accordingly, the Panel finds that Respondent has no right or legitimate interest in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy specifies certain non-exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the domain name in bad faith.

The Complainant’s trademark is widely-known and the Panel deems that Respondent was aware of Complainant’s rights regarding the trademark BANCA INTESA at the time of disputed domain name registration.

The mere addition of a country-specific extension to Complainant’s trademark is another evidence of bad faith as Respondent is clearly trying to lure Internet users which have an interest in Complainant’s activities.

The fact that Respondent web page hosts a list of sponsored links also show that Respondent intentionally uses the domain name <bancaintesa.cc> aiming to profit from Complainant’s renowned trademark by attracting Internet users.

The existence of bad faith in redirecting users to other sites that offers services and goods even if unrelated to Complainant’s ones in order to gain profit from its reputation has been affirmed by panelists in other cases, such as, ATT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 and Society for Human Resource Management v. Local Services INC., WIPO Case No. D2004-0127.

Although Complainant stated that the disputed domain name <bancaintesa.cc> is not connected to any websites, at the time that this decision is being rendered the Panel notes that the disputed domain name is being used as a link farm and in this sense it is being used in bad faith.

Also, the Respondent provided false contact information when registering the disputed domain name, as he failed to inform his correct address. As decided in Accor v. For Sale, WIPO Case No. D2003-1011, “a good faith registration and use of a domain name requires the full disclosure of all required information, such as a true and correct name and contact details. Providing or failing to correct false information and concealing one’s true identity can be deemed as evidence of bad faith”.

For the aforementioned reasons, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith. The Panel therefore concludes that the Complainant has established paragraph 4(a)(iii) of the Policy.

 

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 <bancaintesa.cc> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist

Dated: May 28, 2007