WIPO Domain Name Decision: D2006-0496

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Intesa S.p.A. v. Hilary Ammann

Case No. D2006-0496

1. The Parties

The Complainant is Banca Intesa S.p.A., Milan, Italy, represented by Studio Legale Perani, Italy.

The Respondent is Hilary Ammann, West Hills, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <intesaonline.info> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2006. On April 20, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 20, 2006, Tucows transmitted by email to the Center its verification response confirming that the 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 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2006. On April 28, 2006, the Center received a Response along with a communication from Ms. Hilary Ammann, which read as follows:

“Attached is my Response to your Complaint regarding domain name, INTESAONLINE.INFO. As I clearly state in my response, I have never heard of and I have never had any association with the registration of this domain name. Someone other than me is illegally using my name and home address in California to register this domain name.

I have no interest in this domain name. I am truly concerned as to how to remove my association with this domain name and I'd appreciate any advice from you as to how to do this.

I appreciate your prompt resolution to this matter. […]”

The Center appointed Pravin Anand as the sole panelist in this matter on May 12, 2006. 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

Banca Intesa is a leading Italian banking group and also one of the protagonists in the European financial arena. It was incorporated in 1998, as a result from the integration between Cariplo and Banca Ambrosiano Veneto. In 2001, Banca Commerciale italiana (known as “COMIT”) merged with Banca Intesa and the new entity was named INTESABCI. Since December 17, 2002, the Complainant has been named BANCA INTESA. The Complainant has more than 57,000 employees, 3,720 branches and city offices in Italy and all around the world and almost 13 million clients. It has acquired trademark registrations for BANCA INTESA and INTESA, among others:

a) BANCA INTESA: Community trademark registration n. 779793, application for which was filed on March 24, 1998 and granted on November 15, 1999, in connection with the products of class 9, 16 and the services of classes 36, 38, 41 and 42.

b) BANCA INTESA: Italian trademark registration n. 818814, application for which was filed on December 18, 1997 and granted on June 20, 2000, in connection with the products of classes 9, 16 and services of classes 36, 38, 41 and 42.

c) INTESA: Community trademark registration n. 2803773, application for which was filed on August 7, 2002. It also has a United States trademark registration n. 2803773, application for which was filed on November 17, 2002. The last one is protected in the same Country as the Respondent’s.

According to the registrar, Tucows, the registrant of record of the disputed domain name is one “Hilary Ammann”. The disputed domain name was registered on February 13, 2006.

4. Parties Contention

A. Complainant

The Complainant’s contentions are summarized briefly hereunder:

1. The Complainant has rights in the trademark BANCA INTESA and INTESA. Additionally, the domain name <intesaonline.info> is confusingly similar to the trademark in which the Complainant has rights. Moreover, the Respondent’s domain name is similar to the address for Banca Intesa’a official web site at “www.bancaintesa.it”, which is connected also to the domain name <intesaonline.it>.

2. The Respondent does not have any rights or legitimate interest in the domain name for the following reasons:

- The domain name does not correspond to a trademark registered in the name of Hilary Ammann.

- The Respondent seems to represent the organization “intesa online”. Actually there is no registered business name corresponding to “intesa online” in California, neither as a corporation, nor as a Limited Partnership/Limited liability Company. Therefore, it is evident that the Respondent has registered the name “intesa online” as “registrant organization” with misleading purposes, just in order to pretend to have a legitimate interest for the registration.

3. The domain names have been registered and are being used in bad faith for the following reasons:

- The Respondent has attempted to attract Internet users for commercial gain to its website, by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of the website.

- Even though the relevant web page is under construction, several WIPO UDRP decisions stated that, in particular circumstances, even the “passive holding” of a domain name may represent a registration and use in bad faith. The circumstances recognized in the decision Telstra Corporation Limited v. nuclear Marshmallows, WIPO Case No. D2000-0003 are also present here.

- It is evident, that the Respondent registered the disputed domain name with the purpose of diverting the Complainant’s legitimate customers to the Respondent’s website.

B. Respondent

Ms. Hillary Ammann submitted a Response stating that she has no association with the domain name in question. She claims having never heard of or registered the domain name <intesaonline.info>, and that someone has illegally used her name and home address to register the domain name.

6. Discussion and Findings

The Complainant has to prove each of the following elements:

1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

3) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Complainant has exclusive right in the trademark BANCA INTESA and INTESA. Moreover, the Respondent’s domain name is very similar to the address for Banca Intesa’s official website at “www.bancaintesa.it”, which is also connected to the domain name <intesaonline.it>, almost identical to the domain name <intesaonline.info>. Here, the sole difference being the presence of the suffix “online”, which is devoid of any distinctive power, internet users will pay little or no regard to the term “online” when comparing it to the Complainants trademark. The addition of a common term to a strong mark is generally insufficient to negate the likelihood of confusion with the mark. See United Feature Syndicate v. All Business Matters, WIPO Case No. D2000-1199. In fact, it is likely to strengthen the risk of confusion insofar, as the consumer may think that it constitutes a variation of the trademark BANCA INTESA owned by the Complainant. See Prada S.A v. Danielle Terraglia, WIPO Case No. D2004-0870.

Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name for the following reasons:

- The Complainant has a worldwide trademark watching service on the words BANCA INTESA and INTESA and no trademark covering the words BANCA INTESA or INTESA, in the name of the Respondent has been detected.

- Moreover, the domain name in question does not correspond to a trademark registered in the name of the Respondent.

- Lastly, from the evidence, the record suggest that the actual holder of the domain name does not intend to make a fair use of the domain name, without intent for commercial gain and is misleadingly diverting consumers. He seems to represent an organization “intesaonline”, when there is no registered business name corresponding to “intesa online” in California, neither as a corporation, nor as a Limited Partnership/ Limited Liability Company.

Finally, the Panel notes that the case file supports a finding that the disputed domain name has been registered under a false identity. Under the circumstances, the Panel finds that the second element of the Policy has been met.

C. Registered or used in bad faith

The Complainant has advanced grounds for the Panel to ascertain that the disputed domain name is registered and is being used in bad faith:

- It has been contended by the Complainant that the domain name at issue was registered and is being used in bad faith to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the same website.

- Even though the domain name <intesaonline.info> is currently not connected to any web site (as the relative web page is under construction), even the “passive holding” may represent a registration and use in bad faith under particular circumstances which are as follows:

a) The complainant’s trademark has a strong reputation and is widely know.

b) The respondent has provided no evidence of any actual or contemplated good faith use by it of the domain name.

c) The respondent has taken active steps to conceal its true identity.

d) The respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement.

e) It is not possible to conceive of any plausible actual or contemplated active use of domain name by the Respondent that would not be illegitimate.

See, Telstra Corporation limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel considers that these circumstances are present in this case.

Further, it appears that the person in control of the disputed domain name has illegally used Ms. Ammann’s name and address to register the domain name <intesaonline.info>. A persons deliberate concealment of it’s identity and contact information may in itself indicate “bad faith registration” of the domain name. See TTT Moneycorp. v. Diverse Communications, WIPO Case No. D2001-0725.

In light of the above-mentioned circumstances, as well as the fact that the true identity of the Respondent is unknown, the Panel finds that the domain name was registered and is being used in bad faith.

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, <intesaonline.info> be transferred to the Complainant.

Pravin Anand
Sole Panelist

Dated: June 3, 2006