WIPO Domain Name Decision: D2006-0509

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Intesa S.p.A., v. Fahri Dogan Bato

Case No. D2006-0509

1. The Parties

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

The Respondent is Fahri Dogan Bato, Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <bankintesa.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2006. On April 24, 2006, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On May 5, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com 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 (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 May 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2006. The Response was filed with the Center on May 28, 2006.

The Center appointed Clive N. A. Trotman as the sole panelist in this matter on June 16, 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

The facts related are based on the Complainant’s submission.

Banca Intesa is a leading Italian banking group. It was incorporated in 1998 following the integration of Cariplo and Banco Ambrosiano Veneto. In 2001, Banca Commerciale Italiana (“COMIT”) merged with Banca Intesa and the new entity was named INTESABCI. On December 17, 2002, the Complainant was renamed BANCA INTESA. It has more than 57,000 employees, 3,720 branches and almost 13 million clients.

Banca Intesa is the owner of several trademark registrations and applications for “BANCA INTESA” and “INTESA”, including particularly:

Italian trademark registration No. 818814 “BANCA INTESA”, filed on December 18, 1997 and granted on June 20, 2000, in connection with the products of classes 9, 16 and the services of classes 36, 38, 41 and 42;

Community trademark registration No. 779793 “BANCA INTESA”, filed on March 24,1998 and granted on November 15, 1999, in connection with the products of classes 9, 16 and the services of classes 36, 38, 41 and 42;

Community trademark registration No. 2803773 “INTESA”, filed on August 7, 2002 and granted on November 17, 2003, in connection with the services of class 36;

United States trademark registration No. 2894502 “INTESA”, filed on April 23, 2003 and granted on October 19, 2004, in connection with the services of class 36;

International trademark registration, extended to Turkey, No. 831572 “BANCA INTESA & device”, granted on June 24, 2004, in connection with class 36;

International trademark registration, extended to Turkey, No. 832016 “BANCA INTESA & device”, granted on June 24, 2004, in connection with class 36;

International trademark registration, extended to Turkey, No. 793367 “INTESA”, granted on September 4, 2002, in connection with class 36.

The disputed domain name appears to have been registered by the Respondent on December 21, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

The disputed domain name <bankintesa.com> is confusingly similar to the trademarks BANCA INTESA and INTESA in which the Complainant has rights. The sole difference is represented by the use of the common word “bank”, which is the English term for BANCA. The term INTESA is to be considered the most relevant part for the comparison. The Respondent’s domain name is almost identical to the address of Banca Intesa’s official web site at <bancaintesa.it> and related domain names such as <bancaintesa.com> and <bancaintesa.net>.

The Respondent has no rights or legitimate interests in respect of the domain name. The domain name does not correspond to a business name of the Respondent or to a trademark registered in the name of Fahri Dogan Bato. The Respondent possesses no trademark in the words BANCA INTESA or INTESA and there is no evidence that Fahri Dogan Bato is commonly known as “bankintesa”.

The Respondent has acted in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site. The name “BANKINTESA-COM-DOM” appearing in the DotRegistrar Whois database does not correspond to any real company or organization and is therefore false and a pretense to attempt to legitimise the domain name. The domain name is now passively held and there can be no plausible actual or contemplated use of it that would not be illegitimate. The Complainant believes that the domain name could be used for “phishing”, i.e., the fraudulent collection of customer account details.

The Complainant contends that registration of the domain name is abusive and requests that it be transferred to the Complainant.

B. Respondent

The Respondent contends that:

The Respondent acknowledges that the Complainant holds trademarks including the words BANCA and INTESA in Turkey, but does not hold the trademark BANK INTESA. Thus, the Respondent’s domain name <bankintesa.com> is not identical to any trademark of the Complainant.

In the context of a legitimate interest in the disputed domain name, the Respondent replies that the Complainant itself has no trademark registration in the name BANKINTESA. The Respondent cites as precedent and summarises Koç Holdings A.S. v. MarketWeb A.S., WIPO Case No. D2000-1764, in which a complainant’s application for a Turkish trademark registration was still pending, and which was decided in favour of that respondent.

The Respondent contends that domain names cannot be considered as trademarks, and points out that the Complainant and the Respondent are from different countries and in different areas of business.

In respect of the Complainant’s claim that the Respondent has acted in bad faith, the Respondent contends that he has chosen the disputed domain name for a real estate agency business. According to the Turkish Patent Office the Italian language is the most popular language after Turkish for trademark registrations in Turkey, and since the Italian language fits with the pronunciation of Turkish, Italian words are chosen as trademarks.

The Respondent contends that he has no intention of using the domain name for sale, renting or unfair competition with the Complainant or in bad faith.

6. Discussion and Findings

Jurisdiction of the Administrative Panel

Paragraph 4(a) of the Policy states:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

A. Whether the Domain Name is Identical or Confusingly Similar to a Trademark

The Complainant has provided documentary evidence of having held rights in and used the trademark “BANCA INTESA” since at least as early as June 20, 2000, having made application on December 18, 1997. This trademark is not, however, identical to the disputed domain name <bankintesa.com>. At issue is whether the operative part of the disputed domain name, i.e., “bankintesa”, is confusingly similar to “BANCA INTESA”, it being well established in precedent that the gTLD identifier “.com” is of no consequence.

The word for a bank is similar in many languages, the more so phonetically. The word is also highly generic and of little distinctive value. The focus therefore is on the distinctive “INTESA” component of the Complainant’s trademark and the “intesa” component of the domain name, which clearly are identical.

The similarity or otherwise of the complete names “BANCA INTESA” and “bankintesa” is a matter of judgment. In balancing the probabilities the Panel finds it more probable than not that a significant proportion of people would be confused into thinking the two entities were related or the same. The Panel is mindful of guidance to be found in the judgment in GoTO.com, Inc., v. Walt Disney Co., (202 F.3d 1199, 1205-1206 (9th Cir. 2000)): “Similarity is adjudged in terms of appearance, sound, and meaning.” Furthermore, “Similarities are weighed more than differences.” In the present case the two names are similar in appearance, and indisputably so in respect of the “INTESA” component; they may often sound similar phonetically, particularly since vowels marking the end of the first word and beginning of the second word may be run together; and the two names project the same ultimate meaning. These similarities weigh more heavily than the differences. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Whether the Respondent has Rights or Legitimate Interests in Respect of the Domain Name

The Complainant is required to prove that the Respondent has no right or legitimate interest in respect of the disputed domain name. The Complainant’s prima facie case is a statement that the Respondent has no rights to the name, supported by contentions that the Respondent owns no such trademark and is not known by any such name; and that the reference in the registration database to the name “BANKINTESA-COM-DOM” is spurious.

In the terms of paragraph 4(c) of the Policy the Respondent is provided with the opportunity to demonstrate that he has rights to the domain name, including but not limited to its use in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the domain name or similar, or that use of the domain name has been non-commercial, legitimate or fair.

The thrust of the Respondent’s submission is to claim that the Complainant does not own the trademark “BANKINTESA”, that a domain name is not a trademark, and that the Respondent and Complainant are in different countries and areas of business. The Respondent has not responded with any refutation of the Complainant’s assertions or attempted in any way to establish his own rights or legitimate interests in respect of the domain name within the terms of the Policy. The case of Koç Holdings A.S. v. MarketWeb A.S., WIPO Case No. D2000-1764, cited by the Respondent, is unhelpful to him because it deals with the problem of a complainant whose trademark is unregistered and in doubt, whereas in the present case the Complainant has strongly protected trademarks. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.

C. Whether the Domain Name Has Been Registered and Is Being Used in Bad Faith

In accordance with paragraph 4(a)(iii) of the Policy the Complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that shall be evidence of the registration and use of a domain name in bad faith, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Whilst the Complainant may have good reason to suspect that the Respondent has nefarious intent within the meaning of some or all of (i) to (iv) above, direct evidence within the precise wording of those criteria is insubstantial. The Complainant says, “The website created by the Respondent, in fact, is making internet users (including the Complainant’s clients) think that Banca Intesa is about to open a new website ...”, except that no evidence about the Respondent’s website is provided, and the Complainant also says that the domain name is not in use.

The four circumstances listed in paragraph 4(b) of the Policy are, however, without limitation and bad faith is clear on the facts as a whole. The Respondent has registered a domain name that, as found above, is confusingly similar to the Complainant’s trademark, adopts the distinctive and apparently unique name “INTESA”, and by attaching it to the word “bank”, associates it with the Complainant’s business category. The Respondent is not a bank and has no connection with banking business but has appropriated the Complainant’s distinctive trademark “INTESA” as “BANKINTESA-COM-DOM” in a misleading registration document. The Respondent’s claimed intention to use the name of an existing bank for a real estate business is, in the most indulgent view, incredible. No plausible reason is evident as to why the Respondent should have registered the disputed domain name unless it is to make some non-legitimate use of it, and thereby of the Complainant’s trademark.

It may reasonably be concluded that the Respondent was aware of the Complainant’s trademark and aware that it was a bank. Registration of a well known trademark of which the Respondent must have been aware is of itself sufficient to amount to bad faith (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849). The Panel finds registration in bad faith proven.

The Complainant states that the disputed domain name is not now in use. The condition required in paragraph 4(a)(iii) of the Policy, that the domain name “is being used” in bad faith, is nevertheless met. The early definitive decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, provided guidance that has been widely adopted in cases where a domain name is held passively: “...the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.”

In summary, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy; the Respondent does not have rights or legitimate interests in the domain name in the terms of paragraph 4(a)(ii) of the Policy; and the Respondent has registered and is using the domain name in bad faith in the terms of paragraph 4(a)(iii) of the Policy. The Complainant has proven the three elements required by paragraph 4(a) of the Policy and accordingly the Administrative Panel decides for the Complainant.

7. Decision

The decision of the Administrative Panel is that the disputed domain name <bankintesa.com> is confusingly similar to the trademarks “BANCA INTESA” and “INTESA” in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith. In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bankintesa.com> be transferred to the Complainant.

Clive N. A. Trotman
Sole Panelist

Dated: June 30, 2006