Complainant is Intesa Sanpaolo S.p.A., Italy, represented by Studio Legale Perani, Italy.
Respondent is Intesa Sanpaolo s.p.a., Argentina.
The disputed domain name <intesatrading.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2009. On February 17, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com. a request for registrar verification in connection with the domain name at issue. On February 20, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a publicdomainregistry.com. transmitted by email to the Center its verification response confirming that 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 February 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 20, 2009.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 27, 2009. 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.
Complainant is the holder, amongst others, of the following trademark registrations in relation to banking and financial services:
|
TRADEMARK |
REG. No. |
Class (Int'l) |
DATE OF REGISTRATION |
COUNTRY |
|
INTESA |
002803773 |
36 |
17/11/2003 |
EU |
|
INTESA TRADE |
001282201 |
36, 38, 42 |
29/09/2000 |
EU |
|
INTESA TRADE & device |
Application No. 005057369 |
36, 38 |
04/05/2006 |
EU |
The disputed domain name <intesatrading.com> was registered on April 15, 2008.
The Complainant argues the following:
- That the disputed domain name is confusingly similar to Complainant's trademarks INTESA, INTESA TRADE and trademark application INTESA TRADE & device.
- That the disputed domain name incorporates Complainant's trademark INTESA and is almost identical to the trademark INTESA TRADE.
- That the disputed domain name is not connected to any active Web site.
- That Respondent registered the disputed domain name after the dates of registration of trademarks INTESA and INTESA TRADING.
- That Respondent's name is Intesa Sanpaolo s.p.a., but that there is no relationship between Complainant and Respondent and that Complainant has never licensed, permitted or authorized the use and registration of its trademarks to Respondent.
- That Complainant has looked for records with respect to the existence of another company registered under the name Intesa Sanpaolo s.p.a., with no success. That Complainant concludes that therefore Respondent has registered the domain name using a false name.
- That Respondent is not using thedisputed domain name in connection with a bona fide offering goods and services or fair use of said domain name.
- That Complainant alleges that Respondent has no rights or legitimate interests under the Policy.
- That Respondent registered the domain name under a false name and contact information.
- That under the doctrine of passive holding, the submission of false information by Respondent is considered a circumstance evidencing bad faith in the registration and use of domain name. That providing false contact information violates paragraph 2 of the Policy.
- That the mark INTESA is a famous mark in the banking and financial field. Respondent registered the contested domain name under a false name for the only purpose of exploiting the reputation of the trademark INTESA and INTESA TRADE.
- That it is likely that Respondent registered the disputed domain name with the purpose to induce and divert Complainant's legitimate consumers to Respondent's Web site.
- That “phishing” is a criminal fraudulent activity.
Respondent did not reply to Complainant's contentions.
In accordance with the Policy, paragraph 4(a), Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceeding, Complainant must prove that each three of these elements are present.
In this case, as Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the reasonable allegations of the Complaint. (See Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
The disputed domain name <intesatrading.com> is confusingly similar to Complainant's trademark INTESA because said domain name entirely incorporates Complainant's mark. The only variations are the addition of the term “trading” and the generic top-level domain (gTLD) “.com”.
Numerous WIPO UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example: Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002, and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802.
The addition of generic terms (e.g. “trading”) to a trademark, within a domain name, does not add distinctiveness to said name, and does not alter the fact that such domain name is confusingly similar to the trademark (See Bank of America v. Vox Consult, NAF Case No. FA102492; and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; See also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
Similarly, the disputed domain name <intesatrading.com> is also confusingly similar to Complainant's trademarks INTESA TRADE and INTESA TRADE & design The only variations are the substitution of the term “trade” for the term “trading”, and the addition of the genric top-level domain (gTLD) “.com”.
The first requirement of the Policy has been met.
The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).
The case file does not contain evidence showing that Respondent has used the contested domain name in connection with a bona fide offering of goods or services.
No evidence has been found to show that Respondent has been commonly known by the domain name.
Complainant has not granted any authorization to Respondent to register the disputed domain name (See Société Air France v. Bing G Glu, WIPO Case No. D2006-0834).
The fact that Respondent chose the well publicized mark INTESA as the main element of its domain name <intesatrading.com>, leads this Panel to conclude that Respondent did not have rights or legitimate interests when the disputed domain name was registered. See Royal Bank of Scotland Group v. Stealth Commerce a.k.a Telmex Management Services, Inc., WIPO Case No. D2002-0155.
The Panel finds that registering the name of a well publicized financial institution cannot suggest a legitimate intent. Respondent's intent is more likely to misleadingly divert consumers.
Considering that this diversion practice is taking place in the banking realm, Respondent's conduct is aggravated. The Panel finds that domain names like this one are normally used for phishing practices, which are highly harmful to bank customers and the financial system as a whole. The Panel also notes that the website with the disputed domain name currently displays sponsored links.
The second requirement of the Policy has been met.
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(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 website 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 website or location or of a product or service on your website or location.”
It is clear to this Panel that Respondent has used the domain name at hand as a tool for phishing. See National Association of Software and Service Companies v. Ajay Sood. (2005) F.S.R. 38.; Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228; Halifax plc. v. Sontaja Sunducl, WIPO Case No. D2004-0237; CarrerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251.
The fact that Respondent chose the trademark of a known financial institution is no coincidence. Given the volume of clients and the affluence of users that banks have on the Internet, they constitute a primary target for predators seeking to take advantage of the personal information and/or bank accounts of Internauts. The Panel finds the intent of Respondent is clear also in light of the use of the website at the disputed domain name to display sponsored links. The circumstances of this case fall within paragraph 4(b)(iv) of the Policy.
Moreover, the fact that Respondent has intentionally concealed his identity when registering the disputed domain name, and has maintained said false identity in the WhoIs database, is suggestive of Respondent's bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Having analyzed the facts of this case, particularly that the disputed domain name fully incorporates the trademark of a financial entity, that Respondent registered the domain name by using a false name, that Respondent has hidden his identity, that Respondent did not file a Response, and that domain names like <intesatrading.com> are in the Panel's view highly dangerous not only to Complainant, but also to on-line bank users and Internauts in general, as well as the global banking system, it is clear that no legitimate or bona fide use can be attributed to the disputed domain name.
The third requirement of the Policy has been met.
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 <intesatrading.com> be transferred to Complainant.
Kiyoshi I. Tsuru
Sole Panelist
Dated: April 16, 2009