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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Hu Tao / Whoisguard Protected, Whoisguard, Inc.

Case No. D2014-0333

1. The Parties

The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.

The Respondent is Hu Tao of Hu Nan, China / Whoisguard Protected, Whoisguard, Inc. of Panama

2. The Domain Name and Registrar

The disputed domain name <intesasanpaolp.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2014. On March 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 10, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 14, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 18, 2014.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2014.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 1, 2014. 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 the leading Italian banking group Intesa Sanpaolo, resulting from the merger between Banco Intesa S.p.A. and Sanpaolo IMI S.p.A. in 2007.

Since 2007, the Complainant owns several registrations for the trademark INTESA SANPAOLO in the United States and in the European Union.

The Complainant also owns multiple domain names comprising the INTESA SANPAOLO trademark, including <intesasanpaolo.com>, <intesasanpaolo.org>, <intesasampaolo.net> and <intesasanpaolo.eu>. etc.

The disputed domain name was registered on August 24, 2013.

The Panel accessed the website displayed at the disputed domain name on May 9, 2014, and there was a pay-per-click page with several links for financial services.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights. The disputed domain name reproduces the Complainant’s trademark INTESA SANPAOLO. The only difference is the replacement of the letter “o” by the letter “p”, a minor variation of the cited brand.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been authorized by the Complainant to use the INTESA SANPAOLO trademark. The disputed domain name does not reflect any of the Respondent’s business names. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

(iii) The Respondent registered and is using the disputed domain name in bad faith. The Complainant’s trademark INTESA SANPAOLO is distinctive and well known all around the world. The registration of a confusingly similar domain name by the Respondent indicates his knowledge of the Complainant’s trademark. The disputed domain name has not been used for any bona fide offerings. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademark. The disputed domain name is connected to a website sponsoring other banking and financial services. Therefore, the Respondent has registered and is using the disputed domain name in order to intentionally divert traffic away from the Complainant’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel has no doubt that “intesa sanpaolo” is a term directly connected with the Complainant’s activities in the financial services in Italy and abroad.

Annex D to the Complaint demonstrates several registrations of the INTESA SANPAOLO trademark, obtained by the Complainant before the registration of the disputed domain name.

The disputed domain name consists of a misspelling of the Complainant’s trademark INTESA SANPAOLO. This practice is commonly called typosquatting, a kind of cybersquatting in which a respondent registers a domain name in order to take advantage of typing errors made by Internet users seeking the complainant’s commercial website (see CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201).

The addition of a generic top-level domain name extension “.com” is typically irrelevant when determining whether a disputed domain name is confusingly similar to a registered trademark.

As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:

(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name; or

(iii) The respondent is 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 at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is published at the disputed domain name hosts pay-per-click links to competitor’s websites.

The Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or

(ii) The respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location

When the disputed domain name was registered in August 2013, the trademark INTESA SANPAOLO was already associated with the Complainant’s activities in the financial business. Therefore, it is not feasible to this Panel that the Respondent could have been unaware of the Complainant’s reputation.

The disputed domain name is being used for pay-per-click landing page, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:

(i) created a likelihood of confusion with the Complainant’s trademark;

(ii) most likely obtained click-through revenue from this practice; and

(iii) deprived the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promoted products offered by the Complainant’s competitors.

In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.

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 <intesasanpaolp.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: May 9, 2014

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