The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Huang You Bao / Huang You Bao of Xiamen, Fujian, China.
The Disputed Domain Name <intesasanpaolo.top> (the “Disputed Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 13, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On April 15, 2015, the Complainant submitted its request that English be the language of the proceeding by email to the Center. The Respondent did not comment within the specified due date.
The Center verified that 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 in English and Chinese, and the proceeding commenced on April 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2015.
The Center appointed Kar Liang Soh as the sole panelist in this matter on May 19, 2015. 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.
The Complainant, Intesa Sanpaolo S.p.A., is a leading Italian banking group with a market capitalization exceeding EUR 52.9 billion. The Complainant has more than 5,000 branches around the world, and serves approximately 11 million customers in Italy and over 8.4 million customers in Central-Eastern Europe. The Complainant also provides retail, corporate, and wealth management services to corporate customers in at least 29 countries, including the United States of America, the Russian Federation, China, and India.
The Complainant uses the INTESA SANPAOLO trademark in multiple countries, in connection with classes 9, 16, 35, 36, 38, 41, and 42. It is the owner of the following international trademark registrations (all designating China among other jurisdictions):
Trademark | International Registration No. |
|
INTESA SANPAOLO |
920896 |
|
INTESA SANPAOLO & DEVICE (in black and white) |
923982 |
|
INTESA SANPAOLO & DEVICE (in colour) |
924099 |
In addition, the Complainant is the owner of multiple domain names bearing the INTESA SANPAOLO trademark, such as <intesasanpaolo.com>, <intesasanpaolo.org>, <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.net>, <intesasanpaolo.biz>, <intesa-sanpaolo.com>, <intesasanpaolo.org>, <intesa-sanpaolo.eu>, <intesa-sanpaolo.info>, <intesa-sanpaolo.net> and <intesasanpaolo.biz>.
The Respondent appears to be an individual. Not much is known about the Respondent beyond the WhoIs record of the Disputed Domain Name.
The Disputed Domain Name was registered on January 12, 2015. As at June 12, 2015, the Disputed Domain Name did not resolve to any particular webpage, with an error message being returned stating that a webpage was unavailable.
The Complainant contends that:
(a) The Disputed Domain Name is identical to the INTESA SANPAOLO trademark. There are no differences between the Disputed Domain Name and the Complainant’s INTESA SANPAOLO trademark, as the latter is entirely reproduced in the Disputed Domain Name;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent has nothing to do with the Complainant. The Complainant has neither authorized nor licensed the Respondent to use the Disputed Domain Name. The Respondent’s name does not correspond to the Disputed Domain Name, and the Respondent is commonly known by the Disputed Domain Name. There is no evidence that the Respondent is making a fair or noncommercial use of the Disputed Domain Name; and
(c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration, in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name. The Respondent’s communication following the Complainant’s cease and desist letter suggested the possibility of a “friendly solution” which is clearly an offer to sell the Disputed Domain Name. The INTESA SANPAOLO trademark is renowned and the present case constitutes passive holding of the Disputed Domain Name and there is no conceivable use that could be made of the Disputed Domain Name that would not amount to an infringement of the Complainant’s trademark rights.
The Respondent did not reply to the Complainant’s contentions.
As the language of the Registration Agreement is Chinese, the default language of the proceeding should be Chinese. However, the Panel is empowered under paragraph 11(a) of the Rules to determine otherwise having regard to the circumstances.
The Complainant has requested that English be adopted as the language of the proceeding. Having considered the circumstances, the Panel decides that English be adopted as the language of the proceeding. In making this decision, the Panel took into account the following factors:
(a) The Complaint has already been submitted in English;
(b) The Respondent did not object to the Complainant’s request that English be adopted as the language of the proceeding;
(c) The Respondent has chosen not to participate in the proceeding by not submitting a Response;
(d) No procedural benefit would be gained by insisting that the Complaint be translated into Chinese and resubmitted;
(e) Requiring translation of the Complaint into Chinese at this stage would lead to unnecessary delay in the proceeding;
(f) Online translation tools (such as Google Translate and Baidu Online Translation) are readily available, and the Respondent would be able to get a fair idea of the basis of the Complaint by using such tools;
(g) The Respondent appears to have some familiarity with the English language, given that he was able to provide an articulate response (albeit in Chinese) to the Complainant’s written communications (which were in English), in relation to the Complainant’s cease and desist letter; and
(h) The Panel is bilingual, and would be able to deal with a Response in Chinese. However, no Response was filed in the present instance.
The Complainant has the burden of showing that the Respondent has failed to meet the requirements of paragraph 4(a) of the Policy. Paragraph 4(a) lays down the requirements as follows:
(a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) The Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has shown that it is the owner of trademark registrations for the INTESA SANPAOLO trademark in various jurisdictions, including China. In view of these registrations, the Complainant clearly has rights in the INTESA SANPAOLO trademark.
The Disputed Domain Name incorporates the INTESA SANPAOLO trademark in its entirety. The omission of a space between “intesa” and “sanpaolo” in the Disputed Domain Name is insufficient to distinguish the Disputed Domain Name from the INTESA SANPAOLO trademark (for example, see The Ian Anderson Group of Companies Ltd v. Denny Hammerton & I Schembs, WIPO Case No. D2000-0475). Further, the generic Top-Level Domain (gTLD) “.top” does not affect the assessment of confusing similarity for the purposes of paragraph 4(a)(i) of the Policy (for example, see Ice House America, LLC v. Ice Igloo, Inc., WIPO Case No. D2005-0649, and see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698) and will not be taken into consideration in comparing the Disputed Domain Name and the INTESA SANPAOLO trademark.
Having taken into account the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the INTESA SANPAOLO trademark and holds that the first limb of paragraph 4(a) of the Policy is established.
It is the consensus of past UDRP panels that a complainant is only required to show a prima facie case that the respondent does not have rights or legitimate interests in the domain name concerned (for example, see Gardens By The Bay v. Kevin Tay, WIPO Case No. D2014-0691, and see Accor v. Eren Atesmen, WIPO Case No. D2009-0701). Once a prima facie case is made out by the Complainant against the Respondent, the burden shifts to the Respondent to provide appropriate allegations or evidence demonstrating the Respondent’s rights or legitimate interests in the Disputed Domain Name (for example, see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Having reviewed the evidence placed before the Panel, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name, for the following reasons:
(a) The Respondent’s name is that of an individual and bears no resemblance to the Disputed Domain Name;
(b) There is no evidence that the Respondent is otherwise commonly known by the Disputed Domain Name;
(c) The Complainant has not consented to the Respondent’s use of the Disputed Domain Name, and there is no evidence suggesting that the Respondent has rights in any trademarks which are identical or similar to the Disputed Domain Name; and
(d) There is no evidence suggesting that the Respondent has made use of the Disputed Domain Name for a bona fide offering of goods or services, given that the Disputed Domain Name did not resolve to any particular webpage.
The Complainant’s assertions and the prima facie case remain unchallenged by the Respondent. As such, the Panel holds that the second limb of paragraph 4(a) of the Policy is established.
The Complainant has not provided any evidence supporting the allegation that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of documented out-of-pocket costs. The Panel notes that the Respondent suggested that the parties explore a “friendly solution” as part of the communication associated with the Complainant’s cease and desist letter. The chain or correspondence shows that the Respondent was replying to the Complainant’s demand that the Disputed Domain Name be transferred at no cost. That such “friendly solution” hints at or would entail excessive payment or any payment is mere speculation in the absence of evidence. In the factual circumstances, such allegation is insufficient to support a finding of bad faith within the meaning of the third limb of paragraph 4(a).
Based on the evidence submitted, the Panel accepts that the INTESA SANPAOLO trademark is well-known in the context of Italian banking services. It has already been established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. During the exchange of correspondence between the parties in association with the Complainant’s cease and desist letter, the Respondent claimed that the Disputed Domain Name was selected for future use but did not provide any explanation as to why the Disputed Domain Name incorporates the INTESA SANPAOLO trademark in its entirety. In the absence of any cogent explanation thereof, the Panel is unable to conceive of any bona fide reason for the registration of the Disputed Domain Name. The Respondent has not refuted the allegation that the Disputed Domain Name is registered and used passively in the sense of passive holding in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Such passive holding is a sui generis category of bad faith registration and use in addition to the express examples bad faith registration and use in paragraph 4(b) of the Policy. The Panel hereby draws an adverse inference from the Respondent’s failure to file a response that the Respondent has exhibited bad faith registration and use of the Disputed Domain Name by such passive holding.
Accordingly, the third limb of paragraph 4(a) of the Policy is also hereby established.
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 <intesasanpaolo.top> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: June 15, 2015