Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
Respondent is Dani Pedrosa of Bologna, Italy.
The disputed domain names <intensa-sanpaolo.com>, <intensa-sanpaolo.net>, <intensa-sanpaolo.org>, <intesanpaolo-banca.com>, <intesanpaolo-banca.net> and <intesanpaolo-banca.org> are registered with eNom, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 17, 2016. On June 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 17, 2016, the Registrar 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" 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 22, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 27, 2016. 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 Intesa Sanpaolo S.p.A. is among the leading banking groups in Europe. It resulted from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.a. Complainant has a market capitalization of over EUR 38.6 billion. Complainant has about 4,100 branches in Italy and 1,200 branches in Central-Eastern Europe. Complainant is present in 29 countries, in particular in the Mediterranean area, as well as in the United States of America, Russian Federation, China and India.
Complainant owns, inter alia, the following trademark registrations:
- INTESA SANPAOLO, International trademark registration No. 920,896, registered on March 7, 2007, in International Classes 9, 16, 35, 36, 38, 41 and 42;
- INTESA SANPAOLO, European Union trademark registration No. 5,301,999, registered on June 18, 2007, in International Classes 35, 36 and 38; and
- INTESA SANPAOLO & device, European Union trademark registration No. 5,421,177, registered on November 5, 2007, International Classes 9, 16, 35, 36, 38, 41 and 42.
Complainant also owns the <intesasanpaolo.com>, <intesasanpaolo.org>, <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.net> and <intesasanpaolo.biz> domain names, all of which resolve to Complainant's official website "www.intesasanpaolo.com".
On February 3, 2016 the disputed domain names were registered. In accordance with the annexes to the Complaint, the disputed domain names <intesanpaolo-banca.com>, <intesanpaolo-banca.net> and <intesanpaolo-banca.org> resolve to websites with sponsored links, among others, to banking and financial services, the disputed domain names<intensa-sanpaolo.com>, <intensa-sanpaolo.net> and <intensa-sanpaolo.org> are inactive.
Complainant contends as follows:
The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain names <intesanpaolo-banca.net>, <intesanpaolo-banca.org> and <intesanpaolo-banca.com> exactly reproduce the trademark INTESA SANPAOLO, with the mere addition of the descriptive term "banca"(Italian for "bank").
Likewise, the disputed domain names <intensa-sanpaolo.com>, <intensa-sanpaolo.net> and <intensa-sanpaolo.org> exactly reproduce Complainant's trademark, with the only addition of the letter "n"within the term "Intesa". Such difference clearly is a minor and merely descriptive variation of the cited mark, used by Complainant to identify its online banking services.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent has no relation whatsoever to Complainant. In fact, any use of the trademark INTESA SANPAOLO has to be authorized by Complainant, and nobody has been authorized or licensed by the above-mentioned banking group to use the disputed domain names. The disputed domain names do not correspond to the name of Respondent and, to the best of Complainant's knowledge, Dani Pedrosa is not commonly known by the disputed domain names. Lastly, Complainant does not find any fair or noncommercial uses of the disputed domain names, as can be seen for instance on the websites at the "intesanpaolo-banca" or "intensa-sanpaolo" domain names.
The disputed domain names were registered and are being used in bad faith. Complainant's trademark INTESA SANPAOLO is distinctive and well known all around the world. The fact that Respondent has registered domain names that are confusingly similar to Complainant's trademark, it indicates that Respondent had knowledge of the Complainant's trademark at the time of registration of the disputed domain names. Had Respondent made even a basic Google search in respect of the wording "Intesa Sanpaolo", the search would have yielded obvious references to Complainant, as it can be shown in Annex G to the Complaint. This raises a clear inference of knowledge of Complainant's trademark on the part of Respondent. Therefore, it is more than likely that the disputed domain names would not have been registered if it were not for Complainant's trademark. This is a clear evidence of registration of the disputed domain names in bad faith.
In addition, the disputed domain names are not used for any bona fide offerings. More particularly, there are present circumstances indicating that, by using the disputed domain names <intesanpaolo-banca.net>, <intesanpaolo-banca.org> and <intesanpaolo-banca.com> Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website (paragraph 4(b)(iv) of the Policy).
Also, there are present circumstances indicating that Respondent has registered or acquired the disputed domain names <intensa-sanpaolo.net>, <intensa-sanpaolo.org> and <intensa-sanpaolo.com> primarily for the purpose of selling, renting, or otherwise transferring them to Complainant or to a competitor of Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the registration of the disputed domain names (paragraph 4(b)(i) of the Policy).
As for the disputed domain names <intesanpaolo-banca.net>, <intesanpaolo-banca.org> and <intesanpaolo-banca.com>, they are connected to websites sponsoring, inter alia, banking and financial services, as those covered by Complainant's trademarks. See Complainant's official website "www.intesasanpaolo.com", as Annex H.
Respondent did not reply to Complainant's contentions.
Complainant has shown to the satisfaction of the Panel that it owns several registrations for the INTESA SANPAOLO mark, and therefore, that it has rights in such mark. See section 4 above.
The Panel notes that the disputed domain names <intesanpaolo-banca.net>, <intesanpaolo-banca.org> and <intesanpaolo-banca.com> clearly reproduce the trademark INTESA SANPAOLO, even considering that the last syllable in the "Intesa" portion of Complainant's mark is deleted, because a similar sound ("san") is present in the "Sanpaolo" term. Also, the addition of the descriptive term "banca"(Italian for "bank") does nothing to dispel, and rather reinforces, the impression of association with Complainant's mark and services, given that its main activity is precisely banking. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9 ("The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP").
Further, the Panel is of the opinion that the addition in the disputed domain names <intensa-sanpaolo.com>, <intensa-sanpaolo.net> and <intensa-sanpaolo.org> of the letter "n" in the "Intesa" portion of the mark is a minor change, which is inapt to dispel the impression of association between those disputed domain names with Complainant's INTESA SANPAOLO mark. The addition of the hyphen between "intensa" and "sanpaolo" is also insignificant. See Worldpay Limited v. pay world / PrivacyProtect.org, WIPO Case No. D2014-0018 relating to <world-pay.biz> ("t[T]he addition of a hyphen does not distinguish the disputed domain name from the Complainant's WORLDPAY Trademark"). The Panel believes that each of the disputed domain names is a clear case of typosquatting, where Complainant's misspelled mark remains the dominant element. See WIPO Overview 2.0, paragraph 1.10 ("Consensus view: A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name").
The Panel concludes that the disputed domain names are confusingly similar to the INTESA SANPAOLO mark, in which Complainant has rights.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain names. In particular, Complainant states that Respondent has no relation whatsoever to Complainant, and has never been authorized or licensed by Complainant to use the INTESA SANPAOLO mark in the disputed domain names. Complainant adds that the disputed domain names do not correspond to the name of Respondent "Dani Pedrosa", who, to the best of Complainant's knowledge, is not commonly known by the disputed domain names. Lastly, Complainant does not find any fair or noncommercial use of the disputed domain names, and supports this allegation by pointing to the contents of the websites at the disputed domain names.
In the opinion of the Panel, the available evidence supports these contentions. In particular, Complainant has submitted printouts taken on June 15, 2016 from the websites at the disputed domain names <intesanpaolo-banca.net>, <intesanpaolo-banca.org> and <intesanpaolo-banca.com>, where, under the title "Link correlati" (Italian for "Related links"), there are links to other websites offering banking services in competition with Complainant. Complainant also has shown with printouts taken on the same day that its browser was unable to reach the websites at the rest of the disputed domain names. On August 4, 2016, the Panel obtained a similar result during its attempt to visit each of the six disputed domain names: in each case an automatic message stated that the browser "can't find the server"1,
The Panel believes that Respondent's use of some of the disputed domain names to operate websites offering services in competition with Complainant, and the lack of any use of the rest of the disputed domain names is neither a use in connection with a bona fide offering under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use pursuant to Policy paragraph 4(c)(iii). Since Respondent's apparent name is "Dani Pedrosa", Policy paragraph 4(c)(ii) also does not appear to be applicable. Also, Respondent failed to provide any arguments or evidence in its own favor, indicating that it may have at least some rights or legitimate interests in the disputed domain names.
In sum, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names, which Respondent has not rebutted. In these circumstances, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain names. See WIPO Overview 2.0, paragraph 2.1 ("A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP").
Complainant has shown that it has registered its INTESA SANPAOLO mark about nine years before Respondent registered the disputed domain names. See section 4 above. In addition, it is undisputed that Complainant provides banking services and has thousands of branches in Italy, the country of residence of Respondent according to the current WhoIs data provided by the Registrar of the disputed domain names. Further, Complainant has shown that at least three of the disputed domain names resolved to websites offering services in competition with Complainant, while the rest of the disputed domain names do not appear ever to have been used. Complainant also has shown that a basic search on the Internet for "Intesa Sanpaolo" would have revealed in the very first places on the list of results the existence of Complainant, its mark and services. Based on these facts, the Panel cannot but conclude that Respondent knew of, and in fact targeted, Complainant, its INTESA SANPAOLO mark, and Complainant's goods and services at the time of registering the disputed domain names. In other words, the registration of the disputed domain names was in bad faith.
As to use in bad faith, it has been shown that at least for some time the disputed domain names <intesanpaolo-banca.net>, <intesanpaolo-banca.org> and <intesanpaolo-banca.com> resolved to websites offering services in competition with Complainant. This means that Respondent, by using those domain names has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its websites or locations or of products or services on its websites or locations. This is a circumstance of registration and use in bad faith under Policy paragraph 4(b)(iv).
Respondent does not appear to ever have used the rest of the disputed domain names , i.e. <intensa-sanpaolo.com>, <intensa-sanpaolo.net>, <intensa-sanpaolo.org> and <intesanpaolo-banca.com> in any active way, and there are no signs that Respondent would not use them to offer services in competition with Complainant, as he did until recently on the websites at <intesanpaolo-banca.net>, <intesanpaolo-banca.org> and <intesanpaolo-banca.com> resolve. Other circumstances support a finding of bad faith. First, Respondent apparently did not reply to the cease and desist letter sent by Complainant's counsel. Second, Respondent failed to reply to the Complaint and to provide any reasons for his registration and use of the disputed domain names. Third, as reported by the courier entrusted with delivering the Written Notice of the Complaint, Respondent appears to have provided an incomplete or wrong address at the time of registering the disputed domain names.
Accordingly, the Panel finds that Respondent's passive holding of the <intensa-sanpaolo.com>, <intensa-sanpaolo.net> and <intensa-sanpaolo.org> disputed domain names amounts to bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, finding that under certain relevant circumstances a lack of active use, i.e. passive holding of a domain name, can be "use in bad faith".
In conclusion, the Panel concludes that the disputed domain names were registered and are being used in bad faith.
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 names <intensa-sanpaolo.com>, <intensa-sanpaolo.net>, <intensa-sanpaolo.org>, <intesanpaolo-banca.com>, <intesanpaolo-banca.net> and <intesanpaolo-banca.org> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: August 8, 2016
1 "A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at "www.archive.org") in order to obtain an indication of how a domain name may have been used in the relevant past […]". See WIPO Overview 2.0, paragraph 4.5.