The Complainant is Intesa Sanpaolo S.p.A. of Turin, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Contact Privacy Inc. Customer 0143025854 of Toronto, Canada / Gilberto Marzolla of Turin, Italy.
The disputed domain name <intensassanpaolo.com> is registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2016. On August 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2016, 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 August 8, 2016 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 August 9, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2016.
The Center appointed Edoardo Fano as the sole panelist in this matter on September 15, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
The Complainant is Intesa Sanpaolo S.p.A., a leading Italian banking group, owning many trademark registrations for INTESA SANPAOLO, including:
- International Trademark Registration No. 920896 INTESA SANPAOLO, registered on March 7, 2007;
- European Union Trademark Registration No. 005301999 INTESA SANPAOLO, registered on June 18, 2007.
The Complainant operates its main website at “www.intesasanpaolo.com”.
The Complainant provided evidence in support of the above.
The disputed domain name <intensassanpaolo.com> was registered on May 15, 2016. At the time of filing the Complaint, the website at the disputed domain name was not active.
On July 12, 2016 the Complainant’s attorneys sent a cease-and-desist letter to the Respondent requesting the transfer of the disputed domain name, but the Respondent did not comply with such request.
The Complainant states that the disputed domain name <intensassanpaolo.com> is confusingly similar to its trademark INTESA SANPAOLO.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith because, even if at the moment the relevant website appears to be inactive, no future legitimate use of the disputed domain name could be found in the present passive holding.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
The Panel finds that the Complainant is the owner of the trademark INTESA SANPAOLO both by registration and acquired reputation and that the disputed domain name <intensassanpaolo.com> is confusingly similar to the trademark INTESA SANPAOLO.
Regarding the addition of the letters “n” and “s” in the disputed domain name, the Panel notes that this is not enough to differentiate the latter from the Complainant’s trademark INTESA SANPAOLO, since the visual impression is very similar. Such practice is known as “typosquatting”, and has been widely condemned in prior UDRP decisions (see, e.g., The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492; Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587; Pig Improvement Company, Inc. v. Platinum Net, Inc., WIPO Case No. D2000-1594).
It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.”
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark INTESA SANPAOLO in the field of banking and financial services is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, <intensassanpaolo.com>, because it is confusingly similar to the Complainant’s trademark.
Regarding the use in bad faith of the disputed domain name, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case the Panel finds that such passive holding amounts to bad faith use.
The Panel finds that the Complainant has presented sufficient evidence to satisfy their burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <intensassanpaolo.com> be transferred to the Complainant.
Edoardo Fano
Sole Panelist
Date: September 19, 2016