WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banca Intesa S.p.A. v. Amministrazione Webdomains and Edizioni Blu s.r.l.
Case No. D2000-1452
1. The Parties
The Complainant is Banca Intesa S.p.A., Piazza P. Ferrari 10, Milan, Italy.
The Respondents are Amministrazione Webdomains, Interno 254 Via Paciaudi 10/C, Parma, Italy and Edizioni Blu s.r.l., Via Damiano Chiesa 1, Parma, Italy.
2. The Domain Name and Registrar
The Domain Name at issue is "bancaintesa.com" (Domain Name), which Domain Name is registered with Network Solutions, Inc. (NSI or the Registrar).
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on October 25, 2000. The signed original with attachments was received by the Center on October 27, 2000.
On November 3, 2000, the Center transmitted to NSI a request for Registrar Verification in connection with this case. On November 9, NSI confirmed that: (i) NSI is the Registrar of the Domain Name "bancaintesa.com"; (ii) the current registrant of the Domain Name is Amministrazione Webdomains, Interno 254 Via Paciaudi, 10/C, Parma, Italy; (iii) the administrative and billing contacts are Edizioni Blu s.r.l., Via Damiano Chiesa 1, Parma, Italy and (iv) the domain name registration in issue is in "Active" status.
On November 29, 2000, the Center completed the Formal Requirements Compliance Checklist. The following day the Center transmitted to the Respondents a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically, by courier and fax. In the Commencement Notification the Center advised the Respondents that a response was due on December 19, 2000. On the same date the Commencement Notification was copied to the Complainant and to ICANN and the Registrar.
Having received no response from the Respondents, on December 24, 2000, the Center transmitted electronically and by courier to the Respondents a Notification of Respondent Default, with a copy to the Complainant.
On January 11, 2001 the Center notified the parties that Ms. Anna Carabelli had been appointed as Sole Panelist in this proceeding.
On January 25, 2001 the Panelist issued a Rule 12 request to the Complainant, for the submission of additional documents concerning the ownership by the Complainant of certain trademark registration applications. At the same time, the Panelist postponed the term for the decision to February 5, 2001.
On January 30, the Complainant submitted additional documentation.
The Panelist independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has provided evidence of a number of trademark registration applications incorporating the word "INTESA" (Attachments 5-10 to the Complaint). The following applications (Attachments 6 to 10 to the Complaint) are deemed by the Complainant as being the most relevant considering that the Respondents are both located in Italy:
Italian Trademark Application No. TO97C003351
Dec. 18, 1997
Italian Trademark Application No. TO97C003347
Dec. 18, 1997
Italian Trademark Application No. TO98C001201
April 9, 1998
Italian Trademark Application No. TO98C001202
April 9, 1998
Italian Trademark Application No. MI98C002709
March, 8, 1998
The above applications, however, were made in the name of Banco Ambrosiano Veneto S.p.A. and for this reason the Panelist issued a Rule 12 request to Complainant concerning additional documents proving that the above applications are currently owned by the Complainant.
The Complainant promptly submitted documentation proving the following:
· trademark applications n° TO97C003351 and n° TO97C003347 are actually owned by the Complainant since Banco Ambrosiano Veneto S.p.A. changed its name and registered office (Vicenza) into that of Banca Intesa S.p.A. (Milan) on December 17, 1997. On February 15, 1999, such a change was notified to the Italian Patent and Trademark Office for the records (Attachment 26).
· trademark applications n° TO98C001201, TO98C001202 and MI98C002709 were assigned to the Complainant on December 3, 1999, (Attachment 27 to the Complaint).
The Complainant’s trademarks were filed/registered not only in connection with the typical services of a bank but also for other products and services and are widely used by the Complainant worldwide (Attachment 11 to the Complaint).
The Complainant also operates the web site identified by the domain name bancaintesa.it providing information about "Financial Markets", " Researches and studies", "Recent Data" (Attachment 12 to the Complaint), as well as the web site intesatrade.it specialized in trading on line (Attachment 13).
According to the Internic database (Attachment 1) and the Network Solutions Whois’ database (Attachment 2), the Domain Name was registered on January 8, 1998, by Amministrazione Webdomains, Interno 254 Via Paciaudi 10/C, Parma; no phone or e-mail contact details are reported by the above databases while the company is unknown at the reported address.
The Complainant has therefore contacted Edizioni Blu s.r.l., the latter being the Administrative Contact reported in the Whois’ database. The correspondence exchanged between the Complainant and Edizioni Blu (Attachments 14 to 17) in the pre-complaint dealings shows that Edizioni Blu acted as the real owner of the domain name. Therefore, the Complainant has joined Amministrazione Webdomains and Edizioni Blu in a common complaint.
The Complainant submitted (as Attachment 14) a copy of the letter dated July 5, 2000, sent to by the Respondent Edizioni Blu (the Respondent Amministrazione Webdomains could not be identified) by which the Complainant requested the immediate transfer of the Domain Name. Edizioni Blu replied that (i) they had filed the Domain Name in January 1998, upon request of one of their clients, who afterwards lost all interest therein; (ii) notwithstanding the above, they decided to maintain the registration and carried out a "secretary service" in connection with the Domain Name; (iii) they are willing to transfer the Domain Name upon refund of the expenses sustained, equal to Lit. 5,000,000 plus V.A.T. (Attachment 15).
On July 2, 2000, the Complainant rejected Edizioni Blu’s requests offering the sum of Lit. 500,000, considering the transfer price indicated by Respondent frightfully excessive (Attachment 16). In this connection the Complainant has submitted copies of Network Solutions, Supereva and Register.it price lists (Attachments 23, 23 and 25), showing that the average costs for the registration of a domain name are far lower than the transfer price requested by Edizioni Blu.
On July 31, 2000, Edizioni Blu replied that their request was based on the standard yearly maintenance fees; however, in order to help an amicable solution, they rebated the transfer price to Lit. 4,500,000.
5. Parties’ Contentions
The Complainant contends that:
· the Respondents’ Domain Name is identical to the Complainant’s company name and trademark BANCA INTESA;
· the Respondents have no rights or legitimate interests in the Domain Name;
· the Respondents registered the Domain Name in bad faith since they registered it upon learning of the establishment of BANCA INTESA in order to prevent the Complainant from using its trademark in a corresponding domain name;
· the Respondent Edizioni Blu’s attempt to sell the Domain Name for an amount far in excess of the out of pocket costs (Lit. 4,500,000) directly related to the Domain Name amounts to bad faith use of the Domain Name.
Based on the above, the Complainant requests the transfer of the Domain Name.
The Respondents did not file any response and are in default.
6. Discussion and finding
Art. 15.a. of the Rules instructs the Administrative Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4.a of the Policy, the Complainant must prove each of the following:
(i) The domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark; and
(ii) the 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.
Paragraph 4.b of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4.a (iii) shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.c of the Policy sets out three illustrative circumstances any one of which if proved by respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii) above.
(a) Identity or confusing similarity
The records indicate that Complainant owns various trademark registrations and applications covering the words "BANCA INTESA" and "INTESA". Some of them, in particular the Italian trademark applications N° TO97C003351 and N° TOC003347 regarding the mark "BANCA INTESA" and "GRUPPO INTESA", respectively, were filed by the Complainant in December 1997, therefore prior to the Domain Name registration.
The Panelist finds that the Domain Name is identical to the Complainant’s trademark BANCA INTESA and confusingly similar to the Complainant’s trademark GRUPPO INTESA.
Furthermore, in the correspondence exchanged with the Complainant in the pre-complaint dealings, the Respondent Edizioni Blu raised no challenge in this respect.
(b) Rights or legitimate interests
The Complainant has never authorized or licensed the Respondents to use the Complainant’s trademarks and trade name BANCA INTESA. It also appears that the Respondent is not commonly known by the Domain Name.
The Panelist finds, therefore, that the Complainant has established a prima facie evidence that the Respondents have no rights or legitimate interests in the Domain Name.
The Respondent Edizioni Blu has not even raised a general objection in the correspondence preceding the commencement of these proceedings and by submitting no response, both Respondents have failed to invoke any circumstance under paragraph 4. c of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters WIPO D2000-0526; Deutsche Bank AG v. Diego-Arturo Bruckner WIPO D2000-0277; Talkcity Inc. v. Robertson WIPO D2000-0009).
Therefore, the Panelist concludes that the Respondents have no rights or legitimate interests in the Domain Name.
(c) Bad Faith
Under the Policy, the Complainant is required to prove also the third element provided for in paragraph 4.a (iii), namely that the domain name "has been registered and is being used in bad faith".
As demonstrated by the Complainant, at least factor (i) of Paragraph 4.b of the Policy is applicable here and establishes bad faith registration and use of the Domain Name.
The letter of July 17, 2000, sent by the Respondent Edizioni Blu supports the conclusion that the Respondent has registered or acquired the Domain Name "primarily for the purpose of selling, renting … the domain name registration to the complainant … for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name". As a matter of fact in this letter the Respondent admits that (i) they registered the Domain name upon one of their clients’ request (presumably a company Amministrazione Webdomains indicated as the registrant in the Whois’ database); (ii) they maintained the Domain Name also after their client had lost interest in the Domain Name (which fact, by the way, confirms that Respondents have never made legitimate use of the Domain Name and therefore have no rights or legitimate interests in the Domain name) and (iii) they were willing to transfer the Domain Name for the price of Lit. 5,000,000 plus V.A.T.
Such an offer for sale was reiterated on July 31, 2000, despite the Complainant’s objections, at the rebated price of Lit. 4,500,000.
The above price is evidently in excess of the Respondent’s out of pocket costs directly related to the Domain Name. Edizioni Blu’s allegation that the yearly maintenance fees are in the range of Lit. 1,500,000 is groundless as demonstrated by the Complainant.
In addition, the Complainant’s contention that the Respondents ran to register the Domain Name immediately after said announcement with the intention to take advantage of it and prevent the Complainant, which is the legitimate owner of the BANCA INTESA trademark, from reflecting this trademark in a corresponding domain name, is credible.
Therefore, the Panelist concludes that the Domain Name has been registered and used in bad faith.
The Panelist decides that: (a) the domain name "bancaintesa.com" registered by the Respondents is identical or confusingly similar to the Complainant’s trademarks; (b) the Respondents have no rights or legitimate interests in respect of the domain name "bancaintesa.com"; and (c) the domain name "bancaintesa.com" has been registered and is being used in bad faith by the Respondents.
Accordingly, the Panelist requires that the domain name "bancaintesa.com" be transferred to the Complainant.
Dated: February 5, 2001