WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banca Intesa S.p.A., v. Nicho Invest
Case No. D2006-0381
1. The Parties
The Complainant is Banca Intesa S.p.A., Milan, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Nicho Invest, Ketchum, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bancaintesabci.com> is registered with Melbourne IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2006. On March 27, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On March 29, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25,2006.
The Center appointed Pravin Anand as the sole panelist in this matter on March 8, 2006. 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 facts stated in the Complaint by the Complainant are as follows:
1. The Complainant is a leading Italian banking group and also one of the protagonists in the European banking arena.
2. It was incorporated as a result of the integration of Carpilo and Banco Ambrosiano Veneto. In 2001, Banca Commerciale Italiana (COMIT) merged into Banca Intesa and the new entity was called “IntesaBci”. On December 17, 2002 the Complainant was renamed Banca Intesa.
3. The Complainant has a significant domestic presence and a system of alliances aimed at managing specific international business areas. The Complainant has more than 57,000 employees and 3,720 branch offices in Italy and around the world and 13 million clients worldwide and is one of the major Italian banking groups and one of the key players in Europe.
4. According to Banca Intesa’s 2005 half-yearly results, dated March 6, 2006, the Complainant is engaged in a range of commercial activities in various countries.
5. The Complainant is the owner of several trademark registrations and applications for BANCA INTESA and INTESA. The Complainant registered trademarks are as follows:
- BANCA INTESA Italian trademark registration no. 818814 filed on December 18, 1997, and granted on June 20, 2000, in classes 9,16 and service mark classes of 36, 38, 41 and 42.
- BANCA INTESA European Community trademark registration no. 779793 filed on March 24, 1998 and granted on November 15, 1999, in classes 9, 16 and service mark classes 36, 38, 41 and 42.
- INTESA European Community trademark registration no. 2803773 filed on August 7, 2002, and granted on November 17, 2003, in service mark class 36.
- INTESA United States trademark registration no. 2894502 filed on April 23, 2003, and granted on October 19, 2004, in service class 36.
From the above and also the evidence filed by the Complainant it becomes apparent that the Complainant is a leading banking group in Italy and one of the most prominent banking institutions in the European union.
5. Parties’ Contentions
The Complainant’s contentions are summarized briefly hereunder:
1. The Complainant has trademark and service mark rights in BANCA INTESA and INTESA. Additionally the domain name <bancaintesabci.com> is a combination of the Complainant’s current and previous names.
2. The disputed domain name <bancaintesabci.com> is very similar to the Complainant’s official website “www.bancaintesa.it” and also similar to other domain names owned by the Complainant.
3. The sole difference is the letters “Bci” which have been connected with the Complainant’s name for years.
4. The Respondent does not have any right over the trademarks involved and has no lawful interest relating to the same. The Complainant has a worldwide trademark watching service on the words “Banca Intesa” and “Intesa” and no trademark covering the words “Banca Intesa” and “Intesa,” in the name of the Respondent has been detected.
5. Further the domain name does not correspond to the business name of the Respondent and the Respondent is not commonly known as BANCAINTESABCI.
6. The Respondent has registered and used the domain name in bad faith as:
- The website to which the disputed domain name resolves is not active and “passive holding” of the domain name may represent a registration and use of the domain name in bad faith.
- The Respondent seems to be well aware of the Complainant’s trademarks and names, both past and present.
- The Respondent has provided no evidence of any actual or contemplated good-faith use of the disputed domain name <bancaintesabci.com>.
- The Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name.
- The Respondent has registered the disputed domain name for the purposes of “phishing” or to resell the disputed domain name <bancaintesabci.com> to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant has to prove each of the following elements:
1) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) The Respondent has no rights or legitimate interests in respect of the domain name; and
3) The domain name has been registered and used in bad faith.
In the case of a default by a party, paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement, under the Rules, the Panel shall draw such inferences therefrom, as it considers appropriate.
In this case, the Respondent has not submitted a Response and the Panel will therefore have to operate on the basis of facts stated in the Complaint and the evidence to support it.
Accordingly the Panel finds that:
A. Identical or Confusingly Similar
The Complainant has exclusive rights in the trademark INTESA and BANCA INTESA. The Complainant was formerly known as INTESABCI.
Further, the disputed domain name <bancaintesabci.com> is a combination of the Complainant’s existing trademark and service mark BANCA INTESA and INTESA in which the Complainant has rights as well as its former name “IntesaBci.” See ALSTOM, ALSTOM Holdings v. Dmitry Sychov., WIPO Case No. D2002-0927.
Hence the Panel finds that the disputed domain name <bancaintesabci.com> is confusingly similar to the trademark and service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names as:
1) The Respondent is not known by the business name BANCA INTESA or INTESA and the disputed domain name does not correspond to a trademark registered in the name of the Respondent.
2) The Respondent (as a business, individual or other organization) has not been commonly known by the domain name.
3) The Complainant has not licensed or otherwise authorized the Respondent to use its trademark or names in commercial activities.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Complainant has alleged and the Panel finds that the domain name is registered and is being used in bad faith, for the following reasons:
1) The Respondent seems to be well aware of the Complainant’s trademarks and names, both past and present.
2) The Respondent has not provided any evidence of any actual or contemplated good faith use by it, of the disputed domain name <bancaintesabci.com>.
3) The disputed domain name <bancaintesabci.com> does not resolve to an active website. Further, the very act of having acquired the disputed domain name <bancaintesabci.com> raises the probability that the Respondent is using the domain name in a manner that is contrary to the Complainant’s legal rights and legitimate interests. See Comerica v. Horoshiy Inc., WIPO Case No. D2004-0615.
4) Further, the domain name “being used in bad faith” is not limited to positive action, but inaction also falls within the concept. It is possible for inactivity by the Respondent to amount to the domain name being registered and used in bad faith. See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
5) Further, the website to which the disputed domain name <bancaintesabci.com> resolves causes confusion, as it gives an impression that the Complainant is about to open a new website.
The Panel therefore finds that the domain name has been registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bancaintesabci.com> be transferred to the Complainant.
Date: May 22, 2006.