WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. VPDD UBGM LTD.
Case No. D2007-0553
1. The Parties
Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, represented by Studio Legale Perani, Italy.
Respondent is VPDD UBGM LTD., Caltro Department, Tay Ho, Hanoi, Viet Nam.
2. The Domain Names and Registrar
The disputed domain names <intesasanpalo.com> <intesasanpaol.com> <intesasanpolo.com> <intesasapaolo.com> <intesasnpaolo.com> <itesasanpaolo.com> <wwwintesasanpaolo.com> (hereinafter, “Disputed Domain Names”) are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2007. On April 13, 2007, the Center transmitted by email to Moniker Online Services, LLC, a request for registrar verification in connection with the Disputed Domain Names. On April 16, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the Disputed Domain Names 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 Respondent of the Complaint, and the proceedings commenced on April 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2007.
The Center appointed Mark Ming-Jen Yang as the sole panelist in this matter on May 22, 2007. 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
Complainant is the owner of mark “INTESA SANPAOLO” (hereinafter referred to as “Trademark”) and has the following European Community trademark applications for it and derivatives thereof:
Application No. 5301999 “INTESA SANPAOLO” filed on September 8, 2006, in classes 35, 36 and 38.
Application No. 5421227 “INTESA SANPAOLO and device”, filed on October 27, 2006, in classes 9, 16, 35, 36, 38, 41 and 42;
Application No. 5421177 “INTESA SANPAOLO and device”, filed on October 27, 2006, in classes 9, 16, 35, 36, 38, 41 and 42;
Application No. 5344544 “GRUPPO INTESA SANPAOLO”, filed on September 8, 2006, in classes 35, 36 and 38; and
Application No. 5302377 “BANCA INTESA SANPAOLO”, filed on September 8, 2006, in classes 35, 36 and 38.
Particulars of Complainant’s use of the Trademark in the banking and financial services marketplace are described in Discussion and Findings - Identical or Confusingly Similar, Section 6A below.
On February 1, 2007, Respondent registered the Disputed Domain Names.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Names are confusingly similar with the Trademark in which it has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Names and that Respondent registered and uses the Disputed Domain Names in bad faith.
Respondent did not reply to the Complainant’s contentions and is in default.
6. Discussion and Findings
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of Respondent to furnish a Response to the Complaint is not due to any omission by the Center. There is sufficient evidence in the case file for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).
In case of default, under paragraph 14(a) of the Rules, “the Panel shall proceed to a decision on the complaint”, and under paragraph 14(b) of the Rules, “the Panel shall draw such inferences [from the default] as it considers appropriate”. Furthermore, paragraph 15(a) of the Rules provides that a “Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems appropriate”. Since Respondent has not submitted any evidence, the Panel must render its decision on the basis of the uncontroverted evidence supplied by Complainant.
In accordance with paragraph 4(a) of the Policy, to succeed in this UDRP proceeding, Complainant must meet three requirements that will be considered in turn below.
A. Identical or Confusingly Similar
Complainant contends (and the Panel accepts as uncontroverted) the following: that it is among the top banking groups in the Euro zone, with a market capitalization exceeding 70 billion Euros; that it is the leader in Italy, with an average market share of about 20% in all business areas, and serves about 12 million customers; that it has a presence in Central-Eastern Europe with over 6 million customers; that it has a presence in 34 countries, and in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States, Russia, China and India. Accordingly, although the Trademark is not yet registered, the Panel finds that the Complainant has significant unregistered, “common law” rights to the Trademark as a business service mark.
Complainant contends (and the Panel accepts as uncontroverted) that the Disputed Domain Names are confusingly similar to Complainant's Trademark. Specifically, Complainant contends that <intesasanpalo.com>, <intesasanpaol.com>, <intesasanpolo.com>, <intesasapaolo.com>, <intesasnpaolo.com> and <itesasanpaolo.com> are each a mis-spelling of Complainant’s Trademark, differing by only one letter from the Trademark. Complainant notes that <wwwintesasanpaolo.com> reproduces the Complainant's Trademark in its entirety and prefixes with the common letters www, the acronym for the World Wide Web. The Panel considers that Respondent is engaging in “typosquatting”, a practice that typically consists in the registration of a domain name which is a slight alphabetical variation from a famous mark. WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user. See, e.g., DaimlerChrysler Corporation v. Worshiping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272; and Buongiorno Vitaminic S.p.A. v. Olga Gatto, WIPO Case No. D2003-0914 (“The addition “www” is the well known acronym for “World Wide Web” and has no distinguishing capacity in the context of domain names”).
The Panel accepts Complainant’s contentions that it has rights in the Trademark and that the Disputed Domain Names are confusingly similar to the Trademark, and so concludes that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
Complainant contends (and the Panel accepts as uncontroverted) that Respondent has no rights or legitimate interests in the Disputed Domain Names. As Complainant notes, there is nothing to indicate that Respondent is commonly known by the Disputed Domain Names, and otherwise has no relationship with Complainant.
Respondent has provided no arguments or evidence of legitimate interests to counter Complainant’s contentions on this issue. By virtue of the legal status of the Trademark, and Complainant's contentions about the very large financial size and worldwide geographical range of its banking and financial services business with the Trademark, Complainant convincingly argues that Respondent has no rights or legitimate interests in the Disputed Domain Names. The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in paragraph 4(c) of the Policy, of proof of legitimate interest by Respondent in the Disputed Domain Names, likely do not exist.
The Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the Disputed Domain Names in bad faith.
Complainant contends (and the Panel accepts as uncontroverted) that Respondent registered the Disputed Domain Names in bad faith because it did so to use to misleadingly divert Internet traffic away from Complainant’s website, to Respondent’s website that refer to banking and financial services that are competitive with Complainant’s banking and financial services. Furthermore, Panel notes that Respondent was very likely aware, when it so registered, of Complainant’s applications of Trademark - see Complainant’s applications in Factual Background, Section 4 above, and Complainant’s significant use of its Trademark in the banking and financial services marketplace (as described in Discussion and Findings - Identical or Confusingly Similar, Section 6A above).
Complainant further contends (and the Panel accepts as uncontroverted) that Respondent is using the Disputed Domain Names in bad faith to misleadingly divert Internet traffic away from Complainant’s website, to Respondent’s website that refer to banking and financial services that are competitive with Complainant’s banking and financial services.
The Panel concludes that the third requirement of the Policy is met.
For all 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, <intesasanpalo.com> <intesasanpaol.com> <intesasanpolo.com> <intesasapaolo.com> <intesasnpaolo.com> <itesasanpaolo.com> <wwwintesasanpaolo.com> be transferred to the Complainant.
Mark Ming-Jen Yang
Dated: June 5, 2007