WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Payam Avarane Khorshid
Case No. DIR2008-0003
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Payam Avarane Khorshid, Shiraz, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <bancaintesa.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2008. On March 4, 2008, the Center transmitted by email to IRNIC a request for registrar verification in connection with the domain name at issue. On March 5, 2008, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 12, 2008. The Center verified that the Complaint satisfied the formal requirements of the .IR Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IR Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IR 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 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2008.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 10, 2008. 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 Complainant is an Italian banking group that trades under the names “Banca Intesa” and operates in Europe, the United States of America, Russian Federation, China, and India. It has a market capitalization exceeding 70 billion Euros. It holds trademark registrations for BANCA INTESA in Italy, the European Union, and as an international mark pursuant to the Madrid Agreement and Protocol under which inter alia the Islamic Republic of Iran is designated.
5. Parties’ Contentions
The Complainant asserts that the Respondent’s domain name <bancaintesa.ir> is identical or confusingly similar to the Complainant’s mark, since the domain name exactly reproduces the trademark BANCA INTESA.
The Complainant asserts that the Respondent has no legitimate interests or rights in the domain name. The Respondent thus has no rights on the domain name since it does not correspond to a trademark registered in the name of the Respondent, nor does it correspond to the name of the Respondent and, also the Respondent is not commonly known as “Bancaintesa”. The domain name <bancaintesa.ir> is connected to a website offering financial services including services from the Complainants competitors, so it is not used for any bona fide offering or other legitimate purposes.
The Complainant asserts that the Respondent registered the domain name and is using it in bad faith. As mentioned the domain name <bancaintesa.ir> is connected to a website offering financial services including services from the Complainants competitors and the Complainant asserts that the Respondents activities must be remunerated. Further, the contested domain name is almost identical to the domain name used for the Complainant’s Italian website “www.bancaintesa.it” and the content of the web page is even in the Italian language, which underlines that the use is done in bad faith. Finally, the sole aim of the Respondent might be to resell the domain name at issue to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith.
Accordingly, the Complainant submits that the Panel should order that the domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the 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 domain name; and
(iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the panel, the panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s trademark BANCA INTESA in full, and consequently the Panel finds that the disputed domain name is identical to the Complainant’s registered trademark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Paragraphs 4(a)(ii) and 4(c) of the Uniform Domain Name Dispute Resolution Policy (“the UDRP”) are identical in material respects to Paragraphs 4(a)(ii) and 4(c) of the Policy applicable in this case, and the Panel therefore consider that the same considerations must apply in this case as in the regular UDRP cases.
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark to apply for the domain name incorporating the Complainant’s mark.
The Complainant alleges and has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name. The Respondent is not commonly known by the Domain Name, nor is he using the contested domain name for any bona fide offering of goods and services or any fair or non-commercial use. The Respondent has in effect not rebutted this and, based on the record of this case it is unlikely that any such rights or interests may exist.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.
C. Registered or Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must prove the Respondent’s registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, a number of circumstances which may be taken as indicative of bad faith. Unlike the corresponding provision in the UDRP, a complainant under the Policy need only prove bad faith registration or bad faith use by the respondent both.
The Complainant’s trademark was registered and used well in advance of the date of registration of the disputed domain name. The mark is registered and used worldwide and in this context the Panel explicitly notes that the mark is registered in the country of domicile for the Respondent, namely the Islamic Republic of Iran. Given the geographically widespread registration and use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the circumstances that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
This is underlined by the fact that the disputed domain name is used for a website that contains sponsored links to other sites that offer competing services to those of the Complainant, and that the website is even in Italian. The Panel therefore finds that the Respondent by registering and using the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain.
Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii), are fulfilled in this case.
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 <bancaintesa.ir> be transferred to the Complainant.
Dated: April 24, 2008