The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Milan, Italy.
The Respondent is Transure Enterprise Ltd of Beaumaris, Australia and Tortola, Virgin Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland, respectively.
The disputed domain name <linksimpresesanpaoloimi.com> is registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2009. On October 20, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 22, 2009, Above.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 19, 2009.
The Center appointed Anders Janson as the sole panelist in this matter on November 26, 2009. 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 Complainant is a leading Italian banking group and also one of the protagonists in the European financial arena. The Complainant offers its services to approximately 12 million customers.
The Complainant has, in the Complaint, put forward national and also community registrations in various classes, as follow;
- Italian trademark application No. TO2006C002813 LINKS SANPAOLO stylized” filed on October 25, 2006 in connection with products of class 9 and with the services of class 9 and with services of class 36.
- Italian trademark registration No. 853343 SANPAOLO IMI.COM and device” filed on June 12, 2001, granted on October 30, 2001, in connection with the products of class 9 and with the services of classes 35, 36 and 41.
- Community trademark registration No. 1182716 SANPAOLO IMI and device, filed on May 24, 1999, granted on July 19, 2000 and duly renewed on May 25, 2009 in connection with the products of class 9 and with the services of classes 35, 36 and 42.
The Panel notes that the registration dates of the above-mentioned registrations predate the registration of the disputed domain name by the Respondent, which was on June 27, 2009
The Complainant contends that the disputed domain name is confusingly similar to the trademark LINKS SANPAOLO in which the Complainant has rights. The only differences are represented by the addition of the acronym “imi”, which however is incorporated in the marks SANPAOLO IMI and SANPAOLO IMI.COM, and the descriptive word “imprese” which in the Italian language means “enterprises”. The descriptive character of the word “imprese” is determined by the fact that it stands for a target audience of the services offered by the Complainant. The addition of generic words has been considered in several UDRP cases. The Complainant is the owner of the domain name <linksanpaolo.it>, connected to the Intesa Sanpaolo official website and <linksimprese.sanpaoloimi.com> in which services are offered.
In Intesa Sanpaolo S.p.A. v. Transure Enterprise Ltd, WIPO Case No. D2008-1754 the adding of the word “senior” was considered generic or descriptive, thus not sufficient to avoid confusing similarity. That panel found that it was likely that the domain name could be understood by Internet users to indicate that the website belonged to the complainant or was being sponsored by the complainant, which increased the likelihood of confusion. Case law has consistently confirmed that when a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words, Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, and CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413.
The Complainant furthermore contends that the disputed domain name does not correspond with any trademark registered in the name of Transure Enterprise Ltd. The disputed domain name does not correspond to the name of the Respondent and Transure Enterprise Ltd is not commonly known as “linksimpresesanpaoloimi”. The Respondent is not making any fair, noncommercial use of the disputed domain name. The Respondent has no rights or legitimate interests in the disputed domain name and has not been given permission to use it.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith as the domain name <linksimpresesanpaoloimi.com> attracts Internet users to a highly confusing website which contains several trademarks of competitors of the Complainant, used in order to sponsor banking and financial services. The Respondent is aware of the Complainant's identity and also knows the services offered by the Complainant. The disputed domain name is almost identical to the Complainant's domain name <linksimprese.sanpaoloimi.com> and the Respondent has participated in a similar dispute versus the Complainant, Intesa Sanpaolo S.p.A. v. Transure Enterprise Ltd, supra.
Several UDRP decisions, e.g., Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753, and YAHOO! INC. v. David Murray, WIPO Case No. 2000-1013 have stated that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy. The current use of the disputed domain name, which allows to access to the websites of the Complainant's competitors, and uses the Complainant's trademarks, causes great damages to the latter due to the misleading of their present clients and the loss of potential new ones.
Finally, the Complainant requests the Panel to issue a decision that the disputed domain name shall be transferred to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The domain name in question is <linksimpresesanpaoloimi.com>. The Complainant holds registered trademarks as mentioned above and is the owner of the domain name <linksanpaolo.it>, connected to the Intesa Sanpaolo official website and <linksimprese.sanpaoloimi.com> at which services are offered. The Panel finds, as numerous UDRP panels have found before, that the Complainant has established that its trademarks are well-recognized and that the trademarks are distinctive. The disputed domain name contains the Complainant's trademark LINKS SANPAOLO, SANPAOLO IMI.COM and SANPAOLO IMI in their entirety, with the added suffix “imprese” and the generic and functional top level domain name “.com”. In determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs that constitute the suffix shall be disregarded. Accordingly, the question is whether the addition of the term “imprese” makes the disputed domain name dissimilar to the Complainant's registered trademarks. In several UDRP decisions, the panels have found that the fact that a domain name incorporates a complainant's registered trademark may itself be sufficient to establish identity or confusingly similarity for the purpose of the Policy (Oki Data Americas Inc v. the ASD Inc, WIPO Case No. D2001-0903, CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).
The Panel finds it established that the trademarks are well-known and that the ownership of them belongs to the Complainant. The Panel further finds that the generic term “imprese” adds little to the overall impression of the disputed domain name. Internet users are very likely to assume that the addition of the word “imprese” to the trademark signifies a website associated with the Complainant. The Panel therefore finds that the addition of the term “imprese” does not diminish the similarity between the disputed domain name and the Complainant's trademarks.
The disputed domain name must therefore be considered confusingly similar to the Complainant's registered trademarks. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a).
The Respondent has not filed a Response. In these circumstances, when the Respondent does not have an obvious connection with the disputed domain name, the showing of a prima facie case by from the Complainant that the Respondent has no rights or legitimate interests is enough to shift the burden of proof to the Respondent to demonstrate that such rights and legitimate interests exist. The Respondent has not rebutted the Complainant's prima facie case, and has not demonstrated or argued that it used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or that any other rights or legitimate interests exist. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.
In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the paragraph 4(a) of the Policy.
The Complainant has asserted that the Respondent's registration and use of the disputed domain names has been made in bad faith. It is, according to the Complainant, evident that the Respondent, by registering and using the disputed domain name has intentionally attempted to attract for commercial gain, Internet users to the Respondent's website 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 of a product or service on the Respondent's website or location.
Paragraph 4(b) of the Policy states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iv) of the Policy states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.
Based on the evidence provided by the Complainant, the Panel finds it established that the website at the disputed domain name diverts Internet users from the website of the Complainant to its competitors. It must therefore held that the Respondent, by these actions, is trying to mislead consumers in order to attract them to other websites. Furthermore, the Respondent cannot, in this Panel's view, have been unaware of the Complainant's trademarks due to its market presence and the prior case, Intesa Sanpaolo S.p.A. v. Transure Enterprise Ltd, supra between the parties.
The Panel finds, with reference to the above-mentioned and the evidence provided by the Complainant, that the Respondent used the disputed domain name in bad faith, having intentionally attempted to attract, for commercial gain, Internet users to the Complainant's competitors. The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Considering the above, the Panel finds that it is not possible to conceive of any plausible legitimate use of the disputed domain name by the Respondent. In light of these circumstances, the Panel concludes that the Complainant has proven that the Respondent has registered and used the disputed domain name 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, <linksimpresesanpaoloimi.com> be transferred to the Complainant.
Dated: December 10, 2009