The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi of Tavella, Italy.
The Respondent is Ho Nim of Shanghai, China.
The disputed domain names <inresasanpaolo.com>, <intwsasanpaolo.com> and <inyesasanpaolo.com> (hereafter referred to as the “Disputed Domain Names”) are registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2010. On May 14, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On May 18, 2010, 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 details. 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 May 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for response was June 8, 2010. The Respondent did not submit any response by that date. Accordingly, the Center notified the Respondent's default on June 14, 2010.
The Center appointed James H. Grossman as the sole panelist in this matter on June 25, 2010. 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 one of the leading European financial institutions growing out of the merger effective in 1997 of two of Italy's premier banking groups, now with over 6000 branches in Italy alone and with a market capitalization of over 31.7 billion Euros. The Complainant ranks sixth in Europe in this category of market capitalization between Deutsche Bank and Societe Generale according to Bloomberg. In addition to some 12 million customers in Italy representing a market share of over 15% of the Italian market, Intesa San Paulo has over 2000 branches outside Italy and has became a leading financial institution for support of its Italian and other institutional customers in their businesses in 34 countries across the world, many of which are located in the Mediterranean area and in Eastern Europe.
The Complainant is the registered holder of International trade marks INTESA SANPAULO in 1997 and registered the marks in the EEC.
The Disputed Domain Names were registered in November 2009.
The Complainant alleges that the Disputed Domain Names in one way or another are either identical or confusingly similar to the Complainants' trade marks. For example, it argues that the disputed domain name <inresanpaolo.com> reproduces the distinctive terms “instesa sanpaolo” with the change of the letter “T” with the letter “R”,, that in the keyboard layouts “querty” and “azerty” is the letter that precedes the “T”. According to the Complainant, the Respondent is engaged in “typosquatting”, a practice which consists of a registration which is only a slight variation of a legitimate mark. The Complainant makes the very same arguments for the other two Disputed Domain Names which contain a mistaken letter which constitutes this same “typosquatting” and the Complainant sites a number of cases of UDRP jurisprudence where panels have found that such “typosquatting” is held to be confusingly similar to the Complainant's trademark or sites and thus constitutes the first finding for the particular panel in seeking a decision in that matter.
Finally, the Complainant draws the attention of the Panel to the case of Instesa Sanpaulo S.p.A v. Hu Lim, WIPO Case No. D2009-1793, regarding one domain name involving “typosquatting” and two other matters where a generic term is simply added to the trademarked names. In this cited case, the panel held for the Complainant and ordered the names be transferred to the Complainant.
Further, the Complainant makes clear that the Respondent has no rights or legitimate interests in the domain names and further that by diverting customers to these sites on which competing products from the Complainant's products are offered, apparently for commercial purposes, this constitutes the third element of bad faith.
The Respondent did not reply to the Complainant's contentions.
In order to succeed on its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The Domain Names are identical or confusing similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests with respect to the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs this panel to decide a complaint “on the basis of the statement and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The Complainant, a highly recognized entity across the international financial circles of the world, has made a very efficient and strong case that the use of the Disputed Domain Names each in their way seek to take advantage of what the previous cases have come to call “typosquatting”, an attempt merely to manipulate a few letters so as to confuse the computer user looking for the Complainant's site. In its complaint, the Complainant sites for example, in the case of DaimlerChrysler Corporation v. Worshipping, Chrisler and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272, (“The domain names are slight misspellings of the Chrysler mark. The only distinction between the domain names and the Complainant's mark is a single change in the middle of the word that constitutes the mark. Given the evidence provided, the Panel finds that the Respondents domain names, while not identical, are indeed confusingly similar to the Complainants marks”.).
The Panel therefore finds that the Disputed Domain Names are identical or confusingly similar to the trademark in which the Complainant has rights and therefore is sufficient to satisfy the first criterion set forth in paragraph 4(a)(i) of the Policy.
The Complainant points out that it has never authorized any one to use its trademark and to its knowledge the Respondent has no such trademark rights anywhere nor to the knowledge of the Complainant know of any of the Disputed Domain Names in its business. It appears that the most compelling argument is simply that the Respondent is hoping for Internet users to make a mistake in their typing of the proper trademark of the Complainant and therefore the Respondent shall have the opportunity to misdirect the Internet user to another site where the innocent user believes he or she is dealing with the Complainant but in fact in dealing with competitors of the Complainant.
The Panel accepts that the Complainant has made a prima facile case that the Respondent lacks rights or legitimate interests. Accordingly, the burden is transferred to the Respondent to demonstrate that it has any such rights or legitimate interests in the Disputed Domain Names. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Since the Respondent has failed to respond to the Complaint, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy, and, accordingly, the Panel finds that the Respondent has no rights or legitimate interest in the Disputed Domain Names.
There is overwhelming evidence provided by the Complainant of bad faith on the part of the Respondent and of course not refuted by the Respondent. These include the Respondent has intentionally attempted to attract for commercial purposes, internet users to its sites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement of the website; the fact that the websites are confusingly similar indicates that the Respondent had knowledge of the prior trademark registration of the Complainant at the time of the registration or certainly prior to the filing of the Disputed Domain Names. The Respondent is trading on the trademark of the Complainant by referring Internet users to competitors of the Complainant in violation of strict rules against such wrongful commercial use by the Respondent.
The Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy and that the Respondent's actions are 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 Disputed Domain Names <inresasanpaolo.com>, <intwsasanpaolo.com> and <inyesasanpaolo.com> be transferred to the Complainant.
James H. Grossman
Dated: July 9, 2010