Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Novacek Martin of Brno, Czech Republic.
The disputed domain names <impresasanpaolo.com> and <intasasanpaolo.com> are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2010. On May 27, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain names. On June 4, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on June 28, 2010.
The Center appointed Marilena Oprea as the sole panelist in this matter on July 6, 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 language of proceedings is English.
Complainant is an important Italian banking group with significant presence on the European market. Complainant's name Intesa Sanpaolo resulted from the merger between the Italian banking groups Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. in January 2007.
Complainant owns several trademark registrations for INTESA SANPAOLO and SANPAOLO, including the following:
- International Trademark no. 920896 granted on March 7, 2007 for the mark INTESA SANPAOLO in classes 9, 16, 35, 36, 38, 41, 42;
- Community Trademark no. 5301999 filed on September 8, 2006 for the mark INTESA SANPAOLO in classes 35, 36, 38;
- Community Trademark no. 3252764 filed on July 2, 2003 for the mark with device SANPAOLO in class 36; and
- Community Trademark no. 5686696 filed on February 14, 2007 for the mark INTESA SANPAOLO IMPRESE in classes 35, 36, 38.
Complainant also holds the following websites:
- “www.intesasanpaolo.com” (the main website); and
The disputed domain names <impresasanpaolo.com> and <intasasanpaolo.com> were registered on August 26, 2009 and are currently held by Respondent.
At the time of the filing of the Complaint, the disputed domain names were being used for sponsored listings and were offering, among others, banking and financial services provided by Complainant's competitors.
Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The disputed domain names <impresasanpaolo.com> and <intasasanpaolo.com> are confusingly similar to its trademarks.
Complainant states that the disputed domain name <intasasanpaolo.com> reproduces the distinctive terms “intesa sanpaolo” in which Respondent changed the letter “e” with an “a” and thus Respondent engaged in typosquatting.
Further, for the domain name <impresasanpaolo.com> Respondent has reproduced exactly the trademark SANPAOLO with the addition of the generic term “impresa” which means “company” in the Italian language.
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names:
- Complainant never granted Respondent the right to use the trademarks INTESA SANPAOLO or SANPAOLO;
- The disputed domain names do not reflect Respondent's name and Respondent is not known by any of these names;
- The use of the disputed domain names is not fair or noncommercial.
(iii) The domain names were registered and are being used in bad faith:
- By registering the disputed domain names Respondent has intentionally attempt to attract, for commercial gain, Internet users on its website, by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the website;
- Due to the fact that Complainant's trademarks INTESA SANPAOLO and SANPAOLO are distinctive, the registration of confusingly similar domain names leads to the indication that Respondent was aware of Complainant's trademarks;
- Each of the disputed domain names is connected to a website sponsoring, among others, banking and financial services, for which Complainant's trademarks are protected;
- While searching for information regarding Complainant, Internet users will be directed to the websites of Complainant's competitors thus causing significant damages to Complainant;
- Respondent's commercial gain is clear, given the fact that the sponsoring activity is remunerated.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel to “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 applicable.”
In accordance with paragraph 4(a) of the Policy, Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent does not hold rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used by Respondent in bad faith.
There are two requirements that a Complainant must establish under this paragraph, namely: that it has rights in a trademark, and that the disputed domain names are identical or confusingly similar to the mark.
Complainant holds registrations for the INTESA SANPAOLO and SANPAOLO trademarks.
The Panel finds that the <impresasanpaolo.com> domain name is confusingly similar to Complainant's trademark SANPAOLO as (i) it incorporates the mark in its entirety, and (ii) the prefix added is a generic term, “impresa”, which means “company” in the Italian language, and Italy is the place where Complainant is headquartered.
As previous UDRP panels have concluded, the addition of generic words to a trademark in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the disputed domain name as being connected to the respective complainant (See Quixstar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL (a/k/a P.E.P.S.I) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).
Further, the disputed domain name <intasasanpaolo.com> is confusingly similar to Complainant's trademark INTESA SANPAOLO, as it reproduces it almost exactly, with a difference of one letter. The visual similarity between the trademark and the disputed domain name, and the confusion for the Internet user, is high given the length of the trademark reproduced, INTESA SANPAOLO.
It was well established by previous UDRP panels that the intentional misspelling of a complainant's mark (also called “typosquatting” or ”typo-piracy”) will not escape a finding of confusing similarity between a trademark and a domain name that incorporates the former with a simple misspelling (see GEOCITIES v. GEOCIITES.COM, WIPO Case No. D2000-0326; Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441).
For all the above, the Panel finds that the first element of the Policy is established, and Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).
Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with Respondent and has not granted Respondent any right to register and use its trademarks. Accordingly, the burden shifts to Respondent to come forward with evidence to demonstrate its rights or legitimate interests in the disputed domain names.
Respondent did not participate in this proceeding, and therefore it has failed to rebut Complainant's prima facie showing that it has no rights or legitimate interests in the disputed domain names.
Analyzing the example defenses provided under paragraph 4(c) of the Policy, the Panel could not find (i) any demonstrable preparations to use the domain names in a bona fide manner before any notice of the dispute; (ii) evidence attesting the fact that Respondent is commonly known by the domain names; or (iii) evidence that Respondent is making a legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
To the contrary, the websites corresponding to the disputed domain names provide sponsored listings for various services, including those of Complainant's competitors.
For these reasons, the Panel finds that the second element of the Policy is established, and Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).
Under this heading, Complainant must prove both registration and use in bad faith.
The registration of two similar domain names incorporating distinctive trademarks in the same day, one containing a generic word and the other a misspelling, leaves no doubt in the eyes of the Panel with regard to Respondent's knowledge of Complainant's trademarks and trade name at the time Respondent registered the disputed domain names.
Another sign of bad faith registration and use can be inferred from Respondent's lack of reaction in the present procedures, and the fact that the communication of the case-related documents was made relatively difficult, despite the Center's best efforts, by Respondent's apparent failure to maintain accurate WhoIs data. Although the Center's email communications appear to have been successfully transmitted, the courier delivery of the Center's Written Notice document apparently did not reach Respondent, due to the fact that the contact details were not accurate. This fact was surprising to the Panel, as the domain names were registered rather recently, less than one year prior to the commencement of these proceedings.
Along with other circumstances in a case, the supplying of an incorrect or incomplete address by the respondent to the registrar can be considered sign of bad faith (See Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228; Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550; Francesco Totti v. Jello Master, WIPO Case No. D2002-0134; BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413).
Further, the use of the domain names for sponsored listings falls into the typical situation provided by paragraph 4(b)(iv) of the Policy for the registration and use of a domain name in bad faith, namely:
“by using the domain name[s], you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site[s] or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site[s] or location or of a product or service on your web site[s] or location.”
Respondent's use of the disputed domain names with the intention to attract Internet users for commercial gain is established by the sponsored links on its websites.
The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain names are confusingly similar to the INTESA SANPAOLO, SANPAOLO and INTESA SANPAOLO IMPRESE trademarks, as well as to Complainant's own domain names.
The fact that the websites corresponding to the disputed domain names include links to sites offering competing services to Complainant aggravates the likelihood of confusion (See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912) and the damages caused to Complainant by diverting its consumers to competitors and diluting its trademarks.
For all these reasons, the Panel finds that the third element of the Policy is established, and that the disputed domain names were registered and are being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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, <impresasanpaolo.com> and <intasasanpaolo.com> be transferred to Complainant.
Dated: July 19, 2010