WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Rampe Purda
Case No. D2010-1116
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Rampe Purda of Hailuoto, Finland.
2. The Domain Name and Registrar
The disputed domain name <impreseintesasanpaolo.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2010. On July 6, 2010, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com a request for registrar verification in connection with the disputed domain name. On July 7, 2010, Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 13, 2010. On July 14, 2010, the Center transmitted by email to the parties a communication in both Finnish and English regarding the language of proceedings. On July 15, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Center verified that the Complaint together with the amendment to 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 hfformally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2010.
The Center appointed George R. F. Souter as the sole panelist in this matter on August 16, 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.
Regarding the appropriate language of the proceedings, the Center invited the parties to comment in this regard as the default language of the proceedings is normally the same as the language of the registration agreement, which in this case is apparently Finnish. The Respondent did not comment on this question by the specified due date. The Complainant requested the Panel to decide that the language of the administrative proceedings in this case be English. According to Paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in which the registration agreement was written, having regard to the circumstances of the administrative proceeding. Therefore the Panel, taking into account the circumstances of this case and the Complainant’s submissions, decides that the language of the administrative proceedings shall be English.
4. Factual Background
The Complainant is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. It is among the top banking groups in the Euro zone, with a market capitalisation exceeding EUR 31.7 billion, and a leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 5,900 branches well distributed throughout Italy, with market shares of more than 17% in most Italian regions, the Group offers its services to approximately 12 million customers. It has a strong presence in Central-Eastern Europe with a network of approximately 2,000 branches and over 8.5 million customers. Moreover, the international network specialised in supporting corporate customers is present in 34 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States, the Russian Federation, the People’s Republic of China and India.
The Complainant has provided evidence that it is the owner, inter alia, of the following registrations for the trademarks INTESA SANPAOLO, SANPAOLO, INTESA SANPAOLO IMPRESE and LINKS SANPAOLO.
International trademark registration no. 920896 INTESA SANPAOLO, granted on March 07, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;
Community trademark registration no. 5301999 INTESA SANPAOLO, applied for on September 08, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;
International trademark registration no. 814852 SANPAOLO & device, granted on September 26, 2003, in class 36;
Community trademark registration no. 3252764 SANPAOLO & device, applied for on July 02, 2003 and granted on January 27, 2005, in class 36;
Community trademark registration no. 5686696 INTESA SANPAOLO IMPRESE, applied for on February 14, 2007 and granted on January 08, 2008, in classes 35, 36 and 38.
The disputed domain name, <impreseintesasanpaolo.com> was registered on August 14, 2009.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name, <impreseintesasanpaolo.com>, exactly reproduces the trade mark INTESA SANPAOLO IMPRESE, with the inversion only of the words "Imprese" and “Intesa Sanpaolo”, and, consequently, the disputed domain name is confusingly similar to the Complainant’s mark. The Complainant has drawn the attention of the Panel to the decisions in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Mark Bolet, WIPO Case No. D2006-1245, and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840, in which inversion of the order of words in a trademark was held not to be sufficient to avoid a finding of similarity between a domain name and a trademark.
The Complainant further alleges that the Respondent has never been authorised to use any of its trademarks INTESA SANPAOLO, SANPAOLO, or INTESA SANPAOLO IMPRESE, that the disputed domain name does not correspond to the name of the Respondent, and, to the best of the Complainant’s knowledge, the Respondent is not commonly known by the disputed domain name, and that, so far as the Complainant is aware, there has been no fair or noncommercial use of the disputed domain name.
In connection with bad faith, the Complainant alleges that its trademarks INTESA SANPAOLO, SANPAOLO, and INTESA SANPAOLO IMPRESE are distinctive and the fact that the Respondent has registered a domain name which is confusingly similar to them indicates that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. Further, the Complainant alleges that the disputed domain name is used in connection with a website sponsoring, inter alia, banking and financial services, as a consequence of which Internet users, while searching for information on the Complainant’s services, are confusingly led to the websites of the Complainant’s competitors, to the obvious commercial gain of the Respondent and damage to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the domain name of respondent be transferred to the complainant or be cancelled:
(i) the domain name is identical or confusingly similar to a trademark or service mark (“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 and is being used in bad faith.
These will be addressed in turn.
A. Identical or Confusingly Similar
The Panel agrees with the decisions in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Mark Bolet, WIPO Case No. D2006-1245, and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840, and finds them applicable to the circumstances of the present case. A mere inversion of the words comprising the Complainant’s trademark, said trademark being fully included in the textual string of the disputed domain name, is insufficient under the circumstances to avoid a finding of confusing similarity. Consequently, finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent did not take advantage of the opportunity presented in these proceedings to advance any justification of a claim to rights or legitimate interests in the disputed domain name, and the Panel thus finds the Respondent has not overcome the Complainant’s prima facie case. The Panel accepts the Complainant’s contentions under paragraph 4(a)(ii) of the Policy, and finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The name of the Respondent in the present proceedings is well-known in UDRP proceedings. In U.S. Natural Resources, Inc. v. Rampe Purda / Privacy—Protect.org, WIPO Case No. D2010-0720, the domain name was confusingly similar to the complainant’s established mark, and was used on a pay-per-click website which could have had the effect of luring potential Internet users to its competitors. In Hertz System, Inc. v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-0636, the same methodology was employed, as was also the case in LEGO Juris A/S v. Rampe Purda, WIPO Case No. D2010-0840, and in L’Oréal v. Rampe Purda / Privacy--Protect.org, WIPO Case No. D2010-0870, and in State of Florida, Department of Management Services, State of Florida, Department of the Lottery (The Florida Lottery) v. Rampe Purda / Privacy-Protect.org, WIPO Case No. D2010-0973.
The Respondent’s pattern of abusive behaviour repeats itself in the present case, and the Panel finds that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users” to its website, indicative of bad faith registration and use under paragraph 4(b)(iv) of the Policy. In the light of such a pattern of abusive behaviour associated with the name of this Respondent, the Panel has no hesitation in accepting the Complainant’s submissions in connection with registration and use in bad faith in the present case, and, accordingly, decides that the Complainant has also satisfied the test set out in paragraph 4(a)(iii) of the Policy.
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 name <impreseintesasanpaolo.com> be transferred to the Complainant.
George R. F. Souter
Dated: August 30, 2010