WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Above.Com Pty Ltd./ David Woo
Case No. D2010-1611
1. The Parties
Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Milan, Italy.
Respondent is ABOVE.COM PTY Ltd. / David Woo of Victoria, Australia; or alternatively of Hong Kong, Special Administrative Region of the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <intesasanoalo.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2010. On September 24, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 27, 2010, Above.com, Inc. 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 Complainant on September 28, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint received by the Center on September 30, 2010.
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 formally notified Respondent of the Complaint, and the proceedings commenced on October 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2010.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on October 27, 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.
4. Factual Background
Complainant is a leading Italian banking group and has a significant presence in Europe, particularly Central-Eastern Europe and the Mediterranean area, as well as the countries in which Italian companies are most active, notably the United States, Russia, China and India. Its market capitalization exceeds € 31.7 billion and it has approximately 5,900 branches in Italy serving 12 million customers and 2,000 branches in Central-Easter Europe serving 8.5 million customers.
Complainant owns, at least, the following trademarks:
International trademark registration no. 920896 INTESA SANPAOLO, which was granted on March 7, 2007 and applies to classes 9, 16, 35, 36, 38, 41 and 42;
Community trademark registration no. 5301999 INTESA SANPAOLO, which it applied for on September 8, 2006 and which was granted on June 18, 2007 and applies to classes 35, 36 and 38;
Italian trademark registration no. 1042140 INTESA SANPAOLO, which it applied for on February 2, 2007 and which was granted on March 7, 2007 and applies to classes 9, 16, 35, 36, 38, 41 and 42.
Complainant holds and actively uses, among others, the following domain names:
<intesasanpaolo.com, .org, .eu, .info, .net, .biz>
<intesa-sanpaolo.com, .org, .eu, .info, .net, .biz>
Respondent registered the disputed domain name <intesasanoalo.com> on November 16, 2009.
5. Parties’ Contentions
Complainant contends that Respondent’s use of the disputed domain name <intesasanoalo.com> is a case of typo-squatting. Although the disputed domain name does not exactly reproduce Complainant’s trademark, INTESA SANPAOLO, the changes are minor, the removal of the “p” and the inversion of the “o” and “a” in “paolo”, and Complainant cites Intesa Sanpaolo S.p.A. v. Hu Lim, WIPO Case No. D2009-1793 in support of this allegation. The panel in that matter stated that “[i]n the case of <intesasampaolo.com>, the phonetic similarity of the disputed domain name, particularly for non-Italian speakers, and the proximity of ‘m’ and ‘n’ on the QWERTY keyboard, make this a clear case of ‘typosquatting’.” Complainant argues that the current dispute is clearly categorized as the same abuse.
Complainant asserts that it has no connection with Respondent and has certainly never accorded Respondent any rights to its name or marks.
Additionally, Complainant points out that Respondent registered the disputed domain name in bad faith and uses the disputed domain name to link to competitors of Complainant in the financial sector, drawing on the recognition of its name in order to draw business away from it and towards its competitors, an obvious bad faith use.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) Respondent’s domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
It is clear that the disputed domain name <intesasanoalo.com>, while not identical, is confusingly similar to Complainant’s name and trademarks. The removal of the “p” and the inversion of the “o” and “a” in “paolo”, are minor and do not significantly differentiate the domain name from the trademarks of Complainant. When spoken, the domain name also retains much similarity with Complainant’s trademark. The disputed domain name also reproduces exactly the initial word – “intesa” – of Complainant’s corporate name and trademark. In Intesa Sanpaolo S.p.A. v. Hu Lim, WIPO Case No. D2009-1793, the panel found, due to a small manipulation in the spelling as well as phonetic similarity, the domain name to be confusingly similar. There are numerous WIPO decisions with like findings, where small misspellings do not dissipate confusing similarity (see e.g. Société Air France v. Alvaro Collazo, WIPO Case No. D2004-0446; Estée Lauder Inc. v. estelauder.com, estelauder.net, and Jeff Hanna, WIPO Case No. D2000-0869). The disputed domain name in this matter involves similar manipulations of letters in order to retain confusing similarity to the trademark while not being identical, i.e. it is a clear case of typo-squatting. Therefore, the Panel here finds that Complainant has proved paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant clearly asserts, and Respondent has not refuted, that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no demonstrated legitimate connection with “Intesa Sanpaolo” and there is no evidence that it has been authorized to make use of its trademark. Respondent has not demonstrated, and the Panel has no reason to assume, that it is commonly known by the name “Intesasanoalo”. Therefore, the Panel here finds that Complainant has sufficiently established a prima facie case for the purpose of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant contends that “by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website.” The similarity, as Complainant contends, does indicate that Respondent had prior knowledge of Complainant and its business. Indeed, though the disputed domain name does not exactly reproduce Complainant’s trademark, the evidence is that the website it leads to does, or did, contain, on numerous occasions, Complainant’s exact trademark. As Complainant points out, “the domain name is connected to a website sponsoring, among others, banking and financial services”, which is Complainant’s area of business. Complainant cites a large number of cases in support of its argument that Respondent is typo-squatting and using the domain name in bad faith; there are many other examples of this abuse, such as Go Daddy Software, Inc. v. Henry Tsung, WIPO Case No. D2004-0980, in which the panel found that “the whole conduct of the Respondent’s modus operandi can only be described as bad faith. This conclusion, which the Panel has reached, is consistent with the decisions of Administrative Tribunals in, amongst others, Yahoo! v. Eitan Zviely, WIPO Case No. D2000-0273; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Estee Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Briefing.com Inc v. Cost Net Domain Manager, WIPO Case No. D2001-0970. The principles of these citations apply here; moreover, the facts demonstrated by Complainant on their own support Complainant’s allegation of bad-faith use. It has already been established that Respondent’s domain name is confusingly similar to Complainant’s trademark and that Respondent registered the domain name after Complainant’s trademark registrations. Respondent must have had prior knowledge of Complainant and its activities at the time of registration. That Respondent uses Complainant’s trademark in the content of the website connected to the disputed domain name and provides links to Complainant’s competitors is a clear demonstration of bad-faith use. Therefore, the Panel here finds that Complainant has proved 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 domain name, <intesasanoalo.com> be transferred to Complainant.
Dated: November 3, 2010