World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Ho Nim

Case No. D2010-2236

1. The Parties

The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy represented by Perani Pozzi Tavella, Italy.

The Respondent is Ho Nim of Shanghai, the People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <intesasnapaolo.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2010. On December 22, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 23, 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 January 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2011.

The Center appointed Harry L. Arkin as the sole panelist in this matter on February 18, 2011. 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

The Complainant registered the international trademark INTESA SANPAOLO originally on March 7, 2007, in several classes, previously as European Country trademark application on September 8, 2006 in some of the same classes, and on February 2, 2007 as an Italian trademark; all of the foregoing was granted in 2007. On November 16, 2009 the Respondent registered the disputed domain name <intesasnapaolo.com>.

The Complainant contends that the disputed domain name is factually and legally confusingly similar to the trademark registered by the Complainant as outlined above, the only difference being the inversion of the letters “a” and “n” in the middle of the wording. Also the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name which was registered and is being used in bad faith.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

a) The disputed domain name is confusingly similar to the trademarks granted to the Complainant over two (2) years prior to the registration by the Respondent of the disputed domain name, and

b) The Respondent has no rights or legitimate interests in the disputed domain name, and

c) The Respondent has used the disputed domain name in bad faith in an effort, for commercial gain, as the Respondent allegedly has in “a” lot of similar cases in which they (the Respondent) registered domain names constituting variations of very famous marks”.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel decides and finds the following:

(1) The Panel finds and decides that the disputed domain name <intesasnapaolo.com> is confusingly similar to the trademarks granted to the Complainant over two (2) years prior to the registration by the Respondent of the disputed domain name.

(2) The Respondent has not responded to the Complaint, and the Panel finds and decides that the Respondent has no rights or legitimate interests in the disputed domain name.

(3) The Panel finds and decides that the Respondent registered and used the disputed domain name in bad faith as it allows access to the websites of potential competitors of the Complainant and is, or potentially is misleading and the basis of loss or damage to the Complainant resulting from the apparent prior similar efforts of the Respondent.

A. Identical or Confusingly Similar:

The Panel finds that the disputed domain name <intesasnapaolo.com> is confusingly similar to the trademarks granted to the Complainant over two (2) years prior to the registration by the Respondent of the disputed domain name.

B. Rights or Legitimate Interests:

The Respondent has not responded to the Complaint and is therefore in default. The Complainant has provided the Panel with sufficient evidence to demonstrate a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not rebutted such prima facie case and the Panel thus finds and decides that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith:

The disputed domain name was registered after the Complainant had registered its INTESA SANPAOLO trademark and has been used as a pay-per-click website which contains commercial links to third-party websites. The Panel thus finds and decides that the Respondent registered and used the disputed domain name in bad faith as it allows access to the websites of potential competitors of the Complainant and is, or potentially is misleading and the basis of loss or damage to the Complainant resulting from the apparent prior similar efforts of the Respondent.

7. Decision

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 <intesasnapaolo.com> be transferred to the Complainant.

Harry L. Arkin
Sole Panelist
Dated: March 22, 2011

 

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