World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master

Case No. D2011-0291

1. The Parties

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

The Respondent is Above.com Domain Privacy / Transure Enterprise Ltd, Host Master of Beaumaris, Victoria, Australia and Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and MediationCenter (the “Center”) on February 11, 2011. On February 11, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 14, 2011, 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 the Complainant on February 15, 2011 providing the registrant and contact information disclosed by Above.com, Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 18, 2011.

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 the Respondent of the Complaint, and the proceedings commenced on February 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2011.

The Center appointed Gregory N. Albright as the sole panelist in this matter on March 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 is the owner of the following trademark registrations:

International Registration No. 814852 in class 36 for SANPAOLO & DEVICE, issued on September 26, 2003;

Community Registration No. 3252764 in class 36 for SANPAOLO & DEVICE, issued on January 27, 2005; and

Community Registration No. 5686696 in classes 35, 36 and 38 for INTESA SANPAOLO IMPRESE, issued on January 8, 2008.

The Respondent registered the disputed domain name <sanpaolomprese.com> on July 1, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant is a leading Italian banking group, formed through the January 1, 2007 merger of Banca Intesa, S.p.A. and Sanpaolo IMI S.p.A. The Complainant has a network of 5,900 branches in Italy, offering its services to approximately 11.3 million customers.

The Complainant is also among the top banking groups in the euro zone, with a market capitalization of more than EUR 31.8 billion. The Complainant has a strong presence in Central-Eastern Europe with a network of approximately 2,000 branches, and over 8.5 million customers. This international network also supports corporate customers in 29 countries, in particular the Mediterranean area and other areas where Italian companies are most active, e.g., the United States of America, the Russian Federation, the People’s Republic of China, and India.

The disputed domain name is confusingly similar to the Complainant’s SANPAOLO and INTESA SANPAOLO IMPRESE trademarks. The domain name <sanpaolomprese.com> reproduces the SANPAOLO mark exactly, adding only “mprese” -- which is a misspelling of the generic term “imprese” (“companies” in Italian). Adding a generic term like “imprese” to a trademark in a domain name does not prevent a finding that the domain name is confusingly similar to the trademark. Reuters Limited v. Global Net 2000 Inc., WIPO Case No. D2000-0441 ; Arthur Guinness Son & Co. (Dublin) Ltd. v. Steel Vertigogo, WIPO Case No. D2001-0020. The disputed domain name is also confusingly similar to the INTESA SANPAOLO IMPRESE trademark, and the Complainant’s <imprese.intesasanpaolo.com> domain name. Intesa Sanpaolo S.p.A. v. Novacek Martin, WIPO Case No. D2010-0853.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent to make any use of the SANPAOLO or INTESA SANPAOLO IMPRESE trademarks. Nor does the disputed domain name correspond to the name of the Respondent, or constitute a name by which the Respondent is commonly known. No fair, noncommercial uses of the disputed domain name are at stake.

The disputed domain name was registered and is being used in bad faith. The Complainant’s SANPAOLO and INTESA SANPAOLO IMPRESE trademarks are distinctive, and the Respondent’s registration of a confusingly similar domain name indicates that the Respondent had knowledge of the Complainant’s marks when it registered the disputed domain name. In addition, the disputed domain name is not being used for any bona fide purpose. To the contrary, the website to which the disputed domain name resolved at the time of the Complaint provided links to banking and financial services of the Complainant’s competitors. Thus, Respondent registered and is using the disputed domain name intentionally to divert traffic away from the Complainant’s website to the websites of the Complainant’s competitors, resulting in financial gain for the Respondent. Numerous UDRP decisions have recognized that such actions constitute bad faith registration and use under the Policy.

The Respondent’s registration and use of the disputed domain name causes harm to Complainant because it misleads the Complainant’s present clients and threatens the loss of new clients. This kind of harm is particularly acute for a large financial institution like the Complainant because it has a large number of online banking users. By providing links to other websites the Respondent is reaping commercial gain from its use of the disputed domain name.

Finally, the Respondent has made a regular practice of typo-squatting, i.e., registering and using domain names that are a variation of famous trademarks. Moreover, according to the Complainant’s search of UDRP records, the Respondent Transure Enterprise Ltd has been named as a Respondent in more than 50 prior UDRP cases. See, e.g, F. Hoffman-La Roche AG v. Above.com Domain Privacy/Shu Lin, Shu Lin Enterprises Limited/Host Master, Transure Enterprise Ltd, WIPO Case No. D2010-1986; LEGO Juris A/S v. Shu Lin/Transure Enterprise Ltd/Above.com Domain Privacy, WIPO Case No. D2010-1648 (finding that Transure Enterprise Ltd’s involvement in numerous prior UDRP proceedings supported a clear finding of registration and use in bad faith).

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it owns trademark rights in the SANPAOLO and INTESA SANPAOLO IMPRESE trademarks. Among other things, the Complainant has submitted evidence that it obtained trademark registrations that pre-date the Respondent’s registration of the disputed domain name.

The disputed domain name <sanpaolomprese.com> is confusingly similar to the Complainant’s trademark SANPAOLO. The MPRESE component of the disputed domain name is merely a misspelling of the generic term “imprese”. The predominant component of the disputed domain name is “sanpaolo”, which is identical to the Complainant’s SANPAOLO trademark. Further, the disputed domain name is also similar to the Complainant’s INTESA SANPAOLO IMPRESE trademark, although to a lesser degree. The disputed domain name in this case does not include the “intesa” component, but it does include both the SANPAOLO trademark and the “imprese” component, albeit with the omission of the initial “i”. It nevertheless appears that the disputed domain name was intended to include elements that are confusingly similar to the Complainant’s marks.

This Panel finds that the Complainant has established the first element.

B. Rights or Legitimate Interests

The Complainant has also made an adequate prima facie showing that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant’s marks bear no resemblance to the Respondent’s name, and there is no evidence that the Respondent is otherwise commonly known as “sanpaolomprese”. The Complainant also certifies that it has not licensed or otherwise granted the Respondent permission to use its marks. The web page to which the disputed domain name resolves manifests the Respondent’s intent to capitalize upon use of the Complainant’s trademarks for commercial gain, rather than for any legitimate noncommercial or otherwise fair use.

The Respondent did not come forward with any evidence that it has any rights or legitimate interests in respect of the disputed domain name.

This Panel finds that the Complainant has established the second element.

C. Registered and Used in Bad Faith

The Complainant has shown that its registrations of the SANPAOLO and INTESA SANPAOLO IMPRESE trademarks pre-date the Respondent’s registration of the disputed domain name. The Complainant’s seniority, together with evidence of its extensive market presence, lead to the conclusion that the Respondent must have registered the disputed domain name with knowledge of the Complainant’s marks, and adopted the disputed domain name intentionally to trade on the goodwill associated with the Complainant’s marks.

The Respondent’s adoption of a domain name that is identical to the Complainant’s SANPAOLO trademark – except for the addition of a misspelling of the generic “imprese” – is also indicative of bad faith. The Respondent likewise adopted a domain name that includes the SANPAOLO and IMPRESE components of the INTESA SANPAOLO IMPRESE mark. It therefore appears that the Respondent sought intentionally to come as close as possible to the Complainant’s trademarks for the purpose of diverting Internet traffic from the Complainant’s website to the Respondent’s website.

Further, at the time the Complaint was filed, the Respondent’s website posted links to the websites of the Complainant’s competitors. It is bad faith to use a domain name that is confusingly similar to a trademark, without the consent of the trademark owner, in a manner that causes competitive injury. The injury is particularly acute in this case, in which the Complainant provides some of its banking services online. That the Respondent is likely profiting from this misconduct further supports a finding of bad faith.

The frequency with which the Respondent has been a party in prior UDRP proceedings likewise supports a finding of bad faith on the part of the Respondent in this case as well.

This Panel finds that the Complainant has established the third element.

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 <sanpaolomprese.com> be transferred to the Complainant.

Gregory N. Albright
Sole Panelist
Dated: April 3, 2011

 

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