WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Chibuize Lawrence and/ or Gino Guideti
Case No. D2011-0373
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy represented by Perani Pozzi Tavella of Italy.
The Respondent is Chibuize Lawrence and/ or Gino Guideti of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <intesaudit.info> is registered with FastDomain, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2011. On February 25, 2011, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On February 28, 2011, FastDomain, 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”). The undersigned Panel has independently determined and agrees with the Center’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and 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 March 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2011. The Respondent did not submit any response, regardless of the electronic and hard copy notifications that were sent to the Respondent’s designated address and to the billing, administrative, technical and contact information of the party listed as registrant. Accordingly, the Center notified the Respondent’s default on March 24, 2011.
The Center appointed Pedro W. Buchanan Smith as the sole panelist in this matter on March 31, 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.
This Panel further considers that the Complaint was properly notified to the registered domain name holder, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from the Complainant or the Respondent regarding submissions, waivers or extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of this proceeding is English, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is the leading Italian banking group and also one of the protagonists in the European financial arena. Intesa Sanpaolo 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.
Intesa Sanpaolo is among the top banking groups in the Euro zone, with a market capitalisation exceeding EUR 30,8 billion, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 5,900 branches well distributed throughout the country, with market shares of more than 17% in most Italian regions, the group offers its services to approximately 11,3 million customers. Intesa Sanpaolo 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 29 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States, Russia, China and India.
The Complainant is the owner, among many others, of the following registrations for the trademark INTESA:
1. Community trademark registration number 3105277 INTESA filed on March 21, 2003 and granted on February 13, 2009, in classes 16, 35, 36, 38, 41 and 42;
2. Community trademark registration number 2803773 INTESA, filed on August 7, 2002 and granted on November 17, 2003, in class 36;
3. International trademark registration number 793367 INTESA, granted on September 4, 2002, in class 36.
All the changes of the applicant’s name relating to the community and international trademark registrations have been recorded. Copy of all the documents concerning the registration of the change of the Complainant company name were enclosed as Annex E of the Complaint.
The disputed domain name <intesaudit.info> was registered on April 22, 2010,
5. Parties’ Contentions
The disputed domain name is connected to a website containing several trademarks of competitors of the Complainant, used in order to sponsor banking and financial services. Thus, the content of the website is confusing, as Intesa Sanpaolo operates in the fields of banking and financing. Given the renown of the Complainant and the distinctiveness of the trademark INTESA, the Complainant deems that the Respondent is well aware of the Complainant’s identity.
The awareness of the Complainant’s identity can be demonstrated by the fact that on January 12, 2011, the Complainant’s attorney, in the light of the bad faith in the registration and use of the disputed domain name, sent the Respondent a cease and desist letter, informing of the Complainant’s rights on the trademark INTESA and asking for the cancellation of the domain name or the voluntary transfer of the same. No reply followed to the cease and desist letter, however the domain name is still connected to the same web page.
The Complainant deems that the Respondent has registered and is using the disputed domain name in order to intentionally divert traffic away from the Complainant’s website.
Several WIPO decisions stated that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitute bad faith registration and use under the Policy. See, e.g., Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 (“respondent’s ownership of a site which is a mis-spelling of complainant’s “www.britannica.com” site and which respondent used to hyperlink to a gambling site demonstrates respondent’s bad faith registration and use of the britannnica.com domain name”); YAHOO! INC. v. David Murray, WIPO Case No. D2000-1013 (finding bad faith where respondent chooses a domain name similar to the complainant’s mark for a site which offers services similar to the complainant); Edmunds.com v. Ult Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”); NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“registration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the complainant, from the complainant’s website to the website of…a company which directly competes with the Complainant, constitutes bad faith registration and use”); Oly Holigan, L.P. v. Private, NAF Claim No. FA95940 (finding bad faith where respondent used the disputed domain name to “redirect the Complainant’s consumers and potential consumers to commercial websites which are not affiliated with Complainant”); Marriott International, Inc. v. Kyznetsov, NAF Claim No. FA95648 (finding bad faith where respondent registered the domain name <marriottrewards.com> and used it to route internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”); Zwack Unicum Rt v. Erica J.Duna, WIPO Case No. D2000-0037 (respondent’s linking to complainant’s competitor held to constitute bad faith).
The current use of the disputed domain name, which allows access to the websites of the Complainant’s competitors, also through the Complainant’s trademarks, causes, as well, great damages to the latter, due to the misleading of their present clients and to the loss of potential new ones. So, the Respondent’s conduct is even worse (see, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 and The Vanguard Group, Inc v. Venta, WIPO Case No. D2001-1335,).
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademarks. The disputed domain name <intesaudit.info> exactly incorporates the trademark INTESA, with the sole differences represented by the addition of the generic term “audit”. The omission of the letter “a” between the two words must be considered as negligible as it is a clear example of the practice of “typosquatting”. The case law has constantly affirmed that the incorporation of the entire mark in the domain name is sufficient to create confusing similarity. Especially when the word added is a generic term. In this case the term “audit”, making reference to the examination of records or financial accounts, can be surely regarded as a generic term in the banking and financial context, that is the field in which Intesa Sanpaolo is active. It has to be stressed that also the marks for INTESA are registered in connection with insurance, financial affairs, monetary affairs, real estate affairs, in class 36 and in class 35. It is clear, the Complainant submits that the Respondent’s domain name <intesaudit.info> is confusingly similar with the Complainant’s mark.
In support of the above, the Complainant refers to J.P. Morgan Chase&Co. v. CPIC Net, WIPO Case No. D2001-0385 (“The pairing of Complainant’s famous mark with generic financial services terms does not create new distinct marks but confusingly similar marks.”); The Nasdaq Stock Market, Inc. v Green Angel, WIPO Case No. D2001-1010; Bank of America Corporation v. Vox Consult; NAF Claim No. 102492 – (“respondent’s domain name, which includes Complainant’s mark in its entirety, is confusingly similar to complainant’s mark because it creates likelihood of confusion for the Internet user as to the complainant’s association with respondent’s website”); Intesa Sanpaolo S.p.A. v Intesa Sanpaolo s.p.a.,, WIPO Case No. D2009-0202, (“the domain name <intesatrading.com> is confusingly similar to complainant’s trademark INTESA because said domain name entirely incorporates complainant’s mark).
Neither the Respondent nor anyone else within the context has rights in the disputed domain name, since Chibuize Lawrence - Gino Guideti has nothing to do with Intesa Sanpaolo. In fact, the Complainant submits any use of the trademark INTESA has to be authorized by the Complainant. Nobody has been authorized or licensed by the above mentioned banking group to use the disputed domain name.
The disputed domain name does not correspond to the name of the Respondent and, to the best of the Complainant’s knowledge, Chibuize Lawrence - Gino Guideti or any underlying registrant is not commonly known as Intesaudit.
Further, the Complainant submits that the Respondent’s use of the disputed domain name is not a fair or noncommercial use
The disputed domain name <intesaudit.info> was registered and is being used in bad faith. More particularly, there are present circumstances indicating that, by using the domain name, 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 Complainant’s trademark INTESA is distinctive and the fact that the Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s trademark indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name.
The Complainant submits the disputed domain name is not used for any bona fide offerings. Several services can be detected, but not in good faith: in fact, the disputed domain name is connected to a website sponsoring, among others, banking and financial services, for which the Complainant’s trademarks are registered and used.
Therefore, Internet users, while searching for information on the Complainant’s services, are confusingly led to websites of the Complainant’s competitors, sponsored on the websites connected to the disputed domain name.
The Complainant submits the Respondent’s commercial gain is evident, since it is obvious that the Respondent’s sponsoring activity is being remunerated.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel considers that the Respondent, by registering the domain name with the Registrar (an Internet Corporation for Assigned Names and Numbers (ICANN) – accredited registrar), agreed to be bound by all terms and conditions of the domain name registrant agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the registrar’s agreement by reference), which mandates that proceedings be conducted according to the Rules and the selected administrative dispute resolution service provider’s supplemental rules, in the present case being the Supplemental Rules. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned registrar’s agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, the Respondent’s domain name registration services may be suspended, and the domain name cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such fundamental due diligence requirements, and particularly concerning the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that the Respondent’s domain name <intesaudit.info> is identical to the Complainant’s widely known INTESA trademark. The Panel notes that the Complainant’s trademark was registered significantly earlier than the date of registration of the Respondent’s domain name <intesaudit.info>.
The disputed domain name <intesaudit.info> wholly comprises the Complainant’s INTESA trademark, with the sole differences represented by the addition of the generic term “audit” and the omission of the letter “a” between the two words. This Panel also finds that the addition of the term “audit” is furthermore significant, as it was not included by chance, as such term clearly refers to the field of corporate activities in which the Complainant is involved.
Finally, the addition of the gTLD “.info”, is just a necessary element required for registration of a domain name, and is not a distinctive element.
The first element of the Policy has been met.
B. Rights or Legitimate Interests
This Panel finds, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with the Complainant’s INTESA trademark nor with the disputed domain name; that the disputed domain name is being used to intentionally misdirect to the Respondent’s website visitors who attempt to visit the Complainant’s website; that the Respondent has not used nor prepared to use the disputed domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the disputed domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel concludes that in cases, such as the present one, where the registrant intentionally (i) failed to provide its true identity or contact data (which may include the registrant’s physical address, and also the administrative, billing, technical and contact data); or, (ii) gives false or notoriously insufficient data intended to make it difficult or impossible to communicate with such registrant, and particularly to be served or notified of the initiation of an administrative proceeding against the same, the Panel may make appropriate inferences of such factors, and find those factors to be indicating bad faith. From the submitted evidence here, the Panel concludes that the Respondent has used and further intends to use the disputed domain name in bad faith. The Panel further finds that in line with ICANN Registrar Accreditation Agreement, it may be a breach of the applicable registration agreement where a registrant, inter alia, willfully provides inaccurate or unreliable contact information. In the opinion of the Panel, the evidence, as in the present case, of the existence of such inaccurate contact information may well be taken as evidence of bad faith.
The Panel furthermore finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration and use of the disputed domain name <intesaudit.info> by the Respondent is in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(iv) of the Policy, in view of the fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark INTESA, as to the source, sponsorship, affiliation or endorsement of the website "www.intesa.com”, and therefore has made bad faith use of the disputed domain name.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15(a) of the Rules, this Panel orders that the domain name <intesaudit.info> be transferred to the Complainant.
Pedro W. Buchanan Smith
Dated: April 14, 2011