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

Case No. D2011-1478

1. The Parties

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

Respondents are Above.com Domain Privacy of Victoria, Australia and Transure Enterprise Ltd of 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 <impresesanpaoloimi.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 1, 2011. On September 1, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 2, 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 Complainant on September 12, 2011 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 on September 14, 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 Respondents of the Complaint, and the proceedings commenced on September 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2011. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on October 6, 2011.

The Center appointed Sandra A. Sellers as the sole panelist in this matter on October 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

Complainant is a leading Italian banking group. It resulted from the merger of Banca Intesa SpA and Sanpaolo IMI SpA. Complainant has a market capitalization of 31.8 billion euro, with 5,500 branches and 11 million customers in Italy, and 1,700 branches and 8.5 million customers in Central-Eastern Europe, as well as an international network in 29 countries.

Complainant owns Italian and International trademark registrations for the mark SANPAOLO IMI.COM, granted in October 2001, as well as Community trademark registrations for SAN PAOLO IMI and INTESA SANPAOLO IMPRESE, granted as early as July 2000. Complainant also has registered and uses the domain name <imprese.intesasanpaolo.com>.

Respondents registered the disputed domain name <impresesanpaoloimi.com> on March 11, 2011. The website contains links to various other sites that offer banking services, including Intesa Sanpaolo (Annex H of the Complaint).

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s mark SANPAOLO IMI.COM in its entirety, combined with the generic word “imprese”, which means “companies” in Italian. Complainant further alleges that Respondents have no rights or legitimate interests in the disputed domain name, and that they registered and use the disputed domain name in bad faith.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

As set forth above, Complainant owns Italian and International trademark registrations for the mark SANPAOLO IMI.COM, granted in October 2001, as well as Community trademark registrations for SAN PAOLO IMI and INTESA SANPAOLO IMPRESE, granted as early as July 2000. Consequently, the Panel finds that Complainant has rights in the marks alleged to be contained in the disputed domain name. Complainant also has registered and uses the domain name <imprese.intesasanpaolo.com>. Complainant utilizes these marks and domain name to identify and promote its banking services.

Respondents registered the disputed domain name <impresesanpaoloimi.com> on March 11, 2011. The website contains links to various other sites that offer banking services, including Intesa Sanpaolo (Annex H of the Complaint).

The disputed domain name incorporates Complainant’s mark in its entirety, with the addition of the generic word “imprese.” Many panels have held that the addition of a generic term does not sufficiently distinguish the disputed domain name from a complainant’s mark as to avoid confusing similarity with complainant’s mark.

In particular, this dispute is strikingly similar to Intesa Sanpaolo S.p.A. v. Novacek Martin, WIPO Case No. D2010-0853, in which the panel ordered that the domain name <impresasanpaolo.com> be transferred to Complainant. Further, this dispute is also strikingly similar to several other UDRP cases between Complainant and Respondents involving the SANPAOLO IMI.COM or SANPAOLO marks, all of which were transferred to Complainant (Annex O of the Complaint). See Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy/Transure Enterprise Ltd, Host Master, WIPO Case No. D2011-0291, Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2011-0228, Intesa Sanpaolo S.p.A. v. Transure Enterprise Ltd, WIPO Case No. D2009-1395, Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2009-0838, and Intesa Sanpaolo S.p.A. v. Transure Enterprise Ltd, WIPO Case No. D2008-1754.

Accordingly, the Panel finds that Complainant has rights in the mark and that the disputed domain name is confusingly similar to Complainant’s mark and that Complainant has established the first of the three elements that it must prove.

B. Rights or Legitimate Interests

Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP decisions have found it sufficient for a complainant to make a prima facie showing of its assertion.

Respondents are not affiliated with or related to Complainant, nor are Respondents licensed or authorized to use the SAN PAOLO IMI.COM mark or SANPAOLO marks. On the evidence before the Panel, Respondents do not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondents’ lack of rights or legitimate interests in the disputed domain name.

Respondents are in default, and have not provided any evidence in their own favor.

The Panel finds that the evidence is sufficient to establish that Respondents have no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

It is clear that Respondents knew of Complainant’s marks when they registered the disputed domain name, due at least to the previous other UDRP cases between Complainant and Respondents involving the SANPAOLO IMI.COM or SANPAOLO marks, all of which were transferred to Complainant. See Intesa Sanpaolo SpA v. Above.com Domain Privacy/Transure Enterprise Ltd, Host Master, WIPO Case No. D2011-0291, Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2011-0228, Intesa Sanpaolo S.p.A. v. Transure Enterprise Ltd, WIPO Case No. D2009-1395, Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / Transure Enterprise Ltd, WIPO Case No. D2009-0838, and Intesa Sanpaolo S.p.A. v. Transure Enterprise Ltd, WIPO Case No. D2008-1754. It also can be inferred that Respondents knew of Complainant’s marks due to the size and wide-spread nature of Complainant’s banking services.

Under paragraph 4(b)(iv) of the Policy, the Panel may find that a respondent has used the disputed domain name in bad faith if “[respondent] has intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”. It is now a well-known practice to display on a web page or search engine various links to other commercial websites under a pay-per-click commission scheme: every link activated by an Internet user enables the host to collect financial remuneration proportional to the number of connections. See, e.g., Deutsche Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2004-1078. Here, the disputed domain name resolves to a website that contains links for banking services, including to Intesa Sanpaolo (Annex H of the Complaint), all for the commercial benefit of Respondents. Respondents’ use of the disputed domain name clearly is an attempt to create confusion to attract Internet users to Respondents’ website for commercial gain from click-through revenue generated by the sponsored links.

Moreover, these Respondents have been named in five other UDRP cases involving the SANPAOLO IMI.COM or SANPAOLO marks, and were Respondents in over sixty other WIPO UDRP disputes (Annex O of the Complaint). Respondents have clearly engaged in a pattern of bad faith, which many previous Panels have found satisfies paragraph 4(b)(ii) of the Policy.

This Panel finds that Respondents have registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(ii) and 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <impresesanpaoloimi.com> be transferred to Complainant.

Sandra A. Sellers
Sole Panelist
Dated: October 31, 2011

 

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