WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Ni Hao/Two Stooges LLC
Case No. D2011-1640
1. The Parties
Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Ni Hao and Two Stooges LLC, both of Nanjing, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name is <intesasanaplo.com> which is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2011. On September 27, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On September 29, 2011, Moniker Online Services, LLC 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 October 5, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On October 7, 2011, Complainant filed with the Center an amendment to the Complaint.
The Center verified that the Complaint, as amended, 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 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on November 29, 2011. This Panel finds that it was properly constituted. This 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 banking and finance institution from Torino, Italy.
Complainant has rights over the INTESA SANPAOLO trademark, for which it holds several trademark registrations, such as: registration No. 920896 with the World Intellectual Property Organization, registered on March 7, 2007, classes 9, 16, 35, 36, 38, 41 and 42; registration No. 5301999 with the European Office for Harmonization in the Internal Market, registered on June 18, 2007, classes 35, 36 and 38.
The disputed domain name was created on February 11, 2011.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows:
Complainant 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. Complainant is the leading Italian banking group and also one of the protagonists in the European financial arena, with an international network specialized in supporting corporate customers in 29 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, China and India.
The disputed domain name is confusingly similar to Complainant’s INTESA SANPAOLO trademark.
The disputed domain name exactly reproduces the trademark INTESA SANPAOLO, with the sole differences of the inversion of the letters “p” and “a” and the omission of the letter “o” in the second part SANPAOLO. It is clear, therefore, that the disputed domain name is confusingly similar with Complainant’s mark, which clearly is a minor variation of Complainant’s trademark used to identify its online banking service.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Neither Respondent nor anyone else within the context has rights on the disputed domain name, since Respondent has nothing to do with Complainant. In fact, any use of the trademark INTESA SANPAOLO has not been authorized by 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 Respondent and, to the best of Complainant’s knowledge, Respondent is not commonly known by the disputed domain name.
Complainant did not find any fair or non commercial uses of the disputed domain name.
The disputed domain name was registered and is being used in bad faith.
Complainant’s trademark INTESA SANPAOLO is distinctive and the fact that Respondent has registered a domain name that is confusingly similar to it indicates that Respondent had knowledge of Complainant’s trademark at the time of registration of the disputed domain name.
There are circumstances indicating that, by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website.
The disputed domain name is not used for any bone 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 Complainant’s trademark is registered and used; Internet users, while searching for information on Complainant’s services, are confusingly led to the websites of Complainant’s competitors, sponsored on the websites connected to the disputed domain name. Several UDRP panel 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.
According to Complainant, Respondent’s commercial gain is evident, since it is obvious that Respondent’s sponsoring activity is being remunerated.
Complainant has already been part of other UDRP cases where the panels have ordered the transfer or the cancellation of the disputed domain names, detecting bad faith in the registrations.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainanti. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the INTESA SANPAOLO trademark.
The disputed domain name incorporates almost identically the INTESA SANPAOLO trademark. The only differences between Complainant’s trademark and the disputed domain name are the inversion of letters “p” and “a” and the omission of letter “o” in SANPAOLO. Such variations are not enough to neither avoid confusing similarity nor prevent the likelihood of confusion. Prior UDRP panel decisions support this Panel’s view (Pfizer Inc., A Delaware Corporation v. Phizer’s Antiques and Robert Phizer, WIPO Case No. D2002-0410; Sanofi-aventis v. Transure Enterprise Ltd, Host Master, WIPO Case No. D2008-1636).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s INTESA SANPAOLO trademark.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has never authorized Respondent to use the INTESA SANPAOLO trademark, in the disputed domain name or otherwise, that Respondent is not associated with Complainant, that the disputed domain name does not correspond to the name of Respondent and that Respondent is not commonly known by the disputed domain name.
Complainant contends that Respondent is using the disputed domain name in order to divert Internet users to a website with links leading to commercial websites relating to the banking anf finance field and thus Respondent is clearly taking advantage of Complainant’s reputation and the similarity to its trademark with the purpose of diverting Internet users through such links to other websites unrelated to Complainant’s official website.
There is evidence in the case file showing that Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links and related category links with the name of institutions and/or products competing with Complainant.
Such use of Complainant’s trademark by Respondent does not establish rights or legitimate interests of Respondent in the disputed domain name.ii
Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.iii From the documentation that is on the case file there is no indication that may lead to consider that Respondent might have rights or legitimate interests in the disputed domain name, but rather the opposite may be validly inferred. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which is almost identical to Complainant’s trademark, this Panel considers that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Taking into consideration Complainant’s international presence (including at China, country where Respondent is domiciled pursuant to the Registrar’s report), that Complainant’s registration and use of its trademark preceded the creation of the disputed domain name, that Complainant’s trademark is composed of two words which confers to it certain distinctivenessiv, and the content of the website associated to the disputed domain name, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant and Complainant’s trademark at the time it obtained the registration of the disputed domain name.
The use of a domain name for a website which generates pay-per-click revenue is not, per se, evidence of bad faith. However, where the disputed domain name incorporates another’s trademark, coupled with just a minor typographical error variation (practice commonly known as “typosquatting”v), and where the website associated to the disputed domain name shows sponsored links to competitors, there is no doubt that Respondent is intentionally attempting to attract Internet users for financial gain creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name, when in fact there is no such connection.vi
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <intesasanaplo.com> be transferred to Complainant.
Dated: December 13, 2011