World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Ni How

Case No. D2012-1524

1. The Parties

1.1 The Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, (the “Complainant”) represented by Perani Pozzi Tavella, Italy.

1.2 The Respondent is Ni How, Nanjing, China (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed Domain Name <instesasanpaolo.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the”Center”) on July 27, 2012. On July 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On July 27, 2012, the Registrar 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 August 15, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 20, 2012.

3.2 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”).

3.3 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 August 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2012.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on October 2, 2012. 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

4.1 The Complainant in these administrative proceedings is Intesa Sanpaolo S.p.A of Piazza San Carlo Torino, an Italian Corporation and is described as one of the leading Italian Banking concerns in the European financial arena with a market capitalisation in excess of 29.8 billion Euros. The Complainant is said to have a network of approximately 5,700 branches throughout Italy and 2000 branches in Central – Eastern Europe and supports corporate customers in other countries where Italian companies are most active such as the United States of America, the Federal Russian Republic, China and India.

4.2 The Complainant owns trademark registrations for the trademark INTESA SANPAOLO listed as follows:

- International trademark registration no. 920896 INTESA SANPAOLO granted on March 7, 2007 in classes 9, 16, 35, 36, 38,41and 42;

- Community trademark registration no. 5301999 INTESA SANPAOLO granted on June 18, 2007 in classes 35, 36 and 38;

- Italian trademark registration no. 1042140 INTESA SANPAOLO granted on March 7, 2007 in classes 9, 16, 35, 36, 38, 41, and 42.

4.3 The Complainant also owns the following domain names with the name: “Intesa Sanpaolo”; <intesasanpaolo.com>; also the generic top level descripers “.org”, “.eu”, “.info”, “.net”, “.biz” and with the “domain name <intesa-sanpaolo.com> also for, “.org”, “.eu”, “.info”, “.biz”; which is all connected to the Complainant’s official website at ”www.intesasanpaolo.com”.

4.4 The Respondent in these administrative proceedings is Ni How based in Nanjing China and registered the disputed Domain Name <instesasanpaolo.com> with the Registrar known as Above. Com Pty Ltd according to printouts from database searches conducted on July 24, 2012, on March 2, 2012.

4. 5 The language of the registration agreement is English as such the proceedings shall be conducted in English Language.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the disputed Domain Name <instesasanpaolo.com> is confusingly similar to the Complainant’s trademarks in that the disputed Domain Name exactly reproduces the Complainant’s trademark INTESA SAN PAOLO with the addition of the letter “s” in the first component “intesa”. The Complainant asserts that this is a clear example of a case of typosquatting, where as in this case the disputed Domain Name is a slight alphabetical variation from a famous mark. The Complainant refers to WIPO decision Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314 where the panel found the disputed domain names <duetschebank.com> and <duetsche-bank.com> to be confusingly similar to the registered mark “DEUTSCHE BANK” owned exclusively by Deutsche Bank the Complainant in that case.

5.2 The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed Domain Name as the Respondent has not been authorized or licensed by the Complainant to use its mark in the disputed Domain Name in question. The Complainant also argues that the Respondent is not commonly known as “Instesasanpaolo” and is not making a legitimate noncommercial or fair use of the disputed Domain Name.

5.3 As regards the question of registration and the use in bad faith, the Complainant submits that the fact that the Respondent registered a 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 registering the disputed Domain Name. It is argued that it is more than likely that the disputed Domain Name would not have been registered if it were not for the distinctive and well known features of the Complainant’s trade mark around the world. Accordingly, the Complainant submits that the mere fact of registration of the disputed Domain Name is undoubtedly clear evidence of registration of the disputed Domain Name in bad faith. Secondly, the Complainant contends that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating the likelihood of confusion with the Complainant’s trademark as to the source, sponsorship affiliation or endorsement of the website. Thirdly, the disputed Domain Name is connected to a website sponsoring among others, banking and financial services, therefore, it is argued Internet users while searching for information on the Complainant’s services are confusingly led to the websites of the Complainant’s competitors sponsored on the websites connected to the disputed Domain Name. Therefore, the Complainant concludes that the Respondent has registered and is using the disputed Domain Name in order to intentionally divert traffic away from Complainant’s website

5.4 The Complainant has referred to a number of previous WIPO and NAF UDRP decisions where it was held 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. Some of those decisions include Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 where the respondent’s mis-spelling of the Complainant’s “www.britannica.com site and hyperlink to a gambling website was held to demonstrate bad faith use and registration. See also Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319 where it was held that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitutes bad faith registration and use under the policy; and Marriott International, Inc. v. Kyznetsov NAF Claim No. FA 0009000095648 where a finding of bad faith was made where the respondent registered the domain name <marriottrewards.com> and used it to route traffic to another website that promotes travel and hotel services similar to services offered by the complainant in this case.

5.5 The Complainant further contends that the Respondent’s current use of the disputed Domain Name causes great damage to the Complainant due to the misleading of their current clients and the loss of potential new clients. The Complainant relies on the case of Microsoft Corporation v. Stepweb, WIPO Case No. D2000 1500 in this regard amongst others to assert that the Respondent’s conduct is even worse. In further support of the Complainant’s contentions, the Complainant has attached a list of sixty five previous WIPO UDRP decisions concerning the Complainant where panelists have ordered the transfer or cancellation of the disputed domain names after detecting bad faith registrations. The Complainant finally points out that the Respondent’s commercial gain is evident as it is obvious that the Respondent is being remunerated for its sponsoring activity.

B. Respondent

5.6 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

6.1 Under paragraph 4(a) of the Policy, to succeed in these administrative proceedings the Complainant must prove: (i) that the disputed Domain Name is identical or confusingly similar to the trademark or service mark which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name; and (iii) that the disputed Domain Name has been registered and is being used in bad faith.

6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in these proceedings.

A. Identical or Confusingly Similar

6.3 The Panel finds from the unchallenged facts, and without any hesitation, that the disputed Domain Name, <instesasanpaolo.com> is confusingly similar to the Complainant’s globally known trademark INTESA SANPAOLO in the banking and financial sector. The confusing similarity finding also applies to other domain names owned by the Complainant such as <intesasanpaolo.com> or <intesasanpaolo.org> among others. The Panel accepts just as the Complainant argues that this is a clear case of typosquatting. The Panel finds that the sole addition of the letter “s” to the first component “INTESA” does absolutely nothing to preclude a finding of confusing similarity. The Panel in this regard draws support from the decision in Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, Supra cited by the Complainant. In that case the panelists considered the disputed domain names namely <duetsche-bank.com> and <duetschebank.com> to be confusingly similar to the complainant’s well known Deutsche Bank trademark. Upon finding that a case of typosquatting had been established by the complainant, the panelists commented as follows: “this is a case of ‘typosquatting’ where the domain name is a slight alphabetical variation from a famous mark. WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user–particularly when the mark is another language from that of the user’s mother tongue.” This Panel accordingly finds both the finding and comment of the panellists in this case most relevant and applicable to the case at hand.

6.4 The Panel is therefore satisfied that the Complainant has established that the disputed Domain name <instesasanpaolo.com> is confusingly similar to the Complainant’s INTESA SANPAOLO trademark and indeed domain names owned by the Complainant.

B. Rights or Legitimate Interests

6.5 The Panel equally finds that the Respondent has failed to provide any concrete evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4 (c) of the Policy. As the Complainant submits, the Respondent has not been authorized or licensed by the Complainant to use the disputed Domain Name. There is no evidence to suggest that the Respondent is affiliated or connected to the Complainant.

6.6 From the adduced evidence in the form of website printouts, the Panel is satisfied that the Respondent is using the disputed Domain Name to misleadingly divert Internet users and potential customers of the Respondent to its website for its own commercial gain. The Panel therefore finds that such unauthorized usage cannot be described as a bona fide offering of goods and services nor a legitimate non-commercial or fair use of the disputed Domain Name. See generally, Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903.

6.7 In the circumstances the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.8 The Panel finds in addition that the Respondent registered the disputed Domain Name in bad faith and continued to engage in bad faith use. The Panel has taken into account a number of irrefutable factors before arriving at this conclusion. In the first instance, the Panel finds that the Respondent must have known or ought to have known of the Complainant’s world-wide exclusive rights in the INTESA PAOLO trademark since March 2007 considering that the Respondent decided to register the disputed Domain Name on March 2, 2012 almost five years later. As contended by the Complainant it is more than likely that the Respondent would not have registered the disputed Domain Name if not for the distinctive and well known feature of the Complainant’s trademark. Secondly, the Panel finds that the disputed Domain Name is connected to a website that is sponsoring the websites of the Complainant’s competitors in the banking and financial sector, thus the disputed Domain Name is being deployed to intentionally divert Internet users away from the Complainant’s website. As argued by the Complainant the diversion of Internet users from the Complainant’s website either for the Respondent’s commercial gain or to the Complainant’s competitors’ websites causes great damage to the Complainant due to the misleading of present clients and the loss of potential new clients. The Complainant has referred to numerous WIPO and NAF UDRP decisions in support of the contention that the registration and use of a disputed domain name for the re-direction of Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy. See for instance Encyclopaedia Britannica Inc. v. Shedon.com, supra where the respondent’s ownership of a disputed domain name which was made up of the Complainant’s mis-spelt britannica.com site which the respondent hyperlinked to a gambling website was held to be indicative of the respondent’s bad faith registration and use under the Policy. See also Marriott International, Inc. v. Kyznetsov, supra where the panel found bad faith registration and use where a respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website promoting travel and hotel services similar to the services offered by the complainant in that case.

6.9 Thirdly, the Panel finds that the Respondent’s use of the disputed Domain Name constitutes initial interest confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Fourthly, the Complainant has produced a list of about sixty five previous WIPO UDRP decisions where findings of bad faith registrations and use have been made in favour of the Complainant in the past. Fifthly, as alluded to in paragraph 5.6 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to rebut the evidence and submissions provided by the Complainant in these proceedings.

7. Decision

7.1 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, <instesasanpaolo.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Dated: October 16, 2012

 

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