WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Gallyamov Ildar Sagadatovich
Case No. D2012-1532
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Gallyamov Ildar Sagadatovich of Zainsk, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <intezosanpaolo.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2012. On July 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2012, the Registrar 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”).
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 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2012.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 31, 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
The factual findings pertinent to the decision in this case are that:
1. The Complainant is an Italian banking company formed in 2007 by the merger of two former Italian banking companies, Banka Intesa S.p.A. and Sanpaolo IMI S.p.A.
2. The Complainant owns, inter alia, European Community Trade (CTM) Mark Reg. No. 5301999 registered September 8, 2006 for the trade mark INTESA SANPAOLO.
3. The disputed domain name was registered on February 29, 2012.
4. The disputed domain name is not in use.
5. There is no agreement between the parties and the Complainant has not authorized the Respondent to use its trade mark or to register any domain name incorporating its trade mark.
5. Parties’ Contentions
The Complainant asserts trade mark rights in the term INTESA SANPAOLO and alleges that the disputed domain name is identical or confusingly similar1 to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) the 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.
Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is well-established by former decisions under this Policy that a trade mark registered with a national authority is evidence of trade mark rights. Since the Complainant provides evidence of its CTM Registration for the word mark INTESA SANPAOLO, the Panel is satisfied that it has trade mark rights2.
The Complaint alleges that “the domain name at issue is confusingly similar to the Complainant’s trademarks” and goes on to state that “the domain name … exactly reproduces the trademark “INTESA SANPAOLO”, with the only substitution of the syllable “SA” with “ZO” in the first verbal component “INTESA”.”
Whether or not this is an allegation that the disputed domain name is identical to the trade mark is unclear but it matters little since the Panel is satisfied that the terms are confusingly similar. For the purposes of comparison, the non-distinctive generic top-level domain (gTLD) “.com” can be disregarded3 as can the omission of the space between the two words comprising the trade mark4. Taken as wholes, the terms “intesa sanpaolo” and “intezosanpaolo” exhibit such an overriding visual and phonetic similarity that they are found to be confusing similar.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant need only make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to the Respondent to rebut that case by demonstrating those rights or legitimate interests5.
The publicly available WhoIs information identifies the Respondent as “Gallyamov Ildar Sagadatovich” and so there is no prima facie evidence that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trade mark rights in a trade mark corresponding with the disputed domain name. There is no evidence that the Complainant has authorized the Respondent to use the trade mark and the Complainant denies any such authorization.
The Complaint implies that the disputed domain name is not in use. Provided in evidence [but not translated into English] is a screenshot of the webpage to which the disputed domain name resolves. Panel accepts that evidence as indicative of a reasonable conclusion that the disputed domain name has not been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Accordingly, the Panel finds that there is no prima facie evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to either of paragraphs 4(c)(i) or (iii) of the Policy.
Panel finds that the Complainant has established a prima facie case and so the onus shifts to the Respondent to establish rights or legitimate interests in the disputed domain name. In the absence of a Response, that onus is not rebutted and so the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so finds that the Complainant has satisfied the second limb of the Policy.
C. Registered and Being Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.”
The Complainant does not argue for the application of one or more of those scenarios, nor does the Panel find them applicable to the evidence as it has been presented. There is no shown use of the disputed domain name so as to engage paragraph 4(b)(iv) of the Policy and there is no evidence of registration in circumstances which might attract the operation of paragraphs 4(b)(i) to (iii) of the Policy.
Nevertheless, the entirety of the evidence points to bad faith. The Complaint gives ample evidence of the repute of the two banking entities which merged to form the Complainant and, equally, shows the marketplace presence of the Complainant since that merger. Given that the merger occurred earlier than the registration of the disputed domain name, there is a compelling inference that the Respondent knew of the Complainant’s business and targeted it trade mark. The Panel finds registration of the disputed domain name in bad faith.
Moreover, in view of the Complainant’s established reputation in relation to banking and financial services, it argues for the application of the principle first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the Telstra case, the panel decided that because of the repute of the complainant’s trade mark, “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”. Here, the Complainant also claims bad faith use through passive holding of the disputed domain name in circumstances where no good faith use is conceivable. The Panel accepts that submission and finds that the disputed domain name was used in bad faith within the meaning former UDRP panels have given to paragraph 4(a)(iii) of the Policy.
Panel finds registration and use in bad faith and so finds that the Complainant has established the third and final element of the Policy.
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 <intezosanpaolo.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: September 13, 2012
1 It is not entirely clear which - see discussion under part 6A of this Decision
2 See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.
4 See Vin Diesel v. LMN a/k/a L.M. Nordell, NAF Claim No. 804924 finding <vindiesel.com> to be identical to complainant’s mark because simply eliminating the space between terms and add the generic top-level domain was insufficient to differentiate the disputed domain name from complainant’s VIN DIESEL mark.