WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Fortune JSC, Inc.
Case No. D2013-0397
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Turin, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Fortune JSC, Inc. of San Diego, California, United States of America (“US”).
2. The Domain Name and Registrar
The disputed domain name <bankalexandria.com> (“Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2013. On February 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2013, 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 March 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 2, 2013.
The Center appointed James McNeish Innes as the sole panelist in this matter on April 12, 2013. 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 Complainant is a leading Italian banking group with a market capitalization exceeding EUR 29 billion. It has 5700 branches in Italy offering services to approximately 11 million customers. It has an international network supporting corporate customers particularly in the United States, China, Russian Federation, India and the Mediterranean where Italian companies are most active. It is the major shareholder of Bank of Alexandria, one of the largest banks in Egypt, with 210 branches across the country, a market share of almost 7 % and assets of EUR 5.2 billion. The Complainant is the owner of a number of registrations for the trademark BANK OF ALEXANDRIA (e.g., Community Trademark registration dated February 12, 2008). The trademarks are confirmed by the record. The Bank of Alexandria was founded in 1957 by the Egyptian government and was privatized in 2006. The Complainant paid USD 1.6 billion for 80% of Bank of Alexandria’s stock. It was the first privatization in Egypt of a fully government owned bank. The Domain Name was registered by the Respondent on November 30, 2012.
5. Parties’ Contentions
The Complainant’s contentions include the following;
a) The Domain Name at issue is confusingly similar to the Complainant’s trademarks. The Domain Name, exactly reproduces the trademark BANK OF ALEXANDRIA, with the mere deletion of the preposition “OF”. Such difference is clearly a minor variation of the cited trademarks used by the Complainant to identify its online banking services.
b) The Respondent has no right to the Domain Name. Any use of the trademark BANK OF ALEXANDRIA has to be authorized or licensed by the Complainant. There has been no such authorization.
c) The Domain Name does not correspond to the name of the Respondent and, to the best of the Complainant’s knowledge, the Respondent is not commonly known as the “Bank of Alexandria”.
d) There is no fair or non – commercial use of the Domain Name at issue.
e) The Complainant’s trademark BANK OF ALEXANDRIA is distinctive and well known. The fact that the Respondent has registered a domain name that is confusingly similar to it indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the Domain Name. If the Respondent had carried out even a basic Google search in respect of the wording “bank of alexandria”, the same would have yielded obvious references to the Complainant. This raises a clear inference of knowledge of the Complainant's trademark on the part of the Respondent. Therefore, it is more than likely that the Domain Name at issue would not have been registered if it were not for the Complainant's trademarks. This is a clear evidence of registration of the Domain Name in bad faith.
f) The Domain Name is not used for any bona fide offerings. More particularly, there are 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.
g) The Domain Name is connected to a website sponsoring, among others, banking and financial services, not connected with the Complainant. Therefore, 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 website connected to the Domain Name at issue.
h) The Domain Name is connected to a website containing several offers from the competitors of the Complainant for financial services. Thus, the content of the website is highly confusing, as the Complainant operates in the fields of banking and financing. Therefore, the Complainant deems that the Respondent has registered and is using the Domain Name at issue in order to intentionally divert traffic away from the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(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.
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name.
(iii) That the Domain Name has been registered and is being used in bad faith.
A. Identical or confusingly similar
The Complainant contends that the Domain Name is identical or confusingly similar to its mark for the following reasons;
a) The Domain Name is confusingly similar to the dominant portion of the Complainants mark BANK OF ALEXANDRIA.
b) The only difference between the Complainant’s mark and the Domain Name is the deletion of the preposition ”of”.
c) The Domain Name is minor variation of the Complainant’s mark.
The Panel accepts the Complainant’s contentions. The Domain Name is confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the panel to be proved based upon its evaluation of the evidence presented shall demonstrate a respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii):
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.
The Respondent has not submitted a response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Respondent has made no response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b). The Panel accepts the Complainant’s assertion that the Respondent has attempted to divert users to his website for commercial gain by creating confusion with the Complainant’s mark. The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <bankalexandria.com> be transferred to the Complainant.
James McNeish Innes
Date: April 17, 2013