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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Donghui

Case No. D2014-1614

1. The Parties

The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.

The Respondent is Donghui of Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <intesasannpaolo.com> is registered with Hangzhou AiMing Network Co., LTD (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2014. On September 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 2014, 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. On September 29, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On October 1, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 29, 2014.

The Center appointed Douglas Clark as the sole panelist in this matter on November 4, 2014. 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 an Italian banking group created as a result of the merger (effective from January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.

The Complainant is the registered proprietor of an International trademark registration no. 920896 for INTESA SANPAOLO granted March 7, 2007 in a number of countries, including China. The Complainant also has numerous trademark registrations outside China.

The Complainant owns and operates a number of websites including its primary website "www.intesasanpaolo.com".

The disputed domain name <intesasannpaolo.com> was registered on April 13, 2014.

The disputed domain name resolves to a parking page with sponsored links to various products and services. It appears from the record, and the Panel's own viewing of the site, that the links will change depending on the jurisdiction the page is accessed. At the bottom of the page is the following disclaimer:

"The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois)."

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name <intesasannpaolo.com> is confusingly similar to its registered trademark INTESA SANPAOLO. It is simply the Complainant's trademark with an additional "n" added.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as it has not made any bona fide use of the disputed domain name. The Complainant contends that the Respondent has no commercial relationship with the Complainant and the Respondent is not a licensee of the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith with the intention to sell it to the Complainant or the intention of diverting Internet users to the Respondent's website.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Chinese. Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".

The Complainant requests the language of proceedings to be English on the grounds that English is the main language of international communication, and the Complainant alleges that the Respondent responded to the Complaint in English and various English words appear on the website under the disputed domain name.

The Respondent did not comment on the language of the proceedings by the specified due date after the Center sent an email in both English and Chinese to the parties with regard to the language of the proceedings.

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceedings lies with this Panel.

The Complainant states that the Respondent did respond to the Complainant in English. However, based on the available record, it appears that these responses are not from the current Respondent. In any event, these responses are very short and did not necessarily show an ability to communicate at a high level in English.

The Panel finds that the disclaimer on the website to which the disputed domain name resolves is in English and shows an attempt to avoid liability for infringement. The various sponsored links on the website appear in a variety of languages showing an intention to monetize the disputed domain name internationally. Further, as set out below, this Panel considers the merits of this case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.

These factors lead the Panel to determine to follow the Center's preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

Substantive Issues

A. Identical or Confusingly Similar

The Complainant has demonstrated it has trademark rights in INTESA SANPAOLO.

The disputed domain name <intesasannpaolo.com> is composed of the Complainant's registered trademark INTESA SANPAOLO and the addition of the letter "n". The Panel finds the disputed domain name is confusingly similar to the Complainant's registered trademark.

The first element of the UDRP is made out.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests to a disputed domain name, are present in this case.

Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out.

C. Registered and Used in Bad Faith

The Panel also finds that the disputed domain name <intesasannpaolo.com> was registered in bad faith and is being used in bad faith.

This case falls with paragraph 4(b)(iv) of the UDRP which provides that a registrant has registered and is using a domain name in bad faith where:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."

The use of the webpage under the disputed domain name with sponsored links is clear designed to attract Internet users to the website and make money from their confusion.

Therefore, the third element of the UDRP is made out.

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 disputed domain name <intesasannpaolo.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: November 6, 2014

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