WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Guiyan Wang

Case No. D2015-0265

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 Guiyan Wang of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <intesa.mobi> (the “Disputed Domain Name”) is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2015. On February 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 27, 2015, 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 February 27, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 2, 2015, 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 in both Chinese and English, and the proceeding commenced on March 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2015.

The Center appointed Peter J. Dernbach as the sole panelist in this matter on April 2, 2015. 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 corporation which provides banking and financial services in Europe and throughout the world. The Complainant is the owner of the INTESA trademark, including:

(1) INTESA, International trademark, Registration No. 793367 in Class 36, registered in 2002.

(2) INTESA, Community trademark, Registration No. 2803773 in Class 36, registered in 2003.

According to the information provided by the Registrar, the Respondent is Guiyan Wang. The Disputed Domain Name was registered on December 23, 2013.

5. Parties’ Contentions

A. Complainant

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of many INTESA trademarks around the world. The distinctive element of the Disputed Domain Name is the word “intesa”, which is identical to the Complainant’s INTESA trademark. In addition to the Complainant’s INTESA trademark, the Disputed Domain Name contains only one other element, “.mobi”, which is a generic Top-Level Domain Name (gTLD) and cannot distinguish the Disputed Domain Name from the Complainant’s INTESA trademark. Therefore, the Disputed Domain Name is identical or confusingly similar to the INTESA trademark in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

There is no relationship between the Complainant and the Respondent. The Respondent is not licensed, permitted or entitled to other rights by which the Respondent could register, own or use any domain name incorporating the Complainant’s INTESA trademark. The Disputed Domain Name does not correspond to the name of the Respondent and the Respondent is not commonly known by the Disputed Domain Name. The Respondent had registered and is using the Disputed Domain Name solely for financial gain and not for a bona fide offering of goods or services. Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Complainant’s INTESA trademark is well known around the world. The fact that the Respondent has registered a domain name that is confusingly similar to the Complainant’s INTESA trademark indicates that it had knowledge of the Complainant’s trademark at the time of registration of the Disputed Domain Name because of the fame of the Complainant’s INTESA trademark. The Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s well-known INTESA trademark. Therefore, the Respondent has registered and used the Disputed Domain Name in bad faith.

B. Respondent

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

6. Language of Proceeding

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 Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (see paragraph 4.3 of WIPO Overview 2.0).

The Complainant requests the language of the proceeding to be English. The Respondent did not reply to the Center’s notification of the Complainant’s request that English be the language of the proceeding. The Registration Agreement for the Disputed Domain Name is in Chinese. However, given the following factors, the Panel determines that the language of this proceeding shall be English.

(1) The Complainant has provided a screenshot of the website to which the Disputed Domain Name resolves (“the disputed website”). The disputed website contains certain English language words and phrases concerning financial services, such as “Bank”, “Home Banking”, etc.;

(2) The disputed website is designed to attract Internet users from around the world rather than just Internet users in China or familiar with Chinese; and

(3) The Center’s communication to the Respondent used both English and Chinese and gave the Respondent an opportunity to object to the Complainant’s request. The Respondent did not reply to the Center.

Given these facts, the Panel finds that the Complainant is not in a position to conduct this proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese. In consideration of the present circumstances, the Panel hereby decides that, in accordance with paragraph 11(a) of the Rules, English shall be the language of the present administrative proceeding and the decision shall thus be rendered in English.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”

The Complainant has established that it is the owner of the INTESA trademark.

The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users (see paragraph 1.2 of WIPO Overview 2.0).

The Disputed Domain Name incorporates the INTESA trademark in its entirety. The only other element incorporated in the Disputed Domain Name is the gTLD “.mobi”, and it cannot distinguish the Disputed Domain Name from the Complainant’s INTESA trademark in the instant case.

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and the condition of paragraph 4(a)(i) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interest in respect of the [disputed] domain name[.]”

Paragraph 4(c) of the Policy sets out the following several circumstances “[which], in particular but without limitation, if found by the Panel, shall demonstrate [the respondent’s] rights or legitimate interests to the [disputed] domain name for the purposes of Paragraph 4(a)(ii) [of the Policy]:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0, which states: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […].”

The Complainant has established that it is the owner of the INTESA trademark and states in the Complaint that the Respondent is not connected with nor affiliated to the Complainant, nor is the Respondent authorized to use the INTESA trademark to register the Disputed Domain Name or any other variations.

According to the record in the WhoIs database, the name of the Respondent is Guiyan Wang, which has no apparent connection to the INTESA trademark. There is no evidence indicating that the Respondent is commonly known by the Disputed Domain Name or the name of “intesa”. The Complainant also provides a screenshot from the disputed website, which shows that the Respondent has used the INTESA trademark on the disputed website with pay-per-click links. Such links are based on the Complainant’s trademark value. UDRP panels have tended to consider such practices as unfair use resulting in misleading diversion (WIPO Overview 2.0, paragraph 2.6). Therefore, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Respondent did not submit any response to the Complaint and did not submit any allegation or evidence to support a finding that the Respondent has rights or legitimate interests in the Disputed Domain Name or that it is used in connection with a bona fide offering of goods or services or for noncommercial or fair use as demonstrated in paragraph 4(c) of the Policy.

Therefore, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (iii) [the disputed] domain name has been registered and is being used in bad faith.”

Paragraph 4(b) of the Policy explicitly states, in relevant part, that “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:

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location”.

The Complainant’s INTESA trademark has been registered in many countries around the world prior to the registration of the Disputed Domain Name. The Complainant has also used domain names like <intesa.com>, <intesa.org>, <intesa.info> or <intesa.biz>. The Respondent chose the INTESA trademark as the only distinctive part of the Disputed Domain Name. According to the screenshot of the disputed website that was annexed to the Complaint, the Respondent uses the INTESA trademark on the website with pay-per-click links related to banking. It thus appears that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s INTESA trademark. The Respondent has not submitted any allegation or evidence suggesting that it selected the INTESA trademark as the only distinctive element of the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark. The Panel therefore finds that the Disputed Domain Name has been registered in bad faith.

In this case, the Respondent uses the Complainant’s INTESA trademark on the disputed website with pay-per-click links regarding the Complainant’s field of business. By using the Disputed Domain Name, in which the Complainant’s INTESA trademark is the only distinctive element, 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 trademark as to the source, sponsorship, affiliation, or endorsement of the disputed website. Thus, according to paragraph 4(b)(iv) of the Policy, the Respondent used the Disputed Domain Name in bad faith.

Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.

8. 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 <intesa.mobi> be transferred to the Complainant.

Peter J. Dernbach
Sole Panelist
Date: April 16, 2015