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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Edvin Hoxhalli / Adrian Moraras

Case No. D2016-0392

1. The Parties

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

The Respondents are Edvin Hoxhalli of Francavilla Al Mare, Italy / Adrian Moraras of "Torino", United States of America.

2. The Domain Names and Registrars

The disputed domain names <intesasanpaolo3d.com> and <myintesa.com> are registered with Tucows Inc. and Melbourne IT Ltd, respectively (the "Registrars").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2016. On February 26, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 26, 2016 and February 27, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2016. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on March 24, 2016.

The Center appointed Nicoletta Colombo as the sole panelist in this matter on March 31, 2016. 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 the leading Italian banking group. Intesa Sanpaolo is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.

Intesa Sanpaolo is among the top banking groups in the Euro Zone and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). It is well distributed with approximately 4,100 branches in Italy and has a strong presence in central-eastern Europe with a network of approximately 1,200 branches.

The Complainant is the owner, among others, of the following registrations for the trademarks INTESA and INTESA SANPAOLO:

- International trademark registration no. 793367 INTESA, granted on September 4, 2002 and duly renewed until September 4, 2022, in connection with class 36;

- Community trademark registration no. 2803773 INTESA, filed on August 7, 2002, granted on November 17, 2003 and duly renewed until August 7, 2022, in connection with class 36;

- International trademark registration no. 920896 INTESA SANPAOLO, granted on March 07, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;

- Community trademark registration no. 5301999 INTESA SANPAOLO, applied on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;

- Community trademark registration no. 5421177 INTESA SANPAOLO & device, applied on October 27, 2006 and granted on November 5, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;

and of the following domain names which are connected to the official website " www.intesasanpaolo.com":

<intesa.com>, <intesa.org>, <intesa.info>, <intesa.biz>, <intesasanpaolo.com>, <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.net>, <intesasanpaolo.biz>, <intesa-sanpaolo.com>, and <intesasanpaolo.org>.

The Respondents registered the disputed domain names <intesasanpaolo3d.com> and <myintesa.com> on December 21 and December 28, 2015, respectively.

On January 7, 2016, in reply to the Complainant's cease and desist letter, the Respondents offered to sell the disputed domain name <intesasanpaolo3d.com> and the domain name <intesasdirect.com> for EUR 40,000.

5. Parties' Contentions

A. Complainant

The Complainant, having noted that the disputed domain names only appear to be registered by different registrants, since both the Respondents have the same email address, concluded that there is only one Respondent behind the registration of the disputed domain names.

Therefore, the Complainant has decided to file one complaint against the two Respondents according to the conclusion stated in Moncler S.p.A. v. Yao Tom, Lee Fei, Geryi Wang, WIPO Case No. D2015-2244.

Concerning the first element under the Policy, the Complainant submits that the disputed domain name <intesasanpaolo3d.com>is identical to the trademark INTESA SANPAOLO, with the mere addition of the generic term "3d", while <myintesa.com> exactly reproduces the trademark INTESA, with the addition of the generic word "my". Such differences are clearly minor and descriptive variations of the cited marks, used by the Complainant to identify its banking services.

Concerning the second element under the Policy, the Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

The disputed domain names do not correspond to the names of the Respondents and, to the best of the Complainant's knowledge, the Respondents are not commonly known by the disputed domain names.

Concerning the third element under the Policy, the Complainant alleges that the Respondents have registered and used the disputed domain names in bad faith. According to the Complainant, it is inconceivable that the Respondents could not have been aware of the Complainant's trademarks at the time they registered the disputed domain names.

The disputed domain names are not used for any bona fide offerings of good or services. Rather, they are not connected to any web site. The passive holding of a domain name with knowledge that the domain name infringes another party's trademark rights is evidence of bad faith registration and use.

The risk of a wrongful use of the disputed domain names is even higher, according to the Complainant, because it has already been targeted by some cases of phishing in the past few years.

Moreover, after having received the cease and desist letter in which the Complainant was asking for the voluntary transfer of the disputed domain name <intesasanpaolo3d.com>, the Respondents replied asking for a payment of EUR 40,000 to transfer the disputed domain name <intesasanpaolo3d.com> and the domain name <intesasdirect.com> (the latter was subsequently deleted).

On this basis, the Complainant requests that the disputed domain names be transferred to it.

B. Respondents

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

6. Discussion and Findings

The Panel agrees that several previous UDRP decisions have stated that in cases where the disputed domain names only appear to be registered by different registrants, but from the evidence in the record it is clear that there is only one respondent behind the registration of the disputed domain names, it is possible to file a single complaint against multiple respondents (see Moncler S.p.A. v. Yao Tom, Lee Fei, Geryi Wang, supra).

As such, the Panel accepts the Complainant's consolidated Complaint and will proceed to a decision as to both disputed domain names.

In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names (see below, section B); and

(iii) the disputed domain names have been registered and are being used in bad faith (see below, section C).

Under paragraph 4(a) of the Policy, the burden of proof with regard to these elements lies with the Complainant.

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the disputed domain name identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several INTESA SAN PAOLO and INTESA trademarks.

Concerning the second issue, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks. The disputed domain names incorporate the trademarks and the company name of the Complainant.

The Panel finds that the combination of the Complainant's trademarks with the generic words "3d" and "my" do not render the disputed domain names sufficiently dissimilar to the trademarks of the Complainant.

There are several UDRP decisions stating that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark even if it is added to another term. In particular, there are UDRP decisions stating that the incorporation of the trademark and a generic word in a domain name is misleading and confusingly similar to the trademark owned by the complainant (LEGO Juris A/S v. Devin Steenberg, WIPO Case No. D2015-0394; QVC Inc. and ER Marks Inc. v. WhoisGuard, WIPO Case No. D2007-1872).

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademarks.

B. Rights or Legitimate Interests

The Respondents have not filed any response in this case. The Panel finds that, based on the evidence provided, the Complainant has made a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.

Specifically, on the basis of the evidence before the Panel, the Respondents have not received any license or authorization from the Complainant to use the well-known trademarks owned by the Complainant, nor have they been authorized to register and use the disputed domain names.

Under these circumstances, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Respondents must have been aware of the existence of the Complainant's trademarks. It is not plausible that someone who was not familiar with the Complainant's marks would have registered the disputed domain names.

The Panel is of the opinion that the Respondents registered the disputed domain names with the intent to profit from the reputation of the famous trademarks of the Complainant by choosing domain names that are confusingly similar to the Complainant's marks.

Moreover, the disputed domain names are not used for any bona fide offering of goods or services. Rather, they are not connected to any web site. There are several UDRP decisions stating that the passive holding of a domain name with knowledge that the domain name infringes another party's trademark rights is evidence of bad faith registration and use (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Furthermore, the Panel notes that the Respondents offered for sale the disputed domain name <intesasanpaolo3d.com> for a price which clearly exceeded the out-of-pocket costs directly related to this disputed domain name.

Taken together with the fact that the Respondents have not filed any response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the disputed domain names have been registered and are being used in bad faith.

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 names <intesasanpaolo3d.com> and <myintesa.com> be transferred to the Complainant.

Nicoletta Colombo
Sole Panelist
Date: April 12, 2016

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