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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Ying Quan Chen / Chen Ying Quan

Case No. D2016-1576

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 Ying Quan Chen / Chen Ying Quan of Chongqing, China.

2. The Domain Name and Registrar

The disputed domain name <intesasanpaolo.vip> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2016. On August 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2016, 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 August 8, 2016, the Center informed the Parties in both English and Chinese that the Registration Agreement is in Chinese and requested them to comment on the language of the proceeding. The Complainant submitted a request for English to be the language of the proceeding on August 8, 2016. The Respondent did not comment on the language of the proceeding.

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 Respondent of the Complaint in both English and Chinese, and the proceeding commenced on August 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2016.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 12, 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 an Italian bank which was formed in 2007 from the merger of Banca Intesa S.p.a. and Sanpaolo IMI S.p.a. The Complainant has an international network in numerous countries, including a direct branch and a representative office in China. The Complainant is the owner of registrations of the trademark INTESA SANPAOLO, including International Registration No. 920896, registered in 2007, designating multiple jurisdictions, including China, and specifying goods and services in multiple classes, including insurance, financial affairs, monetary affairs and real estate services in class 36. That trademark registration is still current. The Complainant operates its official website at “www.intesasanpaolo.com”. It is also the registrant of multiple domain names comprising “intesasanpaolo” in other generic Top-Level Domains (gTLDs), which are connected to its official website.

The Respondent “Ying Quan Chen” and “Chen Ying Quan” are listed in the Registrar’s WhoIs database as the registrant name and registrant organization, respectively, of the disputed domain name. They are located in China. The Respondent registered or acquired the registration of the disputed domain name on May 17, 2016. The disputed domain name does not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to its INTESA SANPAOLO registered trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has nothing to do with the Complainant. The Complainant has not authorized or licensed anyone to register the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the disputed domain name. No fair or noncommercial use is being made of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark is distinctive and well-known all around the world. It is more than likely that the disputed domain name would not have been registered were it not for the Complainant’s trademark. The disputed domain name is not being used for any bona fide offerings but is only passively held.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the 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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that English be the language of the proceeding or, at least, one of the languages of the proceeding. Its main arguments are that English would ensure fairness for the Complainant, which is an Italian company, and that English is an international language. The Respondent did not comment on the language of the proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. The Respondent has not expressed any interest in responding to the Complaint or participating in this proceeding in any other way. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2. Analysis and Findings

The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the 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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the INTESA SANPAOLO trademark.

The disputed domain name incorporates the Complainant’s trademark, omitting only the space between the words “Intesa” and “Sanpaolo”. This omission can be disregarded in a comparison with the Complainant’s trademark as domain names do not include spaces for technical reasons.

The only additional element in the disputed domain name is the gTLD suffix “.vip”. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080. Consequently, the Complainant’s trademark is the dominant and only distinctive element of the disputed domain name.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a 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 Panel has already found that the disputed domain name is confusingly similar to the Complainant’s INTESA SANPAOLO trademark. The Complainant submits that it has not authorized or licensed anyone to register the disputed domain name.

The disputed domain name does not resolve to any active website. That is not a use of the disputed domain name in connection with an offering of goods or services, nor evidence of some legitimate noncommercial or fair use, as envisaged by the first and third circumstances of paragraph 4(c) of the Policy. Further, the Respondent’s name is “Ying Quan Chen” and the Respondent’s organization is allegedly “Chen Ying Quan”, neither of which is “Intesa Sanpaolo”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that case because it did not file a Response.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the Panel observes that the Respondent registered a domain name that incorporates the Complainant’s INTESA SANPAOLO trademark, minus the space between the words for technical reasons. The disputed domain name includes no additional element besides the gTLD suffix, also for technical reasons. The disputed domain name registration postdates the Complainant’s trademark registrations by several years, including in China, where the Respondent is located. There is no evidence that the Respondent was authorized by the Complainant to register the disputed domain name. In view of these circumstances, the Panel finds that the Respondent’s choice to register a domain name confusingly similar to the Complainant’s trademark was deliberate.

With respect to use, the Respondent makes only passive use of the disputed domain name but this does not preclude a finding of use in bad faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present dispute, the Complainant has a strong reputation in its INTESA SANPAOLO trademark which is widely known, especially in the financial sector, through use in connection with financial services, including in China, where the Respondent is located. The disputed domain name is identical to the Complainant’s INTESA SANPAOLO trademark except for the addition of a gTLD suffix, and it is also identical to the Complainant’s official website address except for their respective gTLDs, all of which increases the likelihood of confusion of the disputed domain name with the Complainant and its goods and services. These circumstances are evidence that the disputed domain name is being used in bad faith.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

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 <intesasanpaolo.vip> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: September 16, 2016

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