WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates

Case No. DCO2015-0001

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 Tommy, Bartles associates of California, United States of America.¹

2. The Domain Name and Registrar

The disputed domain name <bancaintesasanpaolo.co> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2015. On January 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 12, 2015.

The Center verified that the Complaint together with the amendment to 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 January 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2015.

The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on February 19, 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 a bank incorporated in Italy, which is today one of the leading Italian banks, also doing business internationally in 29 other countries.

The Complainant is the owner of several trademark registrations for the mark INTESA SANPAOLO, inter alia, Italian Trademark Registration No. 1042140 granted on March 7, 2007, International trademark Registration No. 9209896 granted on March 7, 2007 (together, “the Mark”), and Community Trademark Registration No. 5302377 for the mark BANCA INTESA SANPAOLO granted on July 6, 2007 (“the CTM”).

The Complainant offers its financial services under the Mark worldwide.

The Complainant is also the registrant of many domain names, including, inter alia, <bancaintesa.com> and <intesasanpaolobank.com>, all connected to its main domain name <intesasanpaolo.com>.

The disputed domain name <bancaintesasanpaolo.co> was registered on September 12, 2014.

5. Parties’ Contentions

A. Complainant

(i) The Complainant submits that the Mark is well-known, as was recognized by previous UDRP panels.

(ii) The Complainant submits that the disputed domain name reproduces the Mark, and is confusingly similar to the Mark insofar as the disputed domain name, <bancaintesasanpaolo.co>, is identical to the Mark save for its prefix “banca”. The Complainant also asserts that “banca” is a descriptive term meaning bank in Italian. The Complainant further contends that the disputed domain name exactly reproduces the CTM.

(iii) The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never licensed or in any way authorized the Respondent to register or use the Mark or the CTM as a domain name, that the Respondent is not commonly known as “bancaintesasanpaolo” and that the Respondent does not make a fair or noncommercial use of the disputed domain name.

(iv) The Complainant submits that by registering the disputed domain name, the Respondent primarily sought to resell it for a consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, that no other possible legitimate use is possible, and that the Respondent, who failed to react to a cease and desist letter, is passively holding the disputed domain name.

(v) The Complainant thus submits that the Respondent has registered and is using the disputed domain name in bad faith.

(vi) The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Procedural Aspects

(i) 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 language of the Registration Agreement of the disputed domain name is English. The Panel determines that pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.

(ii) Failure to respond

No Response was received from the Respondent within the time limit set by the Policy and the Rules.

Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met.

Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.

Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.

B. Requirements of Paragraph 4(a) of the Policy

(i) Identical or Confusingly Similar

In comparing the disputed domain name <bancaintesasanpaolo.co> with the Mark, the Panel finds that the Mark is replicated entirely in the disputed domain name.

Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that a disputed domain name is at least confusingly similar to a registered trademark (see e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).

The consensus view of UDRP panels is that the addition of generic or descriptive terms does not generally serve to distinguish a domain name from a registered trademark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.

In this case, the Panel finds that the “banca” component of the disputed domain name <bancaintesasanpaolo.co> is descriptive, and that the dominant component of the disputed domain name is “intesasanpaolo”, which is also the corporate name of the Complainant.

Furthermore, in comparing the disputed domain name <bancaintesasanpaolo.co> with the CTM, the Panel finds that the CTM is exactly duplicated by the disputed domain name.

The addition of the country code Top-Level Domain (ccTLD) “.co” does not serve to distinguish the disputed domain name <bancaintesasanpaolo.co> from the CTM, and only adds to the confusion.

Consequently, the Panel finds that the similarity between the disputed domain name and the Mark or the CTM is such as to create confusion for Internet users.

Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

(ii) Rights or Legitimate Interests

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.

Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business.

The disputed domain name does not resolve to an active page.

No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.

On the contrary, the Complainant has argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name and (ii) has not been permitted in any way by the Complainant to register or use the Mark or the CTM as a domain name.

In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.

(iii) Registered and Used in Bad Faith

As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark and to the CTM.

It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.

In this case, the Panel notes that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark or of the CTM. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.

In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact that its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.

In this case, the highly regulated banking activity of the Complainant renders implausible any good faith use by the Respondent of the disputed domain name.

Besides, the Panel can discern no legitimate basis for the Respondent’s use of a privacy shield service, PrivacyProtect.org, and under the present circumstances considers this fact as also corroborative of bad faith. See Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0696.

Moreover, it is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; and Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.

Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others, and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.

The Panel finds that the evidence submitted supports a finding of bad faith under the Policy.

The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.

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, <bancaintesasanpaolo.co>, be transferred to the Complainant.

Louis-Bernard Buchman
Sole Panelist
Date: March 5, 2015

¹ The disputed domain name was registered under a privacy service, namely PrivacyProtect.org.