WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Bai Xiqing
Case No. DNL2011-0054
1. The Parties
Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
Respondent is Bai Xiqing of Shanghai, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <intesasanpaolo.nl> (the “Domain Name”) is registered with SIDN through GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On August 1, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On August 2, 2011, SIDN transmitted by email to the Center its verification response disclosing registrant information for the Domain Name which differed from the named Respondent in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on August 8, 2011. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 9, 2011. In accordance with the Regulations, article 7.1, the due date for Response was August 29, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2011.
The Center appointed Gregor Vos as the panelist in this matter on September 6, 2011. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
Complainant, Intesa Sanpaolo S.p.A., is a leading Italian banking group in the euro zone, and offers financial services in all banking business areas.
Complainant is, inter alia, owner of the following trademark registrations:
1. International trademark registration for INTESA SANPAOLO (no. 920896), registered on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;
2. Community trademark registration for INTESA SANPAOLO (no. 5301999), filed on September 8, 2006, for classes 35, 36 and 38;
3. Italian trademark registration for INTESA SANPAOLO (no. 1042140), registered on March 7, 2007, for classes 9, 16, 35, 36, 38, 41 and 42.
Hereinafter referred to as the “Trademarks”.
Complainant also indicated to be the holder of various domain names containing the element “Intesa Sanpaolo”, such as <intesasanpaolo.com>, <intesasanpaolo.org>, <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.net>, <intesasanpaolo.biz>, <intesa-sanpaolo.com>, <intesa-sanpaolo.org>, <intesa-sanpaolo.eu>, <intesa-sanpaolo.info>, <intesa-sanpaolo.net> and <intesa-sanpaolo.biz>.
Respondent is Bai Xiqing, domiciled in Shanghai, People’s Republic of China. Respondent became the holder of the Domain Name on April 7, 2011.
5. Parties’ Contentions
The Domain Name is identical or confusingly similar to Complainant’s Trademarks
Complainant bases its Complaint on its Trademarks. Complainant notes that the Domain Name exactly reproduces the trademark INTESA SANPAOLO.
Respondent has no rights to or legitimate interests in the Domain Name
According to Complainant, Respondent has no rights in the Domain Name. Respondent has not been authorized or licensed to use the trademark INTESA SANPAOLO nor is known in relation to the Domain Name.
Complainant furthermore alleges that Respondent is not making any fair or noncommercial use of the Domain Name because the Domain Name resolves to a website with a so-called PPC (Pay-Per-Click) display of sponsored links, some of which link to competitors of Complainant.
Respondent has registered or is using the Domain Name in bad faith
With regard to bad faith registration of the Domain Name, Complainant alleges that Respondent reasonably should have been aware of Complainant’s Trademarks. In this respect, Complainant refers to the fact that INTESA SANPAOLO is a well-known trademark, which has a strong reputation due to its extensive market presence. Respondent therefore must have registered the Domain Name with knowledge of Complainant’s Trademarks in order to benefit from the goodwill associated with these Trademarks.
Furthermore, Complainant refers to the fact that Respondent has on a number of occasions by email offered the Domain Name for sale to Complainant for an amount in excess of the costs of registration.
With regard to the bad faith use of the Domain Name, Complainant alleges that Respondent is using the Domain Name to attract Internet users by creating a likelihood of confusion, since the Domain Name is currently connected to a parking page which contains several sponsored links to websites promoting financial and banking services (amongst which to competitors of Complainant).
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Article 10.3 of the Regulations provides that in the event that a respondent fails to submit a response, the complaint shall be granted unless the panelist considers it to be without basis in law or fact.
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
- The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1 (a) under II of the Regulations; and
- The respondent has no rights to or legitimate interests in the domain name; and
- The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows.
A. Identical or Confusingly Similar
Complainant has based its Complaint on the Trademarks and has submitted copies of the trademark registrations from which it follows that it is the holder of the Trademarks. Although the invoked International trademark registration (which has not been registered for the Benelux and/or the European Community) and the Italian trademark registration do not grant any relevant rights under Dutch law, the Panel is satisfied that the invoked Community trademark qualifies as a trademark protected under Dutch law.
It is established case law that the top level domain “.nl” can be disregarded in assessing the similarity between the relevant trademark(s) on the one hand, and the disputed domain name on the other. In this regard, the Panel considers the Domain Name identical to the invoked Community trademark.
Therefore, the first condition of article 2.1 of the Regulations is met.
B. Rights or Legitimate Interests
Pursuant to article 2.1 (b) of the Regulations, Complainant must demonstrate that Respondent has no rights to or legitimate interests in the Domain Name. This condition is met if Complainant makes a prima facie case that Respondent has no such rights or interests, and Respondent fails to rebut this (see for example Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).
As follows from the Complaint, Respondent does not have any relevant trademark or trade name rights regarding the term “Intesa Sanpaolo”. Respondent is not affiliated with Complainant and has received no consent to use the Community trademark or any other trademark of Complainant. Respondent offers the Domain Name for sale and uses the Domain Name for a parking page which offers sponsored links.
Respondent did not dispute this, and the Panel could not establish any indications that any of the circumstances as described in article 3.1 of the Regulations apply, nor that Respondent in any possible other way has rights to or legitimate interests in the Domain Name. The Panel is therefore satisfied that Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
Considering that Complainant’s Community trademark pre-dates the date of the registration of the Domain Name, the apparent status of INTESA SANPAOLO as a trademark and the specificity of the Domain Name registration itself, the Panel is of the opinion that Respondent was aware or should have been aware of Complainant and its Community trademark. Taking into account that the website under the Domain Name offers sponsored links to inter alia competitors of Complainant, the Domain Name can also be considered as used for commercial gain, by attracting Internet users to a website or other online location of Respondent through the likelihood of confusion which may arise with Complainant’s Community trademark. Furthermore, Respondent has offered the Domain Name for sale to Complainant for an amount in excess of the costs of registration.
Given the above, the Panel holds that the Domain Name has been registered and is being used in bad faith. The third criterion is therefore also met.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <intesasanpaolo.nl> be transferred to Complainant.
Dated: September 20, 2011