WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. TempoHost

Case No. D2012-0268

1. The Parties

The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.

The Respondent is TempoHost of Craiova, Romania.

2. The Domain Name and Registrar

The disputed domain name <linksimprese-sanpaolo.info> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On February 13, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On February 13, 2012, GoDaddy.com, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 16, 2012.

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 February 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2012.

The Center appointed Amund Grimstad as the sole panelist in this matter on March 20, 2012. 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 leading Italian banking group. Intesa Sanpaolo S.p.A. 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 S.p.A. is among the top banking groups in the euro zone, with a market capitalisation exceeding EUR 29,8 billion, and the market leading bank in Italy. The Complainant has approximately 5,700 branches throughout Italy, with market shares of more than 17% in most Italian regions, the Complainant offers its services to approximately 11 million customers.

Intesa Sanpaolo S.p.A. has a strong presence in Central-Eastern Europe with a network of approximately 2000 branches and over 8,5 million customers. The international network specialised in supporting corporate customers is present in 29 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, Russia, China and India.

The Complainant is the owner of several trademarks containing SANPAOLO and LINKS SANPAOLO, including the Internationally registered trademarks SANPAOLO and LINKS SANPAOLO in class 36.

5. Parties’ Contentions

A. Complainant

The disputed domain name <linksimprese-sanpaolo.info> is confusingly similar to the SANPAOLO and LINKS SANPAOLO trademarks.

The disputed domain name consists of the Complainant’s trademarks with the addition of the word “comprese” and the gTLD “.info”. The trademarks SANPAOLO and LINKS SANPAOLO is the distinctive element of the disputed domain name. The additions are not sufficient to avoid the finding of similarity.

The Complainant further states that the Respondent has no right or legitimate interest in respect of the disputed domain name <linksimprese-sanpaolo.info>. The Complainant has rights in the trademark SANPAOLO and LINKS SANPAOLO, which precede the Respondent’s registration of the disputed domain name.

The Complainant argues that the Respondent has failed to show any legitimate interest in the use of the disputed domain name and that the Respondent is not using the disputed domain name for a bona fide offering of goods or services.

The Complainant has not authorized the Respondent to use the Complainant’s trademarks SANPAOLO or LINKS SANPAOLO in a domain name or otherwise.

The Complainant argues that the disputed domain name has been registered in bad faith.

The Complainant requests as remedy the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name <linksimprese-sanpaolo.info> transferred to it, the Complainant must prove the following pursuant to paragraph 4(a)(i-iii) of the Policy:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

In order for the Complainant to successfully argue that the disputed domain name should be transferred to the Complainant, the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (Policy, paragraph 4(a)(i)).

The disputed domain name <linksimprese-sanpaolo.info> contains the trademarks SANPAOLO and LINKS SANPAOLO, and is therefore similar to these trademarks.

The disputed domain name of the Respondent consists of the trademarks of the Complainant SANPAOLO and LINKS SANPAOLO with the addition of the word “imprese”. The word “imprese” is a generic word, which means “company” in Italian. The mere addition of common terms such as “imprese”, to a trademark does not change the overall impression of the designation as being domain names connected to the trademark.

The gTLD “.info” may be disregarded in assessing whether the disputed domain name is confusingly similar to the Complainant’s trademarks.

The use of the Complainant’s trademark in the disputed domain name is likely to create confusion amongst Internet users as to whether the website to which the disputed domain name resolves is endorsed by or affiliated in some way with the Complainant.

This Panel finds that the first requirement of the Policy has therefore been fulfilled.

B. Rights or Legitimate Interests

Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

In the present case the Respondent does not use the disputed domain name. Therefore, there is no evidence that the Respondent has used the disputed domain name for a bona fide offering of goods or services.

The Complainant has not authorized the Respondent to use the Complainant’s trademark SANPAOLO and LINKS SANPAOLO in a domain name or otherwise.

Based on the record and in the absence of submissions from the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

In this Panel’s view, the Complainant’s products and trademarks are well-known.

The Panel agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in which it was established that bad faith may be present where a disputed domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”.

The use of the trademarks SANPAOLO and LINKS SANPAOLO with the addition of the word “imprese” in the disputed domain name suggests that the Respondent is deliberately trying to free ride on the goodwill of the Complainant. This leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith.

Therefore, this Panel finds that the third requirement of the Policy has therefore been fulfilled

The Panel also agrees with the decision rendered in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, in which it was established that the “passive holding” of a domain name may, in certain circumstances, constitute registration and use in bad faith pursuant to 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 <linksimprese-sanpaolo.info> be transferred to the Complainant.

Amund Grimstad
Sole Panelist
Dated: April 2, 2012