WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A., v. Shawn Chiu Wai
Case No. D2010-0946
1. The Parties
Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella of Italy.
Respondent is Shawn Chiu Wai of Cayman Islands, Oversees Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <www-intesasanpaolo.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2010. On June 10, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. a request for registrar verification in connection with the disputed domain name. On June 15, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2010. However, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2010.
The Center appointed Luiz Edgard Montaury Pimenta as the sole panelist in this matter on July 20, 2010. 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
Complainant is one of the most important banking group in Italy and also in Europe. The company was formed in 2007 as a result of the merger between 2 (two) preexisting Italian banks. Intesa Sanpaolo is the owner of some registrations for the trademark INTESA SANPAOLO, as the following examples:
The international trademark registration no. 920896 for the mark INTESA SANPAOLO was granted to Complainant on March, 07, 2007, in classes 9,16,35,36,38, 41 and 42;
The community trademark registration no. 5301999 for the mark INTESA SANPAOLO had been applied on September 08, 2006, and was granted to Complainant on June 18, 2007, in classes 35, 36 and 38.
The Respondent registered the disputed domain name <www-intesasanpaolo.com> on August 24, 2009. This domain name resolves to a website on which banking and financial services are advertised.
Complainant is also the owner of the <intesasanpaolo.com> domain name.
5. Parties’ Contentions
Complainant claims that the disputed domain name is confusingly similar to its trademarks since it exactly reproduces the trademark INTESA SANPAOLO with the only addition of the prefix “www”, which is a generic term used in Internet language.
Complainant asserts that Respondent is engaging in a kind of “typosquatting”, a practice that consists in the registration of a domain name which is a slight alphabetical variation of a famous mark or of the standard format of a hyperlink.
In order to make its arguments stronger, Complainant indicates some decisions issued by UDRP panelists in similar cases.
Complainant states that Respondent has no rights or legitimate interests in respect of the disputed domain name since Respondent has no connection with Intesa Sanpaolo and due to the fact that Respondent has never been authorized or licensed by Intesa Sanpaolo to use the disputed domain name.
Complainant alleges that Shawn Chiu Wai is not commonly known as “www-intesasanpaolo.com” and that this denomination does not correspond to Respondent’s name. Intesa Sanpaolo claims Respondent is not using the domain name in question in a fair way.
Complainant states that the disputed domain name is registered and is being used in bad faith due to the fact that “there are circumstances indicating that Respondent, by using this domain name, has intentionally attempted to attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website.”
Complainant asserts that his trademark INTESA SANPAOLO is distinctive and due to this fact Respondent had knowledge of this trademark by the time of registration of the disputed domain name.
Complainant supports that the domain name in issue is not used for any bone fide offerings and affirms Internet users are confusingly led to the websites of its competitors which are sponsored on the websites connected to <www-intesasanpaolo.com>. Complainant completes, saying that respondent is using the disputed domain name to intentionally attract Internet users by trading on the goodwill associated with the INTESA SANPAOLO trademark.
Complainant alleges that the use of the disputed domain name causes great damages, due to the misleading of its clients and the lost of the potential new ones.
Finally, Complainant states that Respondent is obtaining commercial gain by using the disputed domain name, since it is obvious the sponsoring activity is being remunerated and requests that the disputed domain name <www-intesasanpaolo.com> be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The panel finds that registered trademarks of Complainant are highly distinctive in the banking and financial area and have a strong reputation in many countries. The Panel finds that the disputed domain name <www-intesasanpaolo.com> is confusingly similar with its INTESA SANPAOLO registered trademark (and additionally with Complainant’s domain name <intesasanpaolo.com>). The only difference between them is the addition of a generic term related to URL addresses.
The Panel finds that the difference pointed out above is not enough to characterize the disputed domain name as being distinct from Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel finds that this similarity can mislead Internet users who search for Complainant’s services and divert them to the disputed domain name.
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name that contains in its entirety Complainant’s mark INTESA SANPOLO. Taking into consideration Complainant’s prima facie satisfaction that the Respondent lacks rights and legitimate interests and that Respondent has failed to respond to the Complainant, the Panel finds on the record before it that Respondent lacks rights and legitimates interests in the disputed domain name.
As a matter of a fact, Complainant has made a prima facie case in support of its allegations and, due to this, the burden of proof shifts to Respondent to show that it does have rights or legitimates interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the Complaint was filed, the disputed domain name provided, in part, pay-per-click advertisings and links to websites that were in direct competition with Complainant.
Moreover, the disputed domain name, as of the date of this decision, still resolves to a page that displays pay-per-click ads and links to Complainant’s competitors. This is not a bona fide use. TM Acquisition Corp. v. Sign Guards a/k/a William Moore, NAF Case No. FA132439, (finding that the Respondent’s use of complainant’s marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services).
So, in view of the above, the Panel finds that Complainant has established the second condition of the paragraph 4(a) of the policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name in bad faith.
Respondent has intentionally registered the disputed domain name which totally reproduces Complainant’s well-know trademark INTESA SANPAOLO. By the time the disputed domain name was registered, Respondent had knowledge of Complainant’s rights on the trademark INTESA SANPAOLO.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirm that it had long been using its INTESA SANPAOLO registered trademark when the disputed domain name was registered. Moreover, Complainant submitted consistent evidence that its trademark is widely-known. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the mark and, further, that Respondent knowingly infringed Complainant’s trademark when it registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”, Policy paragraph 4(b)(iv). Respondent used Complainant’s widely-known trademark to attract users to Respondent’s website where pay-per-click add and links to competing websites are offered. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
At the time the Complaint was filed and at the time of this Decision, the disputed domain name resolves to a page that offers visitors pay-per-click add and links to sites of other companies, including Complainant’s competitors. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“The Panel is persuaded that Respondent’s registration and use of the disputed domain name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior UDRP decisions also support this conclusion.”) See also Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
In light of these, the Panel finds that Complainant has established the third element of the paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <www-intesasanpaolo.com> be transferred to the Complainant.
Luiz Edgard Montaury Pimenta
Dated: August 3, 2010