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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Ho Nim

Case No. D2010-1328

1. The Parties

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

The Respondent is Ho Nim of Shanghai, Pudong, People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <bancaintesabeogra.com> <bancaintesaspaolo.com>, <iintesasanpaolo.com>, <inetesasanpaolo.com>, <inntesasanpaolo.com>, <inteasasanpaolo.com>, <intesasanpaola.com>, <lintesasanpaolo.com>, <mailintesasanpaolo.com> and <wwwintesanpaolo.com> (the “Domain Names”) are registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2010. On August 5, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the Domain Names. On the next day, Above.com, Inc. 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 August 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2010.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 2, 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

The Complainant Intesa Sanpaolo is among the top banking groups in Europe, with a market capitalisation exceeding 31,7 billion euro, and an undisputed leader in Italy. Intesa Sanpaolo is the company resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.

The Complainant is the owner of various registered trademarks, including:

1. Community trademark registration no. 4717674 BANCA INTESA BEOGRAD, filed on November 14, 2005, granted on October 17, 2006, in classes 36 and 38;

2. Community trademark registration no. 5302377 BANCA INTESA SANPAOLO, filed on September 8, 2006, granted on July 6, 2007, in classes 35, 36 and 38;

3. International trademark registration no. 920896 INTESA SANPAOLO, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;

4. Community trademark registration no. 5301999 INTESA SANPAOLO filed on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38.

A. Complainant

The Complainant asserts that the Domain Names are confusingly similar to the Complainant’s trademarks. The Domain Names <bancaintesabeogra.com>, <bancaintesaspaolo.com>, <inntesasanpaolo.com>, <inteasasanpaolo.com>, <inetesasanpaolo.com>, <intesasanpaola.com>, <iintesasanpaolo.com> and <lintesasanpaolo.com> reproduce, respectively, BANCA INTESA BEOGRAD, BANCA INTESA SANPAOLO and INTESA SANPAOLO, with minor variations. The Complainant alleges that the Respondent is engaging in “typosquatting” because the only distinction between the domain names and the Complainant’s marks is, in most cases, a single change in a letter in the middle of the word that constitutes the mark.

The Complainant asserts that the Respondent has no rights in the Domain Names, since the Domain Names do not correspond to a trademark registered in the name of the Respondent. The Complainant says that any use of the trademarks BANCA INTESA BEOGRAD, BANCA INTESA SANPAOLO and INTESA SANPAOLO has to be authorized by the Complainant: the Respondent has never been authorized or licensed by the above mentioned banking group to use the Domain Names. The Complainant further alleges that the Domain Names do not correspond to Respondent’s name, that the Respondent is not commonly known bv the Domain Names and that the Respondent does not use the Domain Names for any fair or noncommercial use.

The Complainant asserts that the Domain Names were registered and are being used in bad faith because the Respondent 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.

B. Respondent

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

5. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant must prove the following:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant provided evidence that it has registered rights in the Community and International trademarks BANCA INTESA SANPAOLO, BANCA INTESA BEOGRAD and INTESA SANPAOLO. The Domain Names <bancaintesabeogra.com> <bancaintesaspaolo.com>, <iintesasanpaolo.com>, <inetesasanpaolo.com>, <inntesasanpaolo.com>, <inteasasanpaolo.com>, <intesasanpaola.com>, <lintesasanpaolo.com>, <mailintesasanpaolo.com> and <wwwintesanpaolo.com> combine the registered trademarks in their entirety with typographical errors or the addition of a generic term.

In the Domain Name <bancaintesabeogra.com> the letter “d” is omitted at the end of the domain name. In the Domain Name <bancaintesaspaolo.com> the “an” in “San Paolo” is omitted. The Domain Name <iintesasanpaolo.com> has the addition of the letter “i” at the beginning of the domain name. The Domain Name <inetesasanpaolo.com> has the addition of the letter “e”. The Domain Name <inntesasanpaolo.com> has the addition of the letter “n”. The Domain Name <inteasasanpaolo.com> has the addition of the letter “a”. The Domain Name <intesasanpaola.com> has the replacement of the letter “o” by the letter “a”. The Domain Name <lintesasanpaolo.com> has the addition of the letter “l” at the beginning of the Domain Name.

The Domain Name <mailintesasanpaolo.com> has the addition of the word “mail”, which is a generic term. In the Domain Name <wwwintesanpaolo.com> the letters “sa” are omitted and the prefix “www” without the dot is added as part of the Domain Name.

These alterations do not render the Domain Names significantly different from the Complainant’s trademarks. Such minimal changes to a mark can be considered a typical case of “typosquatting”. This practice has long been recognized as a strong ground for a finding of identity or confusing similarity within the meaning of paragraph 4(a)(i) of the Policy (See, EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Igor S Panin, WIPO Case No. D2009-1503; Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095, and Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073).

The addition of the letters “www” before the word “intesanpaolo”, without the period, does not serve to distinguish the domain name from the Complainant’s trademark. Omitting the period in between the letters “www” and a domain name is a common typing error, and accordingly the addition of these letters as a prefix does not serve to reduce confusion between a trademark and a domain name (See BHP Billiton Innovation Pty Ltd v. Yorkshire Enterprises Limited and Whois Privacy Services Pty Ltd, WIPO Case No. D2009-1558; F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422; Compagnie Gervais Danone, Bonafont S.A de C.V v. PrivacyProtect.org, WIPO Case No. D2009-1659; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441). The same can be said of the word “mail”.

In sum, the Domain Names are confusingly similar to the Complainant’s marks. Therefore, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Domain Names or to use the trademarks. The Complainant has prior rights in the trademarks which precede the Respondent’s registrations of the Domain Names. The Complainant has alleged that the Domain Names do not correspond to Respondent’s name, that the Respondent is not commonly known by the Domain Names and that the Respondent does not use the Domain Names for any fair or noncommercial use.

The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Domain Names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1, Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent has failed to show that it has acquired any trademark rights in respect of the Domain Names, that it is commonly known by the Domain Names or that the Domain Names are used in connection with a bona fide offering of goods or services.

Therefore, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove both that the Domain Names were registered in bad faith and that they are being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant’s allegations with regard to the Respondent’s registration and use of the Domain Names in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of this default.

There is overwhelming evidence provided by the Complainant of bad faith on the part of the Respondent which is not refuted by the Respondent. According to the Complainant the Respondent has intentionally attempted to attract for commercial purposes, Internet users to its sites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement of its websites. The fact that all the Domain Names are confusingly similar to the Complainant’s trademarks appears to indicate that the Respondent had knowledge of the prior trademark registrations of the Complainant at the time of the registration of the Domain Names.

Typosquatting has long been held as an example of bad faith (See, e.g., Sanofi-aventis v. Elizabeth Riegel and Andrew Riegal, WIPO Case No. D2005-1045; Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869). In the instant case, typosquatting demonstrates further evidence of the existence of bad faith at the time of registration. The fact that the Respondent used a combination of the terms BANCA, INTESA, SANPAOLO and BEOGRAD in all 10 Domain Names with minimum variations and after the Complainant’s trademarks were registered is evidence that the Domain Names were registered with knowledge of the existence of the Complainant’s trademarks and in bad faith.

Likewise, the Respondent's history of registering and using domain names without any rights or legitimate interests, as evidenced by over seventeen (17) previous UDRP decisions decided against the Respondent, in the view of the Panel, is further evidence of bad faith on the part of the Respondent (See Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 and General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834). There has been one previous decision between the same parties (see Intesa Sanpaolo S.p.A. v. Ho Nim, WIPO Case No. D2010-0770) that has been decided in favor of the Complainant.

Moreover, as stated by the Complainant and on the basis of the printouts of the websites to which the Domain Names resolve, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the Domain Names the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online locations, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement.

The Panel finds that the Complainant has satisfied the third requirement.

6. Decision

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 Names <bancaintesabeogra.com> <bancaintesaspaolo.com>, <iintesasanpaolo.com>, <inetesasanpaolo.com>, <inntesasanpaolo.com>, <inteasasanpaolo.com>, <intesasanpaola.com>, <lintesasanpaolo.com>, <mailintesasanpaolo.com> and <wwwintesanpaolo.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Dated: September 16, 2010

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