WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd
Case No. D2011-0228
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Host Master, Transure Enterprise Ltd of Tortola, Virgin Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ntesasanpaolo.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2011. On February 4, 2011, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 7, 2011, Above.com, Inc. 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 February 7, 2011, providing the registrant and contact information disclosed by Above.com, Inc. and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 9, 2011.
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 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2011.
The Center appointed Gregory N. Albright as the sole panelist in this matter on March 11, 2011. 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 the owner of the following registrations of the trademark INTESA SANPAOLO: International Registration No. 920896, and Italian Registration No. 1042140, both issued on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42; and Community Registration No. 5301999, issued on June 18, 2007, in classes 35, 36, and 38.
The Respondent registered the disputed domain name <ntesasanpaolo.com> on November 13, 2007.
5. Parties’ Contentions
The Complainant is the leading Italian banking group, formed through the January 1, 2007 merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. The Complainant has a network of 5,900 branches in Italy, offering its services to approximately 11.3 million customers.
The Complainant is also among the top banking groups in the euro zone, with a market capitalization of more than EUR 31.8 billion. The Complainant has a strong presence in Central-Eastern Europe with a network of approximately 2,000 branches, and over 8.5 million customers. This international network also supports corporate customers in 29 countries, in particular the Mediterranean area and other areas where Italian companies are most active, e.g., the United States of America, the Russian Federation, the People’s Republic of China, and India.
The Complainant uses its INTESA SANPAOLO trademark in the domain names <intesasanpaolo.com> and <intesa-sanpaolo.com>, and in the top level domains “.org”, “.eu”, “.info”, “.net”, and “.biz”, as well.
The disputed domain name <ntesasanpaolo.com> is confusingly similar to the Complainant’s trademark in that it reproduces the INTESA SANPAOLO trademark exactly except that it omits the letter “i” at the beginning. This kind of “typo-squatting” exploits confusing similarity arising from typing or spelling errors commonly made by Internet users. Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent to make any use of the INTESA SANPAOLO trademark. Nor does the disputed domain name correspond to the name of the Respondent, or constitute a name by which the Respondent is commonly known. No fair, noncommercial uses of the disputed domain name are at stake.
The disputed domain name was registered and is being used in bad faith. The Complainant’s INTESA SANPAOLO trademark is distinctive, and the Respondent’s registration of a confusingly similar domain name indicates that the Respondent had knowledge of the Complainant’s trademark when it registered the disputed domain name. In addition, the disputed domain name is not being used for any bona fide purpose. To the contrary, the website to which the disputed domain name resolved at the time of the Complaint provided links to banking and financial services of the Complainant’s competitors. Thus, the Respondent registered and is using the disputed domain name intentionally to divert traffic away from the Complainant’s website to the websites of the Complainant’s competitors, resulting in financial gain for the Respondent. Numerous UDRP decisions have recognized that such actions constitute bad faith registration and use under the Policy.
The Respondent’s registration and use of the disputed domain name causes harm to the Complainant because it misleads the Complainant’s present clients and threatens the loss of new clients. This kind of harm is particularly acute for a large financial institution like the Complainant because it has a large number of online banking users. By providing links to other websites the Respondent is reaping commercial gain from its use of the disputed domain name.
Finally, the Respondent has made a regular practice of typo-squatting, i.e., registering and using domain names that are a variation of famous trademarks. Moreover, according to the Complainant’s search of WIPO records, the Respondent Transure Enterprise Ltd has been named as a respondent in more than 50 prior UDRP cases. See, e.g, F. Hoffmann-La Roche AG v. Above.com Domain Privacy / Shu Lin, Shu Lin Enterprises Limited / Host Master, Transure Enterprise Ltd, WIPO Case No. D2010-1986; LEGO Juris A/S v. Shu Lin/Transure Enterprise Ltd/ Above.com Domain Privacy, WIPO Case No. D2010-1648 (finding that Transure Enterprise Ltd’s involvement in numerous prior UDRP proceedings supported a clear finding of registration and use in bad faith).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it owns trademark rights in the INTESA SANPAOLO trademark. Among other things, the Complainant has submitted evidence that it obtained registrations of the mark that pre-date the Respondent’s registration of the disputed domain name.
The disputed domain name <ntesasanpaolo.com> is confusingly similar to the Complainant’s trademark INTESA SANPAOLO. The mere omission of the letter “i” at the beginning of the disputed domain name does not eliminate the confusing similarity. A finding of confusing similarity cannot be avoided through the omission of a single letter from a trademark in a disputed domain name, when the remainder of the disputed domain name is identical to the trademark, as in this case.
This Panel finds that the Complainant has established the first element.
B. Rights or Legitimate Interests
The Complainant has also made an adequate prima facie showing that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. INTESA SANPAOLO does not resemble the Respondent’s name, and there is no evidence that the Respondent is otherwise commonly known as “ntesasanpaolo.” The Complainant also certifies that it has not licensed or otherwise granted the Respondent permission to use the INTESA SANPAOLO mark. The web page to which the disputed domain names resolve manifests the Respondent’s intent to capitalize upon use of the INTESA SANPAOLO mark for commercial gain, rather than for any legitimate noncommercial or otherwise fair use.
The Respondent did not come forward with any evidence that it has any rights or legitimate interests in respect of the disputed domain name.
This Panel finds that the Complainant has established the second element.
C. Registered and Used in Bad Faith
The Complainant has shown that its use and registration of the INTESA SANPAOLO trademark pre-date the Respondent’s registration of the disputed domain name. The Complainant’s seniority, together with evidence of its extensive market presence, lead to the conclusion that the Respondent must have registered the disputed domain name with knowledge of the Complainant’s mark, and adopted the disputed domain name intentionally to trade on the goodwill associated with the Complainant’s mark.
In the present circumstances, the Respondent’s adoption of a domain name that is identical to the Complainant’s trademark – except for the omission of the initial letter “i” – is also indicative of bad faith. The conclusion is inescapable that the Respondent sought intentionally to come as close as possible to the Complainant’s trademark for the purpose of diverting Internet traffic from the Complainant’s website to the Respondent’s website.
Further, at the time the Complaint was filed, the Respondent’s website posted links to the websites of the Complainant’s competitors. It is bad faith to use a domain name that is confusingly similar to a trademark, without the consent of the trademark owner, in a manner that causes competitive injury. The injury is particularly acute in this case, in which the Complainant provides some of its banking services online. That the Respondent is likely profiting from this misconduct further supports a finding of bad faith.
The frequency with which the Respondent has been a party in prior UDRP proceedings likewise permits an inference of the Respondent’s bad faith in this case as well.
This Panel finds that the Complainant has established the third element.
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 <ntesasanpaolo.com> be transferred to the Complainant.
Gregory N. Albright
Dated: March 25, 2011