WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Chen Yan Hua
Case No. D2011-0657
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy represented by Perani Pozzi Tavella of Italy.
The Respondent is Chen Yan Hua of Shanghai, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <intesasanpasolo.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2011. On April 13, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On April 14, 2011, Moniker Online Services, LLC. 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 April 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2011.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on May 16, 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 an Italian banking group formed on January 1, 2007 by the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. The Complainant owns various trademark registrations of the trademark INTESA SANPAOLO, including Community Trade Mark No. 5301999, registered on June 18, 2007 and International Registration No. 920896, registered on March 7, 2007 and designating China, the country of residence of the Respondent, among others.
The disputed domain name was registered on June 8, 2010.
5. Parties’ Contentions
The Complainant is the leading Italian banking group and is also among the top ten banking groups in the Euro zone. The Complainant owns several trademark registrations for the trademark INTESA SANPAOLO as well as several domain name registrations consisting of the trademark.
The disputed domain name is similar to the Complainant's trademark, because it is only a slight alphabetical variation of the trademark.
The Respondent has nothing to do with the Complainant, has not been authorized by the Complainant to use the disputed domain name, the disputed domain name does not correspond to the name of the Respondent and there is no fair or noncommercial use of the domain name.
The Respondent has registered and is using the disputed domain name in bad faith, because the fact that it has registered a domain name confusingly similar to the Complainant's trademark indicates that it was aware of the Complainant's trademark at the time of registration of the disputed domain name.
A further indication of bad faith registration and use is the lack of response by the Respondent to the Complainant's cease and desist letter dated February 8, 2011.
The disputed domain name points to a website sponsoring banking and financial services, i.e. services competing with those of the Complainant. Internet users are therefore misled to the website of Complainant's competitors when seeking for information about the Complainant.
The Complainant also draws the Panel's attention to the fact that the address of the Respondent is the same as that of a Mr. Ho Nim, who has appeared as a respondent in several similar cases, some of which the Complainant has been a party to.
The Complainant also contends that the Respondent is gaining remuneration of the sponsoring activity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Firstly, for the purposes of determining the similarity between the Complainant's trademark and the disputed domain name, the extension “.com” is irrelevant as has been held by several WIPO UDRP panels before.
The comparison therefore needs to be done between the Complainant's trademark INTESA SANPAOLO and ”intesasanpasolo”.
The Complainant's trademark consists of two separate words whereas the disputed domain name consists of a single word. However, for the average Internet user this does not present a perceptible difference, as it is customary to combine multi-word trademarks and names in one-word domain names.
The only other difference is the insertion of the letter “s” close to the end of the disputed domain name. In this Panel's opinion, the difference of one letter in signs consisting of several letters is not sufficient to offset the similarities between the signs concerned, especially as the letter is located at the end of the sign.
In this particular case, as the Complainant contends, the disputed domain name is nothing but a slightly altered version of the Complainant's trademark. The Panel therefore finds that the Complainant has demonstrated that the disputed domain name is similar to a trademark to which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant contends, undisputed, that the Respondent is not authorized to use the disputed domain name and that the Respondent is not known by that name and is not involved in bona fide noncommercial activities with respect to the disputed domain name.
The Panel considers that the Complainant has made a prima facie case of the Respondent's lack of rights or legitimate interests to the disputed domain name. In the absence of any reply from the Respondent, the Panel considers that the Complainant has satisfied its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant has invoked several reasons why the Respondent should be deemed to have registered and used the disputed domain name in bad faith.
From the evidence put forward by the Complainant, it is evident that the Complainant had used and registered the trademark INTESA SANPAOLO before the Respondent's registration of the disputed domain name. This seniority together with the Complainant's market presence as one of the biggest banking institutions in Italy and the Euro-area, lead to the conclusion that the Respondent must have been aware of the Complainant's trademark when registering the disputed domain name.
Furthermore, the disputed domain name points to a website containing ads of the Complainant's competitors. These ads are also pay-per-click ads to the websites of the Complainant's competitors.
It therefore follows that the Respondent obtained the disputed domain name for the primary purpose of trading on the Complainant's goodwill or to disrupt its business. Thus the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <intesasanpasolo.com> be transferred to the Complainant.
Dated: May 30, 2011