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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Wang Songxu

Case No. D2013-0100

1. The Parties

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

The Respondent is Wang Songxu of Shan Dong, China.

2. The Domain Name and Registrar

The disputed domain name <intesabci.info> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2013. On January 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2013, the Registrar 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 January 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2013.

The Center appointed Jonathan Agmon as the sole panelist in this matter on February 27, 2013. 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 S.P.A., is the leading Italian banking group and one of the protagonists in the European financial arena.

The Complainant is among the top banking groups in the euro zone, with a market capitalization exceeding 29.8 billion euro.

The Complainant operates approximately 5,700 branches through Italy with market shares of more than 17% in most Italian regions and with approximately 11 million customers.

The Complainant has also about 2,000 branches and over 8.5 million customers in Central-Eastern Europe.

The Complainant is the owner of the following registered trademarks: International trademark registration No. 793367 INTESA, granted on September 4, 2002 in class 36; Community trademark registration No. 3105277 INTESA, from March 21, 2003 in classes 16, 35, 36, 38, 41 and 42; International trademark registration No. 769072 INTESABCI, granted on October 18, 2001 in class 36; International trademark registration No. 773000 INTESABCI & devices, granted on November 8, 2001 in class 36; Community trademark registration No. 2387009 INTESABCI & device, granted on November 26, 2002 in classes 36 and 38.

The Complainant is also the owner of the following domain names bearing the trademark INTESABCI: <intesabci.com>, <intesabci.org>, <intesabci.net>, <intesabci.com.cn>, <intesa-bci.com> and <intesa-bci.org>.

The disputed domain name <intesabci.info> was registered on December 22, 2012 after the Complainant registered the trademarks INTESA and INTESABCI worldwide.

The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant's INTESABCI and INTESA trademarks, in which the Complainant has rights, seeing that the disputed domain name encompasses the entire INTESABCI trademark.

The Complainant further argues that the Respondent has no rights or legitimate interests with respect to the INTESA and INTESABCI trademarks or the disputed domain name.

The Complainant further argues that the disputed domain name was registered in bad faith.

The Complainant further argues that its trademarks INTESA and INTESABCI are distinctive and well known all around the world. The Complainant argues that since the disputed domain name is confusingly similar to the Complainant well-known trademark it indicates that the Respondent had knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name.

The Complainant further argues that the disputed domain name is not used for any bona fide offerings.

The Complainant further argues that the disputed domain name is connected to a pornographic website and therefore this is clear evidence that the disputed domain name has been registered and used in bad faith.

The Complainant further argues that the pornographic website under the disputed domain name contains a specific disclaimer in the bottom of the page in red-color Chinese characters in which the same is offered to sale. This is clear evidence that the disputed domain name has been registered in bad faith and in order to resell it.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns numerous trademark registrations for the marks INTESA and INTESABCI. For example: International trademark registration No. 793367 INTESA, granted on September 4, 2002 in class 36; Community trademark registration No. 3105277 INTESA, from March 21, 2003 in classes 16, 35, 36, 38, 41 and 42; International trademark registration No. 769072 INTESABCI, granted on October 18, 2001 in class 36.

The Complainant also owns numerous domain names with the trademark INTESABCI worldwide, among these: <intesabci.com>, <intesabci.org>, <intesabci.net>.

The disputed domain name <intesabci.info> differs from the registered INTESABCI trademark by the additional generic top-level domain (gTLD) “.info”. The disputed domain name integrates the Complainant’s INTESABCI trademark in its entirety.

The addition of the gTLD “.info” to the disputed domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The gTLD “.info” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the INTESABCI and/or INTESA trademarks, or a variation thereof.

The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademarks INTESA and INTESABCI. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the INTESABCI trademark since the year 2001. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.

The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The Complainant provided evidence showing that at the time the Complaint was filed, the disputed domain name resolved to a pornographic website (See Annex E to the Complaint). The fact that the Respondent has used the disputed domain name to operate a pornographic website as shown in the Complainant’s evidence is another indication for the Respondent’s bad faith. The redirection to pornographic sites from a domain name incorporating the Complainant’s trademark is evidence of bad faith (Ty, Inc v. O.z. Names, WIPO Case No. D2000-0370; Dell Computer Corporation v. RaveClub Berlin, WIPO Case No. D2002-0601; Six Continents Hotels, Inc v. Seweryn Nowak, WIPO Case No. D2003-0022).

At the time of this decision, the disputed domain name does not resolve to an active website. However, the Respondent’s passive use of the disputed domain name indicates bad faith registration and use of the disputed domain name: “The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept” (See Cho Yong Pil v. Kee Dooseok, WIPO Case No. D2000-0754). See also: “The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003).

Another indication for the Respondent’s bad faith is raised from the incorporation of the Complainant well-known trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273).

Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the Respondent’s using of the disputed domain name with no conceivable explanation for doing so, the Respondent’s former using the disputed domain name for a pornographic website, and the Respondent’s offering to sell the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of 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 <intesabci.info> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: March 14, 2013

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