WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Domain Admin, PrivacyProtect.org / Ma Ying Jo
Case No. D2013-0642
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Domain Admin, PrivacyProtect.org of Queensland, Australia / Ma Ying Jo of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <intesasanpao.com> is registered with RegisterMatrix.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 9, 2013. On April 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2013, the Registrar 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 April 17, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 18, 2013.
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 April 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2013.
The Center appointed Cherise Valles as the sole panelist in this matter on May 23, 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 relevant trademark in this Complaint is INTESA SANPAOLO which the Complainant uses in connection with banking and financial services. The Complainant is the foremost Italian banking group and a main protagonist in the European financial arena. The company, Intesa Sanpaolo, is the resulting of a merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.
Intesa Sanpaolo contends it is among the top banking groups in the euro zone, with a market capitalisation exceeding 29,8 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). With a network of approximately 5,700 branches that are well-distributed throughout Italy, and a market share of more than 17% in most Italian regions, Intesa Sanpaolo offers its services to approximately 11 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 2,000 branches and over 8,5 million customers. Moreover, its international network that specialises in supporting corporate customers is present in 29 countries, in particular in the Mediterranean as well as in other areas where Italian companies are very active, such as the United States of America,the Russian Federation, China and India.
The disputed domain name was registered on December 16, 2012.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its amended Complaint filed on April 9, 2013, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
- The disputed domain name is confusingly similar or identical to the Complainant's registered trademark, INTESA SANPAOLO, in light of the fact that it wholly incorporates the Complainant's mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent has not filed a response to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in these proceedings and is therefore in default and the Panel may draw appropriate inferences from the available evidence.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of the INTESA SANPAOLO mark. The mark has been in use in commerce since 2007. The Complainant has submitted evidence in Annex E to the Complaint demonstrating that it is the owner of multiple trademark registrations in Italy, the European Community and internationally for the mark INTESA SANPAOLO including the following:
- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42, covering, among others, Australia;
- Community trademark registration n. 5301999 “INTESA SANPAOLO”, applied on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;
- Italian trademark registration n. 1042140 “INTESA SANPAOLO”, applied on February 2, 2007 and granted on March 07, 2007, in classes 9, 16, 35, 36, 38, 41 and 42.
The Complainant owns many domain names that contain the term “intesa sanpaolo”.
The Panel finds that the Complainant’s marks are distinctive and that the disputed domain name, <intesasanpao.com>, is confusingly similar to the Complainant’s mark as it merely deletes two letters from the Complainant’s mark.
“It has long been held that… the addition of a few letters, especially where those letters form a generic expression indicating a company or an activity in which the trademark owner operates does not detract from confusing similarity….” Graybar Services Inc. v. GrayBar Elec, Grayberic Lawrenge, WIPO Case No. D2009-1017 (finding <grayberinc.com> confusingly similar to GRAYBAR). The Panel finds that the deletion of the two letters “LO” do not detract from the confusing similarity between the Complainant’s mark and the disputed domain name.
In Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, Case No. D2001-1314), the Panel considered that the similar domain names at issue were a clear example of “a case of ‘typosquatting’ where the domain name is a slight alphabetical variation from a famous mark. WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user – particularly when the mark is another language from that of the user’s mother tongue.”
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Complainant submits that the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable and distinctive INTESA SANPAOLO trademark in any way or manner. The Respondent has not and cannot demonstrate that it has ever made any legitimate offering of goods or services under the Complainant’s INTESA SANPAOLO trademark. The Respondent simply utilizes a domain name that is very similar to the Complainant’s mark, with the clear intent to confuse Internet users and improperly redirect traffic. This is a clear violation of the Policy. See, e.g., Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,supra.
Furthermore, there is no evidence on record that the Respondent has been commonly known by the disputed domain name or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name. The Respondent, therefore, has no rights or legitimate interests with respect to the use of the disputed domain name.
Finally, the Complainant submits that the Respondent is not making any fair or legitimate non-commercial use of the disputed domain name.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Complainant submits that the Respondent is intentionally attempting to divert, for commercial gain, Internet users to a website containing offers from the Complainant’s competitors in the banking and financial services sector. This creates a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the websites to which it redirects. The Complainant further submits the registration and use of a domain name to re-direct internet users to websites of competing organizations constitute bad faith registration and use under the Policy. Where a respondent is found to be diverting users to its website (and/or the websites of associated third parties) to generate traffic and sales commissions for its own commercial benefit, such conduct is uniformly recognized by UDRP panels as constituting bad faith under the Policy. See YAHOO! INC. v. David Murray, WIPO Case No. D2000-1013 (finding bad faith where respondent chooses a domain name similar to the complainant’s mark for a site which offers services similar to the complainant); Edmunds.com v. Ultimate 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”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Registration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of…a company which directly competes with the Complainant, constitutes bad faith registration and use”).
The Complainant also submits that the use of the disputed domain name, which allows accessing to the web sites of the Complainant’s competitors, causes damage to the latter, due to the fact that the Complainant’s current clients are likely to be misled and it may lose potential clients. See Microsoft Corporation v. StepWeb WIPO Case No. D2000-1500.
Furthermore, considering that the disputed domain name is almost identical to the Complainant’s trademark, the Panel finds that the Respondent registered the disputed domain name in order to create a likelihood of confusion with the Complainant’s trademarks and thus to profit from its reputation. The registration without authorization of a domain name that is identical to a complainant’s famous mark is evidence of bad faith, and the knowledge of the mark at the time of registration of the domain name suggests bad faith. See PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561. Moreover, as stated in the Amendment to the Complaint, Ma Ying Jo has been involved in several other typosquatting cases in connection with INTESA SANPAOLO.
The Complainant further submits that the Respondent appears to have utilized a privacy registration program. It is clear to the Panel that the Respondent has intentionally hidden its true identity and contact information. “[T]he use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide”. The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156. In this case, the Panel draws a negative inference from the Respondent’s use of the privacy registration service.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
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 <intesasanpao.com> be transferred to the Complainant.
Cherise M. Valles
Date: June 9, 2013