WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Fundacion Private Whois
Case No. D2013-1437
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Fundacion Private Whois of Panama.
2. The Domain Name and Registrar
The disputed domain name <credintesa.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2013. On August 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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.
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 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2013.
The Center appointed Timothy D. Casey as the sole panelist in this matter on September 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
Complainant Intesa Sanpaolo S.p.A. is an Italian banking corporation with about 5,700 retail branches, market share of over 17% in most Italian regions, and claims to be the “undisputed leader” in Italy in all banking business areas (retail, corporate and wealth management). Formed in 2007 from the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., it is part of a larger Intesa Panpaolo banking group with 11 million customers primarily in Central-Eastern Europe, but also has a presence for corporate customers in 29 countries including United States, Russian Federation, China, and India.
Complainant owns several domain names containing both the terms “intesa” and “credit.” These include: <intesagestionecrediti.com>, <intesamediocredito.it>, <intesamediocredito.biz>, <intesamediocredito.org> <intesamediocredito.com> and <intesamediocredito.net>.
Complainant has many registered trademarks, including INTESA, which is registered in many jurisdictions. In particular, INTESA is registered as an international trademark No. 793367, as of September 4, 2002; as a European Community trademark Nos. 3105277 and 2803773, as of February 2, 2009 and November 17, 2013, respectively; and as a United States trademark No. 4196961 as of August 28, 2012. Complainant also has other registered trademarks that include “intesa” as part of the mark, notably including Panamanian registrations for BANCA INTESA Nos. 135542/01 and 135541/01, both as of March 18, 2005.
Respondent has been identified only as the domain administrator Fundacion Private WhoIs, with a registered mailing address in Panama. Little else is known about Respondent. According to “whois.internec.net”, the disputed domain name <credintesa.com> was registered on November 30, 2011. Annex A of the Complaint contains only information about a domain name unrelated to this dispute, and would appear to this Panel to have been filed in error. So these facts about Respondent’s identity and domain name registration are taken to be undisputed based on Complainant’s allegation and from the Center’s independent effort to verify the Respondent’s identity pursuant to its obligations under the Policy.
The disputed domain name resolves to a website, that when visited, contained just a single link offering the domain name for sale accompanied by some advertisement links supplied by a separate party. The domain name sale is facilitated through the “www.parkingcrew.net” website. The advertisements which Complainant found on the “www.credintesa.com” website are all for businesses that relate to the banking business.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. Complainant asserts that the disputed domain name <credintesa.com> is obviously “almost identical” to INTESA. The difference between the two, the letters “cred” is asserted to be a clear reference to the English term “credit,” which has meaning closely related to the banking functions of Complainant’s business. By combining the root of the English word “credit” and the INTESA trademark, Complainant suggests <credintesa.com> is a “minor and descriptive variation” of both the trademark and the above listed domain names owned by Complainant that contain both INTESA trademark and the term “credit.”
Complainant also asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims to have found no fair or noncommercial uses of the disputed domain name based on the contents of the web site to which the domain name resolves.
Finally, Complainant asserts several arguments showing that the disputed domain name has been registered and is being used in bad faith. First, Complainant claims that simply because INTESA is so well known and similar to the disputed domain name, and because a basic Google search for “intesa” yields references to Complainant, that Respondent must have had knowledge of Complainant’s trademark, and would not have registered the domain name were it not for knowledge of Complainant’s trademark. Second, the general offer for sale of the disputed domain name by Respondent on its own can constitute bad faith. Third, the advertisements from Complaint’s competitors on Respondent’s website prove that Respondent is intentionally diverting traffic away from Complainant’s web sites by the confusingly similar names. Finally, Complainant also alleges that because of Complainant’s sheer business size, number of Internet customers, and number of previously successful domain name disputes in similar situations, Respondent must be acting in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In view of the default and the absence of any reply to the Complaint by Respondent, the discussion and findings will be based upon Complainant’s contentions and any reasonable position that can be attributable to Respondent under the circumstances. To grant the Complainant’s request to reassign the disputed domain name, paragraph 4(a) of the Policy requires that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds many elements in this case are easily proven by the facts alleged by Complainant. Two issues, however, are not immediately evident to the Panel based on the facts presented: 1) whether “credintesa” is confusingly similar to INTESA; and 2) whether the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has a well-established trademark rights for INTESA, and that trademark is similar to, but not identical to, the domain name in contention. Whether the domain name is confusingly similar is harder to conclude.
“Credintesa” is comprised of INTESA with four letters appended to the front. However, any addition of words or letters to a trademark does not necessarily make for a confusingly similar mark. The bar for showing confusing similarity may be higher where the trademark itself is a word in common use, such as “intesa” which translates in English to “agreement” according to the certificate of registration for the US Trademark provided by Complainant.
There is some evidence of confusing similarity in that the four appended characters “cred” could be interpreted by some as a reference to the English term “credit” or the Italian translation “credito” both of which relate to the business of Complainant. Stronger evidence can be found related to Respondent’s use of the disputed domain name and that such use has nothing to do with “agreement”. The website at the disputed domain name includes numerous advertisements for products or services related to the banking business of Complainant. A disclaimer on the website indicates that these advertisements were “served automatically” by a third party. Whether served by a third party or selected by Respondent, the Panel finds it unlikely that either entity would have picked banking-related advertisements unless the advertisements were somehow related to the disputed domain name; drawing an association between the two otherwise makes no sense. The Panel takes this as an admission on Respondent’s part that the disputed domain name was intended to be related to the banking industry in some way, and the most obvious way is through some association with INTESA. From this, the Panel is further assured of its conclusion that the disputed domain name was not selected for its association with “agreement” but rather was selected to create an association with Complainant’s business through use of INTESA and as such was intended to be confusingly similar, regardless of whether such confusion is obvious in the abstract.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
There is no evidence of Respondent’s legitimate interests in the domain name, and in particular, there is no evidence of any use of the disputed domain name in connection with a bona fide offering of goods or services. Without a reply from Respondent, the only evidence of <credintesa.com> use is Annex E of Complainant’s brief, constituting a prima facie case.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Many circumstances can constitute bad faith. Paragraph 4(b)(i) of the Policy provides that one such circumstance may occur where Respondent acquires the disputed domain name primarily for the purpose of selling renting, or otherwise transferring the disputed domain name to Complainant or Complainant’s competitor for consideration that is in excess of out-of-pocket costs. Here, the disputed domain name seems to be generally for sale. See, top line of Complaint Annex E. However, there is no evidence or allegation that the consideration requested is excessive, or sufficient evidence demonstrating that Respondent’s primary intention was resale to Complainant or Complainant’s competitors. The Panel finds under these circumstances that no bad faith under Policy, paragraph 4(b)(i) related to this general offer for sale.
Bad faith also occurs, according to paragraph 4(b)(iv) of the Policy, where a domain name is intentionally registered and used for commercial gain by creating a likelihood of confusion with Complainant’s trademark. While it is generally hard to find direct evidence of intent, it is easy to find that there is commercial gain from the fact that the website at the disputed domain name consists almost entirely of advertisements that likely benefit Respondent commercially in some manner. The fact that all the advertisements happen to be for banking, finance, or real estate products offered by Complainant and/or competitors to Complainant suggests that any commercial gain is due to a likelihood of consumer confusion. As noted above, it also appears that Respondent purposely selected the disputed domain name because of the potential for association with the INTESA trademark, which supports a finding that the disputed domain name was selected, registered and is being used to create confusion and possible divert traffic from Complainant’s legitimate web sites.
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 <credintesa.com> be transferred to the Complainant.
Timothy D. Casey
Date: October 10, 2013