WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Brian Walket / Brain Walket
Case No. D2013-1532
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 Brian Walket / Brain Walket of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <groupintesasanpaolo.com> is registered with 007Names, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2013. On August 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 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 September 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2013.
The Center appointed Peter Burgstaller as the sole panelist in this matter on October 2, 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 is a leading banking group in Italy and provides its services besides the Mediterranean area also in the United States of America, Russia, China, India and Central-Eastern Europe. The Complainant is the owner of several registered trademarks especially the registered trademarks INTESA SANPAOLO, GRUPPO INTESA SANPAOLO and INTESA SANPAOLO GROUP SERVICES which are registered as Community Trademark or International Trademark in 2007 and 2009.
The Complainant has registered several domain names containing the words “intesa” and “sanpaolo” in different variations and under different top levels, all of these domain names are connected to the official website which is provided under the domain name <intesasanpaolo.com>.
The Respondent registered the disputed domain name on August 7, 2013. The Respondent operates a website under the disputed domain name and uses not only trademarks of the Complainant but also reproduces parts of the Complainant’s website on its website.
5. Parties’ Contentions
The Complainant is the leading Italian banking group and provides its business throughout the world; the Complainant is present in 29 countries. The Complainant is the owner, among others, of the following registered European and International Trademarks: INTESA SANPAOLO, GRUPPO INTESA SANPAOLO and INTESA SANPAOLO GROUP SERVICES.
The disputed domain name <groupintesasanpaolo.com>, registered by the Respondent on August 7, 2013, is at least confusingly similar with the Complainant’s trademarks and the Respondent has no rights or legitimate interests in respect of that domain name.
The Respondent registered and is using the disputed domain name in bad faith, especially because of the fact that the purpose of the use of the disputed domain name is to receive financial information by operating a “phishing” website under the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name incorporates the entirety of the Complainant’s trademark INTESA SANPAOLO together with the generic prefix “group”.
The use of a trademark with a generic word (such as “shop” or “group”) does not necessarily make a domain name distinctive from the trademark. In fact it is the Panel’s conviction that in using such a word together with a registered trademark rather strengthens the impression that the disputed domain name is in some way connected to the Complainant or at least “free rides” on the fame/publicity of the Complainant’s trademarks (see, e.g., Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406; Ryder Cup Europe LLP v. Rydercuponline.com / Andrew Seaforth, WIPO Case No. D2010-0688; Sanofi-aventis, AVENTISUB II Inc. v. MuruganNadar / Rajesh Singh, WIPO Case No. D2010-1959; Société des Produits Nestlé S.A. v. MrToys.com LLC, WIPO Case No. D2012-1356; Allianz SE v. Roy Lee / Traffic-Domain.com, WIPO Case No. D2012-1459; Swarovski Aktiengesellschaft v. mei xudong, WIPO Case No. D2013-0150; or Swarovski Aktiengesellschaft v. ‘www.swarovski-outlet.org’, WIPO Case No. D2013-0335.
It has also long been held that suffixes such as country code or generic Top-Level Domains cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has made out the first of the three elements under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy the complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the domain name.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(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 a 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.”
If the respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the domain names, the complainant will have failed to discharge its onus and the complaint will fail with respect to the domain name. However, in the present case the Respondent failed to submit a Response.
It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 2.1, “complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden production shifts to come forward with appropriate allegation or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
Considering all of the evidence in the Complaint together with the Annexes presented by the Complainant and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark INTESA SANPAOLO in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(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 the Respondent’s website or other online 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 the Respondent’s web site or location.
As stated in many decisions adopted under the Policy (esp. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registered and used in bad faith, are cumulative, consequently, the Complainant must show that:
- the disputed domain name was registered by the respondent in bad faith, and
- the disputed domain name is being used by the respondent in bad faith.
In the present case the Respondent not only registered the disputed domain name which is confusingly similar to the Complainant’s INTESA SANPAOLO Trademark but also reproduces parts of the Complainant’s website as well as uses registered trademarks of the Complainant on its website under the disputed domain name at issue. With that conduct the Respondent confusingly leads Internet users to presume that its website belongs or is at least connected to the Complainant with the aim to receive information such as passwords. Such behavior is called “phishing” which means that someone attempts to acquire especially financial information by masquerading as a trustworthy entity in an electronic communication such as an email or (like in the present case) on a website. Phishing is not just an unlawful act but in fact a form of Internet fraud. Such behavior is one of the clearest evidence of bad faith conduct (see, e.g.. Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa, WIPO Case No. D2006-0614; Google, Inc v. Robert Takovich, WIPO Case No. DMX2012-0006; The Royal Bank of Scotland Group plc v. Secret Regsitration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093).
It is therefore without any doubt for this Panel that the disputed domain name at issue was registered and is being used in bad faith.
Accordingly, the Panel finds the Complainant has met the conditions set out in 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 <groupintesasanpaolo.com> be transferred to the Complainant.
Date: October 12, 2013