WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Registrant ID: DI_14708362, Xixin Xing
Case No. D2013-2115
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Registrant ID: DI_14708362, Xixin Xing of Dandong, Liaoning, China.
2. The Domain Name and Registrar
The disputed domain name<intesasanpaologroup.mobi> (“the Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2013. On December 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 6, 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 December 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2014. The Response was filed with the Center on January 8, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on January 17, 2014. 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 one of the leading Italian banking groups which was formed as a result of a merger of two then major banking groups Banca Intesa SpA and Sanpaolo IMI SpA in January 2007. The Complainant has a market capitalisation exceeding EUR 29.8 billion. It has a network of 5,700 branches in Italy and approximately 11 million customers there. The Complainant also has a strong presence in Central and Eastern Europe with a network of approximately 2,000 branches and over 8.5 million customers in that area. It also has an international network specialized in supporting corporate customers in over 29 countries particularly in the Mediterranean as well as the United States, Russian Federation, China and India.
The Complainant owns the following trademarks, INTESA SANPAOLO, GRUPPO INTESA and INTESA SANPAOLO GROUP SERVICES (“the Trade Marks”). The Trade Marks are registered in many countries. The Complainant has an International registration for INTESA SANPAOLO under No. 920896 which designates China. The Complainant also owns a number of domain names including <intesagroup.eu>, <intesagroupinc.com>, <gruppointesa. net>, <gruppointesa.it>, <gruppointesa. eu>, <gruppointesa.org>, <gruppointesa. us> all of which are directed to the official website “www.intesasanpaolo.com”.
The Respondent registered the Domain Name on March 5, 2011. The Domain Name is connected to a website (“the Website”) which appears to be a blogging website reporting on various types of news including banking news. There are links on the Website that click through to other news websites.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent’s response was filed three days after the deadline to respond. The Response was also filed in Chinese when the language of the proceedings in accordance with the registration agreement of the Domain Name is English. The Respondent contends as follows:
(i) The Complainant does not own any trade marks in China, hence does not have the relevant rights;
(ii) The Respondent has rights according to the “first come first served rule”;
(iii) The Respondent has no intention of renting, selling or transferring the Domain Name. The Website is about mobile technology and mobile offerings. It has nothing to do with finance or insurance. The Website is a not for profit site. Hence there is no bad faith on the part of the Respondent.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. In this case the Respondent filed an email response to the proceedings three days after the deadline to respond which was well before the Panel received the papers for review. The Panel will accept the Response as other Panels have done as it has not in any way delayed the Panel making a decision (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035).
Further although the Response is not in the language of the proceedings, the Panel will accept the Response without any request for a translation as it is entitled to do under Paragraph 11 of the Rules. The Complainant is not prejudiced in any way as it does not have an automatic right to respond to the Response.
C. Identical or Confusingly Similar
The consensus view under paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) says this:
“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP.
The Respondent contends that the Complainant does not have the relevant rights because it does not have a Chinese trade mark registration for the marks in question.
This is incorrect as International registration No. 920896 for INTESA SANPAOLO designates China. In any case even if the Complainant’s trade mark registrations did not include China where the Respondent is based, for the purposes of the UDRP as is made clear in paragraph 1.1 of WIPO Overview 2.0, this would not matter.
The Panel accepts that the Complainant has rights to the trademarks INTESA SANPAOLO, GRUPPO INTESA and INTESA SANPAOLO GROUP SERVICES through use and registration that predates the Domain Name.
The consensus view under paragraph 2.3 of the WIPO Overview 2.0 says this:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
The Domain Name <intesasanpaologroup.mobi> is made up of a combination of the Complainant’s registered trade mark INTESA SANPAOLO and the descriptive word “group”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic Top-Level Domain suffix “.mobi”.
The addition of the word “group” at the end of the trade mark does nothing to minimise the risk of confusion and therefore cannot avoid a finding of confusing similarity under this threshold test. In fact it adds to the confusion as the Complainant as with many corporate entities with branches internationally are described and known by the name of the entity followed by the descriptor “group”. In this case the Complainant has a number of registered trademarks which includes the word “group” or the Italian equivalent, “gruppo”.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Respondent has not been authorised or licensed by the Complainant to use its trademarks as a domain name. The Complainant contends that the Domain Name does not correspond to the Respondent and to the best of its knowledge the Respondent is not commonly known as “INTESASANPAOLOGROUP”. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Respondent contends that it has rights under the “first come, first served rule”. In the circumstance s of this case, this is not a valid contention to demonstrate rights or legitimate interests and in fact goes against the underlying rationale of the UDRP. No plausible explanation has been given for adopting the distinctive name of a major banking group without authorisation. Even if the Website were not for profit, the Registrant would still have to prove that it is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers to tarnish the INTESA PAOLO trade mark. In the Panel’s opinion, the Respondent has failed to do so.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Trade Marks when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name’s use and registration post dates the registration of the Trade Marks. The Trade Marks are well known and very distinctive especially since it came about through a merger of two companies. It is unlikely that the Respondent could have coincidentally created the Domain Name itself without awareness of the Trade Marks. Having that awareness and not having any authorization to do so, the Respondent nevertheless went ahead to register the Domain Name.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Complainant has alleged that the Website is connected to a blog website sponsoring financial and on-line banking services offered by a Chinese company setting up a commercial bank. Such re-direction of Internet users to websites of competing organisations would constitute bad faith registration and use under the Policy. However, in examining the evidence submitted as well as reviewing the Website, it does not appear to be the case that the links direct an Internet user to a website or websites of competing organisations. There is a blog about a Chinese company setting up an online bank but this appears to be a news article. The links click through to other news articles. There do not appear to be links to competitors’ websites as alleged. Most of the links on the Website point to content on two other websites “www.qq.com” and www.soso.com, which provide a range of content.
The Respondent’s Response in connection with this group is unsatisfactory as it states inter alia that the registration of the Domain Name was to develop a business instead of disrupting the business of the Complainant. The Respondent also claims that the Website is not for profit which the Panel finds difficult to believe in light of its findings in relation to all the other factors above. It is clear that to this Panel the use of the Domain Name which consists of the well known name of a third party is an attempt to intentionally attract Internet users to the Website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Website. The question is whether this is done for commercial gain. It appears to the Panel that it is likely that the Respondent is using the Domain Name for commercial gain in some manner but not through directing it to competitors’ websites as alleged by the Complainant, and is intending to use it for this purpose.
As stated in paragraph 4.7 of the consensus view of WIPO 2.0, “the general standard of proof under the UDRP is “on balance” - often expressed as the “balance of probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true. Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(a), (b), or (c) of the UDRP would typically be insufficient.”
Both Parties had the opportunity to file the evidence to support their respective cases. Whilst a panel can issue procedural orders when appropriate, it is not necessary for the Panel in this case to request the submission of more accurate evidence on the part of the Parties.
The consensus view under paragraph 4.5 of WIPO Overview 2.0 allows a panel to undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. The Panel did a quick Google search of the Respondent’s email address and found a list of domain names bearing the names of well known brands linked to the Respondent’s email address and the Respondent. These include <prudentialgroup.mobi>, <rabobankgroup.mobi>, <carrefourgroup.mobi>, <nomuragroup.mobi>, <walmartgroup.mobi> and <adidasgroup.mobi>.
The Panel is not relying on this search as evidence of the Respondent’s bad faith. However, this additional research has confirmed the Panel’s initial view that based on the evidence filed, on a balance of probabilities it is more likely than not that the Respondent is obtaining and intending to obtain some sort of commercial gain in connection to its use of the Domain Name. Indeed, under the circumstances, the Panel finds that there could be no conceivable use of the Domain Name by the Respondent which would be in good faith. Such use employs the Complainant’s well known trade mark in the Domain Name for commercial gain by creating Internet user confusion through suggesting source, sponsorship, affiliation or endorsement by the Complainant of the Respondent’s website. This constitutes bad faith use of the Domain Name.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 Domain Name<intesasanpaologroup.mobi>be transferred to the Complainant.
Date: February 3, 2014