WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. HEMANG INFRASRUCTURE PRIVATE LIMITED
Case No. D2014-1313
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 HEMANG INFRASRUCTURE PRIVATE LIMITED of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <wwwsanpaoloimi.com> is registered with Tirupati Domains and Hosting Pvt. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 1, 2014. On August 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 4, 2014, 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 August 4, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to amend the Complaint. The Complainant filed its Amendment to the Complaint on August 6, 2014.
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 August 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 29, 2014.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on September 8, 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 describes itself as a leading banking group that offers its financial services to millions of customers in numerous countries around the world. It has obtained multiple registrations of the SANPAOLO IMI mark, including a registration in the European Community, on July 19, 2000.
The Complainant has also registered the domain names, among others, <sanpaoloimi.com> (on November 19, 1998), <sanpaoloimi.org> (on November 18, 1998), and <sanpaoloimi.biz> (on November 19, 2001).
The Respondent registered the disputed domain name <wwwsanpaoloimi.com> on June 27, 2005.
5. Parties' Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights; (ii) the 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.
In addition, the Complainant states, inter alia:
"The Complainant's trademark 'SANPAOLO IMI' is distinctive and well known all around the world."
"Neither the Respondent nor anyone else within the context has rights on the disputed domain name, since HEMANG INFRASTRUCTURE PRIVATE LIMITED has nothing to do with Intesa Sanpaolo…. Nobody has been authorized or licensed by the above mentioned banking group to use the domain name at issue."
"[T]he domain name is connected to a website sponsoring, among others, banking and financial services, for whom the Complainant's trademarks are registered and used …."
"[T]he Complainant's attorneys sent to the Respondent a cease and desist letter …, asking for the voluntary transfer of the contested domain name to their client. Despite such communication, the Respondent never replied and the domain name at issue is still connected to the same website."
The Respondent did not reply to the Complainant's contentions.
Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Under paragraph 14(b) of the Rules, the Panel may also draw appropriate inferences from the Respondent's default.
6. Discussion and Findings
In order to prevail, the Complainant must satisfy all three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel determines that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights.
The Complainant has demonstrated that it has rights in the mark SANPAOLO IMI. The disputed domain name <wwwsanpaoloimi.com> differs from the mark in that the disputed domain name adds the "www" prefix, removes a space between SANPAOLO and IMI, and adds the generic Top-Level Domain (gTLD) ".com" as a suffix. These differences are not sufficient to defeat confusing similarity. The Complainant's mark clearly emerges from the disputed domain name.
Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) are established.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has met its initial burden of making a prima facie showing. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted. The Panel is unable to ascertain any evidence that would demonstrate the Respondent's rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
Accordingly, the Panel concludes that paragraph 4(a)(ii) is demonstrated.
C. Registered and Used in Bad Faith
The Complainant must also show that the disputed domain name "has been registered and is being used in bad faith", as required in paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith registration and use.
Here, Internet users who resort to the disputed domain name are taken to a website whose content includes links for, among others, "Banca Sanpaolo Intesa", "Banca on Line", and "San Paolo IMI". ("Banca" is the Italian term for "bank" in English.) The purported association between the website and the Complainant and its services is unmistakable. It is the Panel's view that the Respondent, by using the disputed domain name, "intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site … by creating a likelihood of confusion with the [C]omplainant's mark as to the source, sponsorship, affiliation or endorsement of [the Respondent's] web site", as set forth in paragraph 4(b)(iv).
The Panel concludes that the requirements of paragraph 4(a)(iii) are also present.
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 <wwwsanpaoloimi.com> be transferred to the Complainant.
Date: September 19, 2014