WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Bia2Bass Co
Case No. D2014-1801
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 Bia2Bass Co of Fars, Shiraz, Iraq.
2. The Domain Name and Registrar
The disputed domain name <intesasanpaoloeurodesk.biz> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 15, 2014. On October 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 27, 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 October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2014.
The Center appointed Kaya Köklü as the sole panelist in this matter on December 2, 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 a leading banking group in Europe based in Italy.
It is the owner of a large number of INTESA SANPAOLO trademarks, including the Community trademark INTESA SANPAOLO EURODESK (registration number 6701239) granted on January 20, 2009 for the classes 9, 16, 35, 36, 38, 41 and 42.
The Complainant is also the registered owner of various domain names comprising its INTESA SANPAOLO and INTESA SANPAOLO EURODESK marks, all of them resolving to its official website "www.intesasanpaolo.com".
According to the current record, the disputed domain name <intesasanpaoloeurodesk.biz > was created on May 23, 2014.
As indicated in the case file, the Complainant's attorneys sent to the Respondent a cease and desist letter on August 25, 2014, in which they asked for a voluntary transfer of the disputed domain name to the Complainant. The Respondent did not reply.
At the time of the Decision, the disputed domain name resolved to a website sponsoring Internet and mobile communication services in Arabic language.
5. Parties' Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is identical to its well-known INTESA SANPAOLO EURODESK trademark and confusingly similar to its INTESA SANPAOLO trademarks.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its trademarks. The Complainant further alleges that the Respondent has never used and does not intend to use its trademarks in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly believes that due to the notoriety of the INTESA SANPAOLO EURODESK and INTESA SANPAOLO trademarks, the Respondent was or should have been aware of these trademarks when it registered the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and, where appropriate, will decide consistent with the WIPO Overview 2.0.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the INTESA SANPAOLO EURODESK trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having relevant trademark rights. As evidenced in the Complaint, the Complainant has been the owner of an INTESA SANPAOLO EURODESK Community trademark as well as of various INTESA SANPAOLO trademarks since many years.
The disputed domain name is identical to the Complainant's INTESA SANPAOLO EURODESK trademark as it incorporates the Complainant's trademark in its entirety without any additions or amendments. The disputed domain name is further confusingly similar to the Complainant's INTESA SANPAOLO trademarks. While the disputed domain name fully incorporates this trademark as well, it only differs by the addition of the term "eurodesk". This differentiation is, however, not suitable to preclude a confusing similarity with the Complainant's trademarks.
In the Panel's view, the mere addition of the generic Top-Level Domain ("gTLD") ".biz" has no distinguishing effect and is as a general principle not to be considered when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP panels concerning the use of a gTLD within a domain name, cf. V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov, WIPO Case No. D2011-1054).
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that in the absence of a Response, the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent's lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's trademarks INTESA SANPAOLO EURODESK or INTESO SANPAOLO in the disputed domain name.
In the absence of a Response by the Respondent, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. In particular, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services.
In fact, the Panel cannot conceive of any use of this trademark by the Respondent, which would qualify as a legitimate use.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to otherwise take advantage of the Complainant's trademarks, probably for commercial gain or some other illegitimate benefit.
The Panel is convinced that the Respondent must have been well-aware of the Complainant's trademarks when it registered the disputed domain name in May 2014. At the date of registration of the disputed domain name, the Complainant's trademarks were already registered and successfully used for many years.
Bad faith registration and use is particularly indicated by the fact that the Respondent did not even bother to include any amendments or additions to the disputed domain name in order to prevent the likelihood of confusion among Internet users.
The Respondent rather preferred not to respond to the Complainant's contentions, although being informed of the pending administrative proceedings by email and parcel service.
In fact, the Panel cannot conceive of any good faith use of the disputed domain name which is not related to the trademarks owned by the Complainant.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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 <intesasanpaoloeurodesk.biz> be transferred to the Complainant.
Date: December 16, 2014