WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Steven Desmet
Case No. D2014-2185
1. The Parties
Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
Respondent is Steven Desmet of West-Vlaanderen, Belgium.
2. The Domain Name and Registrar
The disputed domain name <vub.mobi> (the "Domain Name") is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 15, 2014. On December 15, 2014, the Center transmitted by email to the Registrar a request for verification in connection with the Domain Name. On December 16, 2015, the Registrar transmitted to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. Upon a request from Respondent, the Center extended the due date for Response to January 22, 2015. The Response was filed with the Center on January 22, 2015.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 17, 2015. 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 is a large Italian banking group created from the 2007 merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. Complainant has a market capitalization exceeding EUR 40.5 billion, with approximately 4,500 branches and 11.1 million customers in Italy. Complainant also has a strong presence in Central-Eastern Europe, with a network of approximately 1,400 branches and over 8.4 million customers. In addition, Complainant has an international network specialized in supporting corporate customers present in 29 countries, including the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, the Russian Federation, China and India.
Complainant's subsidiary, Všeobecná úverová Banka (widely known as "VUB"), provides retail and commercial banking services in the Slovak Republic as one of the largest financial institutions in that country. VUB, in turn, has five main financial services subsidiaries. Complainant is the owner of the following registrations for its VUB trademarks:
- Community trademark registration No. 6662531 for VÚB, filed on February 12, 2008 and granted on December 16, 2008, in connection with classes 9, 16, 35, 36, 38, 41 and 42;
- Community trademark registration No. 6662431 for VÚB BANKA, filed on February 12, 2008 and granted on December 17, 2008 in connection with classes 9, 16, 35, 36, 38, 41 and 42;
- Community trademark registration No. 6662316 for VÚB BANKA & device, filed on February 12, 2008 and granted on December 17, 2008, in connection with classes 9, 16, 35, 36, 38, 41 and 42.
VUB is the owner of the following domain names, among the others, bearing the sign VUB: <vub.sk>, <vub.cz>, <vub.xxx> and <vubbanka.sk>.
Respondent registered the Domain Name on July 7, 2014.
5. Parties' Contentions
(i) Identical or confusingly similar
Complainant contends that it is obvious the Domain Name is identical or confusingly similar to Complainant's VÚB trademarks. The Domain Name is also highly similar to the trademarks VÚB BANKA and VÚB BANKA & device, as it shares with them the main verbal portion, VÚB. According to Complainant, Respondent's Domain Name is therefore identical or confusingly similar with Complainant's marks and domain names listed above, as the Domain Name represents a minor variation of the same, used by Complainant to identify its online banking service.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights in the Domain Name, since Steven Desmet has nothing to do with Complainant. Any use of the trademarks VÚB and VÚB BANKA has to be authorized by Complainant; Respondent has not been authorized or licensed by Complainant (or its banking group) to use the Domain Name. Further, the Domain Name does not correspond to the name of Respondent and, to the best of Complainant's knowledge, Steven Desmet is not commonly known as VUB. Lastly, Complainant states that there are no fair or noncommercial uses being made of the Domain Name.
(iii) Registered and used in bad faith
Complainant maintains that the Domain Name was registered and is being used in bad faith. According to Complainant, its trademarks, VÚB and VÚB BANKA, are distinctive and well-known around the world. The fact that Respondent has registered a Domain Name that is confusingly similar to them indicates that Respondent had knowledge of Complainant's trademarks at the time of registration. Therefore, it is more than likely that the Domain Name would not have been registered if not for Complainant's trademarks. Complainant argues this is clear evidence of registration of the Domain Name in bad faith.
In addition, Complainant states that the Domain Name is not used for any bona fide offerings. In particular, there are circumstances indicating that, by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the website. First, several services can be detected, but not in good faith: the Domain Name is connected to a site sponsoring, among other things, banking and financial services, for which Complainant's trademarks are registered and used. Consequently, Internet users, while searching for information on Complainant's services, are confusingly led to the websites of Complainant's competitors, sponsored on the sites connected to the Domain Name. Therefore, Complainant claims that Respondent has registered and is using the Domain Name in order to intentionally divert traffic away from Complainant's site.
The current use of the Domain Name, allowing access to the websites of Complainant's competitors, while using Complainant's trademarks, causes damage due to misleading Complainant's present clients and to the loss of potential new ones. Respondent's commercial gain is evident, since it is obvious that Respondent's sponsoring activity is being remunerated. Moreover, it is no coincidence that this speculation has involved a big financial institution such as Complainant. In fact, the diversion practice in the banking realm is frequent due to the high number of online banking users. Complainant has already been party to numerous other WIPO cases where the panelists have ordered the transfer or cancellation of disputed domain names, detecting bad faith registration and use. Complainant has supplied a list of the WIPO cases in which it has participated as the complainant. In the light of the above, Complainant contends that the third and final element necessary for finding that Respondent has engaged in abusive domain name registration and use has been established.
Respondent lives in Belgium and English is not his first language. The Panel has summarized his submission. Respondent states that he is the director of several non-profit organizations and one of these organizations has worked with Vrije Universiteit Brussels ("Vrije"), also known in Belgium as "Vub". According to Respondent, in Belgium if someone is asked what the abbreviation "vub" means, they would refer to Vrije Universiteit Brussels. Respondent states that he was a tutor for several students from Vrije, who interned to learn skills necessary for their work.
Respondent states that in July he noticed that the Domain Name <vub.mobi> was available and he registered it allegedly for future use by Vrije: he claims that he intends to use the name in the future or to contact Vrije to see if it is interested to make a mobile site. Respondent further states that the Registrar for the Domain Name has as a default setting for domain names that have been registered but not yet used: "Dynadot [Registrar] Parking with 3rd party-ads or simply related links". Respondent claims he did not know at the time of registration that there was another alternative: "Dynadot Parking with no 3rd party-ads and only infor [sic] of the coming website + information about Dynadot". Respondent states that he corresponded with the Registrar about this issue and now understands that a registrant has to "opt-out" to change the default setting. Respondent has submitted copies of email correspondence with the Registrar to show that he requested the setting be changed so that the web page linked to the Domain Name does not display sponsored ads.
Respondent also asserts that he received no revenue as a result of sponsored links on the website linked to the Domain Name. Respondent states he was "baffled" when he received the Complaint and read that there was a link to a financial institution. He checked the pages as they appeared in Belgium and the United States (he asked the Registrar to send a print-screen) to see if the sponsored ads related to banks. In Belgium he claims that there were links related to universities and he has submitted copies of print-screens. In the United States there was allegedly no links related to the bank. Respondent argues that he cannot be blamed for bad faith because the sponsored links were a default setting of the Registrar, which does not pay any revenue to Respondent. Respondent states that after he asked the Registrar to change the setting to "no 3rd party-ads", the Domain Name now links to a page with the message "Coming Soon: www.vub.mobi" and ads related to the Registrar's services.
Respondent claims that one of the reasons he was unaware of Complainant's VUB bank is because the bank's name is not "vub", but "Vúb" and "Vúb Bank" with an accent aigu over the letter "u". He argues that Complainant does not hold trademarks for "vub"; instead, Complainant's owns marks for VÚB and VÚB BANKA. Respondent claims he should not have been expected to be aware of possible infringement when he registered "vub.mobi", because it is a non-IDN name (internationalized domain) that does not allow for accents over vowels. Further, he should not have been expected to search the Internet for Complainant's trademarks with specific accents. Respondent states that he did seek and receive permission to use the Domain Name from a representative of a company called Diversified Technology Corp., located in the United States of America, which has software called "Visual Utility Billing" and owns a trademark for VUB.
Respondent argues that Complainant's registration of domain names containing the term "vub" proves nothing. Respondent highlights that the domain name <vubbanka.mobi> is currently available and if Respondent had intended to act in bad faith, he would have registered this domain name too. Finally, Respondent contends that it is strange that the domain names <vúb.com> and <vúb.net> have not been registered by Complainant, and Complainant also does not own the domain names <vub.com> or <vub.net>. Respondent argues that if Complainant was interested in the Domain Name, why did it not contact Respondent in first place?
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it owns European Community Trademarks for VÚB and VÚB BANKA. Complainant claims that the Domain Name is identical to its VÚB mark and confusingly similar to its VÚB BANKA mark. Respondent argues that Complainant's trademarks cover VÚB and VÚB BANKA, with an accent over the letter "u", but not the term "vub" without accent. The Panel determines that the absence of the accent in the Domain Name is insufficient to distinguish it from Complainant's marks. Moreover, the term "Vub" is the distinctive element in the mark VÚB BANKA.
Accordingly, the Panel finds that the Domain Name is nearly identical to Complainant's VÚB mark and confusingly similar to Complainant's VÚB BANKA, and Complainant has thus satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has no trademark rights in the "vub" name, is not known by this name, and has not been authorized by Complainant to use Complainant's trademarks. Prior to the filing of the Complaint, the Domain Name was linked to a pay-per-click website, which had listings including a financial institution (as viewed from Complainant's country). Thus, there was no noncommercial or fair use involved, and this use did not give rise to any bona fide offering of goods or services.
Respondent does not claim that he holds trademark rights in the term "vub" or is commonly known by this name. Nor does he dispute that the Domain Name, prior to the filing of the Complaint, was linked to a webpage with sponsored links, although Respondent has submitted evidence to explain that this was the Registrar's "default" policy and he has recently requested that the Registrar redirect the Domain Name away from the sponsored ads page. Respondent states that he sought permission to use the Domain Name incorporating the term "vub" from a company that owns a trademark for VUB in the United States of America. However, this permission, even if given, would not alone provide Respondent with any right or legitimate interest in the Domain Name. Respondent claims that he registered the Domain Name because "vub" is a popular abbreviation in Belgium for Vrije Universiteit Brussels. However, Respondent's explanation also demonstrates that he has no connection with Vrije, other than that a few students from this university worked as interns at a non-profit organization where he works as well. Nevertheless, in light of the Panel's findings under the third element it is not necessary for the Panel to make a final determination on this matter.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. In this case, Complainant has failed to demonstrate, on the balance of the probabilities, that the Domain Name was registered in bad faith. Respondent has denied that he was aware of Complainant when he registered the Domain Name. Further, Respondent has explained that he registered the Domain Name as a three-letter abbreviation that is commonly used for a university – Vrije Universiteit Brussels or "VUB" – located in Belgium where Respondent resides. The Panel is aware that Vrije is commonly referred to as VUB and the university is the registrant of the domain name, <vub.ac.be>, which is used for the university's primary website. In addition, Respondent has provided evidence that he sought to obtain permission from the owner of the VUB trademark in the U.S. Additionally, although as registrant of the Domain Name, Respondent is ultimately responsible for the content on any website linked to it (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.8: "Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content…"), he took action successfully to have the Registrar redirect the Domain Name to a webpage that would not contain sponsored links. Finally, the Panel notes that the Domain Name consists of a three-letter combination related to a popular nickname for a university in his country and, as such, it is not implausible that Respondent, who denies knowledge of Complainant, did not have the intention to target the Complainant and the Complainant's trademark.
Accordingly, the Panel finds that Complainant has not satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: March 11, 2015