WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Craig Mcclelland

Case No. D2015-0016

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 Craig Mcclelland of Georgia, United States of America (“US”), self-represented.

2. The Domain Names and Registrar

The disputed domain names <pbzgroup.com> and <pbzteam.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2015. On January 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 January 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2015. The Response was filed with the Center on February 3, 2015.

On February 6, 2015, the Center received a supplemental filing from the Complainant. On the same day, the Center also received a supplemental filing from the Respondent. The Center acknowledged receipt of the filings, and informed the parties that they would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it.

The Center appointed Adam Taylor as the sole panelist in this matter on February 10, 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

The Complainant is part of an Italian banking group known as “Intesa Sanpaolo”. One of the Complainant’s subsidiaries is Privredna banka Zagreb d. d., a Croatian bank established in 1966 with more than 200 branches throughout Croatia.

The Complainant owns the following trade marks:

- Community trade mark no. 6661995 for PBZ, filed on February 12, 2008 and granted on July 31, 2009, in classes 9, 16, 35, 36, 38, 41 and 42;

- Community trade mark no. 6662142 for PBZ plus device, filed on February 12, 2008 and granted on October 21, 2009, in classes 9, 16, 35, 36, 38, 41 and 42;

- Community trade mark no. 10528339 for PBZ GROUP, filed on December 27, 2011 and granted on May 9, 2012, in classes 9, 16, 35, 36, 38,41 and 42; and

- Community trade mark no. 10549327 for PBZ GROUP and device, filed on January 10, 2012 and granted on June 8, 2012, in classes 9, 16, 35, 36, 38,41 and 42.

The disputed domain names were both registered on January 4, 2012.

As of December 29, 2014, the websites at the disputed domain names resolved to registrar parking pages with primarily finance-related advertising links.

On September 11, 2014 and September 12, 2014, the Complainant’s attorneys sent cease and desist letters

to the Respondent. No response was received.

5. Parties’ Contentions

A. Complainant

A summary of the Complainant’s contentions is as follows:

The domain name <pbzgroup.com> is identical to the Complainant’s trade mark for PBZ GROUP. The domain name <pbzteam.com> is confusingly similar to the Complainant’s trade mark for PBZ.

The Respondent has no rights to the disputed domain names as he has no connection with the Complainant. The Complainant has not authorised the Respondent to use the disputed domain names.

The disputed domain names do not correspond to the Respondent’s name and, to the best of the Complainant’s knowledge, the Respondent is not commonly known by the names comprised in the disputed domain names.

There is no fair and noncommercial use of the disputed domain names.

The disputed domain names were registered and are being used in bad faith.

The Complainant’s trade marks are distinctive and well known around the world. The fact that the Respondent has registered two domain names that are identical or confusingly similar to the Complainant’s trade marks indicates that the Respondent had knowledge of those Complainant’s trade marks at the time of registration of the disputed domain names.

If the Respondent had carried even a basic Google search in respect of the denomination “PBZ”, this would have yielded obvious references to the Complainant. This raises a clear inference of knowledge of the Complainant’s trade marks on the part of the Respondent.

The disputed domain names are not used for any bona fide offerings. The circumstances indicate that, by using the disputed domain names, the Respondent has intentionally attempted to create a likelihood of confusion in accordance with paragraph 4(b)(iv) of the Policy.

The disputed domain names are connected to a website sponsoring, among others, banking and financial services, for which the Complainant’s trade marks are registered and used. Consequently, Internet users, while searching for information on the Complainant’s services, are led to the websites of the Complainant’s competitors. Previous UDRP WIPO decisions state that the registration and use of a domain name to redirect Internet users to websites of competing organizations constitute bad faith registration and use under the Policy.

The current use of the disputed domain names, which allows access to the websites of the Complainant’s competitors via the Complainant’s trade marks, substantially damages the Complainant because existing clients are misled and new clients will be lost.

It is obvious that the Respondent is being remunerated for the sponsored links.

Diversion of customers is common practice in the banking sector, due to the large number of online banking users. The Complainant has been involved in other UDRP cases where panelists have ordered transfer or cancellation of disputed domain names on ground of bad faith.

B. Respondent

A summary of the Respondent’s contentions is as follows:

The Complainant claims rights to a common acronym, which the Complainant itself does not consistently use.

Registration of the disputed domain names post-dates filing of the Complainant’s PBZ GROUP plus device mark and registration of its PBZ GROUP word mark.

The Respondent searched the United States Patent and Trademark Office website but did not find the Complainant’s trade marks. It found a different trade mark for PBZ owned by a German company.

The Respondent carries out consulting services for a US corporation called Zip Realty LLC, a leading technology provider to real estate professionals. In 2011, the Respondent helped this corporation create a network of leading real estate companies which use its technology and which are known as “Powered by Zip”, widely abbreviated to “PBZ”. The Respondent has a consulting agreement to sell and service the thousands of agents using the service. The disputed domain names are used for email.

Zip Realty LLC applied for a US trade mark for POWERED BY ZIP on December 20, 2011. The application was granted on April 17, 2012.

The Respondent uses a website at “www.pbzsolutions.com” to provide information for consumers to learn about the services of the company.

The Respondent had no knowledge of the Complainant’s use of the name. The Respondent made a bona fide offering of goods and services in the residential real estate industry, which is completely different to the Complainant.

The Complainant sent single emails to the Respondent on September 11 and 12, 2014. The attachments were quarantined by the Respondent’s email system and remained unopened. The cover emails contained limited information. The Complainant did not try to contact the Respondent via any of the additional means of communication shown in the WhoIs information for the disputed domain names.

The Complainant’s Google search results annexed to the Complaint in support of its allegation regarding prominent references to the Complaint for “PBZ” are personalised because the Complainant was logged into Google when the search was performed. When not logged into Google, searches by the Respondent for “PBZ” bring up the Complainant in fourth position, with the top three results unrelated to the Complainant. When logged into Google, the Respondent’s client company is in first position and again the Complainant is not in the top three results.

The disputed domain names are used only for emails but not for websites. The Respondent uses a different domain name for its main business website “www.pbzsolutions.com”. The websites at the disputed domain names are all default registrar parking pages, from which the registrar reserves the right to make a profit and from which the Respondent receives no compensation. This is normal business practice for domain name registrars. The links have since been removed from the parking pages but not at the Respondent’s instigation.

The Respondent’s business is a real estate technology company, which would derive no benefit from disrupting or impeding any business in the banking sector.

The Respondent only owns nine domain names and has never bought domain names for the purpose of selling to others.

C. Complainant (Supplemental Filing)

A summary of the Complainant’s supplemental filing is as follows:

The Complainant has demonstrated prior trade mark rights in PBZ and PBZ GROUP dating back to 2008.

The Respondent’s reference to third party trade mark rights is irrelevant and those marks are in any case completely different from “PBZ”,“PBZ GROUP” or “PBZ TEAM”.

Zip Realty LLC is not a party to this proceeding and, in any case, it has no registered rights in the US or elsewhere in relation to the above terms. That company’s financial and commercial history is irrelevant.

The Respondent ignored the Complainant’s cease and desist letters.

It is not correct that the Google results are personalised. A Google search for “PBZ”, where the user is not logged in, provides direct results for the Complainant.

It is irrelevant that the Respondent has not instructed the hosting company to remove the links. Registrants are usually responsible for advertising links unless they can show some good faith attempt to prevent inclusion of links profiting from third party trade marks, even if the commercial gain was made by a third party.

6. Discussion and Findings

A. Supplemental Filings

Both parties have made unsolicited supplemental filings.

Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings. Paragraph 10(d) states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”. Paragraph 12 states: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”.

The principles which the Panel should apply in deciding whether or not to admit supplemental filings have been considered in many cases under the Policy. See, e.g., The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. The principles include: “that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimize prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself”.

In this case, the Panel has decided to admit the Complainant’s supplemental filing as this responds to factual matters raised in the Response which were not within the reasonable contemplation of the Complainant when it filed the Complaint. The Panel declines to admit the Respondent’s supplemental filing, which is merely standard rebuttal.

B. Identical or Confusingly Similar

The disputed domain name <pbzgroup.com> is identical to the Complainant’s registered trade mark for PBZ GROUP.

The disputed domain name <pbzteam.com> is confusingly similar to the Complainant’s registered trade mark for PBZ, differing only by addition of the descriptive term “team”. Paragraph 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name. Here, the Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain name <pbzteam.com> and the descriptive term “team” is insufficient to avert a finding of confusing similarity.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a 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 of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark. The Complainant has made out a prima facie case of lack of rights or legitimate interests in the disputed domain names and the Respondent has come forward with allegations and evidence to the contrary. The Panel must therefore weigh up all of the evidence, mindful that the burden of proof remains with the Complainant.

The issue is whether the Respondent has used the disputed domain names for a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy.

The Respondent claims that the disputed domain names were registered for use as email addresses in connection with venture by a US corporation Zip Realty LLC (“Zip”).

The Panel is satisfied that the Respondent has established the following:

1. Zip applied for a US trade mark for the terms “Powered by Zip” on December 20, 2011.

2. On April 28, 2014, Zip launched a technology platform known as “Powered by Zip”, aimed at US real estate brokers.

3. Zip sometimes refers to the platform by the acronym “PbZ”.

4. The platform is promoted at a website at “www.pbzsolutions.com”.

While the Complainant objects that Zip is not a party to these proceedings, the Panel nonetheless considers that use of the disputed domain names by the Respondent in relation to Zip’s venture is capable of constituting a bona fide offering of services for the purposes of paragraph 4(c)(i) of the Policy .

However, the evidence linking the Respondent with the project is thin. The Respondent claims that he has a consultancy agreement with Zip but he has not produced this.

The sole document connecting the Respondent with “Powered by Zip” is a business card bearing the Respondent’s name and the title “Co-Managing Director” and which is prominently branded: “POWERED BY ZipRealty TECHNOLOGY”. There then follows some contact details for the Respondent including, critically, the Respondent’s email address: “[username omitted]@PBZteam.com”.

While the Respondent could, and should, have produced more evidence as to his role in the “Powered by Zip” venture and/or demonstrating use of the disputed domain names for email, nonetheless the Panel considers it highly unlikely that the Respondent fabricated his involvement with “Powered by Zip” and forged the business card as part of an elaborate scheme to justify his holding of the disputed domain names. The Panel therefore treats this document as evidence that the disputed domain name <pbzteam.com> at least has been used as an email address relating to “Powered by Zip”.

Understandably, the Complainant has drawn attention to the use of the disputed domain names for parking pages with finance-related advertising links. It is not in dispute that the registrar set up and controls these pages and receives the revenue they generate. The Complainant relies on paragraph 3.8 of WIPO Overview to the effect that registrants can be held responsible for registrar parking pages in the absence of a good faith attempt to prevent inclusion of offending links. But the Complainant omits the last sentence of that paragraph whereby some panels have found such links not to be incriminating where they were:

“shown to be genuinely automated, and there is no evidence that the respondent influenced the advertising content, and the respondent credibly denies knowledge of the complainant’s trademark and there is no evidence of the respondent previously being put on notice of such mark, and other indicia of cybersquatting are not present.”

Here, the Respondent has come up with what is, on the face of it, a plausible genuine explanation that he acquired the disputed domain names as email addresses for the “Powered by Zip” venture and, as mentioned above, there is some (albeit limited) evidence of actual use of one of the disputed domain names for that purpose. Given that the disputed domain names were not intended for use as websites, which fact is supported by evidence that the main marketing website for the “Powered by Zip” was located at a different domain name, <pbzsolutions.com>, one can understand that the Respondent might have paid little attention to whether and, if so, how the disputed domain names were being used as parking pages by the registrar.

Therefore, in the particular circumstances of this case, the Panel does not consider that the appearance of automated finance-related links on the registrar parking pages taints the Respondent’s bona fide use of <pbzteam.com> for email in connection with the “Powered by Zip” project.

The Panel would add that the UDRP is a relatively limited process. The Panel does not have the benefit of the procedures available to a court such as witness testimony and document discovery, which might have cast further light on the legitimacy or otherwise of the Respondent’s use of the disputed domain name <pbzteam.com> and the name reflected therein. The Panel can base its conclusion only on the record before it and, based on such information and for the reasons explained above, the Panel finds that the Respondent has rights or legitimate interests in the disputed domain name <pbzteam.com>.

The Complainant has therefore failed to establish the second element of paragraph 4(a) of the Policy in connection with the disputed domain name <pbzteam.com> but succeeds in relation to the disputed domain name <pbzgroup.com> in the absence of any evidence from the Respondent demonstrating use of this domain name for the purpose claimed.

D. Registered and Used in Bad Faith

In the Panel’s view, the Complainant has failed to establish registration and use in bad faith in relation to <pbzgroup.com> and would have similarly failed in relation to <pbzteam.com> were it necessary to consider the issue.

As explained above, the Respondent has established a plausible legitimate reason to register the disputed domain names. While the Respondent has demonstrated actual use of only <pbzteam.com>, the Panel has no reason to think that the <pbzgroup.com>, registered on the same day, was acquired for a different purpose. Certainly, neither party has sought to distinguish between the two disputed domain names.

The Respondent, located in the US, has credibly denied knowledge of the Complainant’s Community trade marks at the time when it registered the disputed domain names. Nor is there evidence of any reputation of the Complainant in the US either at the time of registration of the disputed domain names or otherwise.

The parties have engaged in an intense debate as to whether Google searches at the time would have brought up prominent references to the Complainant. One thing that has become clear is that Google search results can vary depending on whether or not the user is logged in and, potentially, other factors such as the user’s search history. The Panel is therefore in no position to reach any conclusion as to what a Google search conducted by the Complainant might or might not have shown. In any case, even if the Respondent had then become aware that a Croatian banking group was using the acronym “PBZ”, the Panel does not consider that this would have rendered the Respondent’s motives illicit vis-à-vis the Complainant, given that the Respondent’s intention was to use the disputed domain names for a US property-related venture.

For reasons explained above, the Panel does not consider that the parking pages are evidence of bad faith in the circumstances of this case.

Finally, while the Panel questions the Respondent’s explanation for failing to respond to the Complainant’s cease and desist letters and would have expected the Respondent to contact the Complainant’s attorneys for clarification if it received only the cover emails without attachments, nonetheless the Panel does not consider that Respondent’s lack of reaction to the Complainant’s correspondence is of itself evidence of bad faith in the circumstances of this case.

The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, the Complaint is denied.

Adam Taylor
Sole Panelist
Date: February 24, 2015