WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Igor Venediktov - Labintech ltd.
Case No. D2015-0021
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 Igor Venediktov - Labintech ltd. of Gatchina, Lenoblast, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <intesa.pro> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2015. On January 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2015, 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 together with the amended 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 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on was February 4, 2015.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on February 19, 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 the leading Italian banking group which was created as a result of the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. However, the Complainant is commonly known among consumers as “Intesa”. The Complainant is present in Central-Eastern Europe with a network of approximately 1,400 branches and over 8.4 million customers. Moreover, it has the international network specialised in supporting corporate customers which is available in 29 countries such as the United States of America, the Russian Federation, China and India.
The Complainant holds, among many others, the following registrations for the INTESA trademark:
- International trademark registration No. 793367, granted on September 4, 2002 and duly renewed until September 4, 2022, in connection with class 36, also covering Russian Federation;
- Russian trademark registration No. 359641, filed on May 29, 2006, granted on September 12, 2008 and duly renewed until May 29, 2016, in connection with classes 35 and 36;
- Community trademark registration No. 2803773, filed on August 7, 2002, granted on November 17, 2003 and duly renewed until August 7, 2022, in connection with class 36.
Furthermore, the Complainant is also the owner, among the others, of the following domain names bearing the name “Intesa”: <intesa.com>, <intesa.org>, <intesa.info> and <intesa.biz>.
The Respondent is Igor Venediktov - Labintech ltd. from the Russian Federation.
The disputed domain name was registered on September 8, 2014.
On November 18, 2014, the Complainant’s attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the disputed domain name on the basis of Intesa Sanpaolo’s prior trademark rights. The Respondent has never replied to this letter.
5. Parties’ Contentions
Firstly, the Complainant claims that the disputed domain name is confusingly similar to its trademarks as it exactly reproduces the INTESA trademark.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has never been authorized or licensed by Intesa Sanpaolo to its trademarks. The disputed domain name does not correspond to the name of the Respondent and, according to the Complainant’s best knowledge; neither Igor Venediktov nor Labintech ltd. is commonly known as “INTESA”. Moreover, in the Complainant’s view, the Respondent is not making a legitimate noncommercial or fair use of <intesa.pro>.
Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. More particularly, in the Complainant’s opinion, the present circumstances indicates that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
The disputed domain name is not used for any bona fide offerings and does not even display a website. The Complainant underlines that the consensus view of WIPO UDRP panels is that passive holding of a disputed domain name may in, appropriate circumstances, be consistent with a finding of bad faith.
However, panels have tended to make such findings in circumstances in which, for example, a complainant’s mark is well-known, and there is no conceivable use that could be made of the domain name that would not amount to an infringement of the complainant’s trademark rights. The Complainants contends that its trademarks enjoy reputation and fame. Further, the Complainant explains that it is objectively not possible to understand what kind of use the Respondent could make with a domain name which corresponds to the Complainant’s trademarks and so similar to the Complainant’s domain names currently used to provide online banking and insurance services for enterprises.
In the Complainant’s view, the risk of a wrongful use of the disputed domain name at issue is even higher in the present case, since the diversion practice in banking realm is very frequent due to the high number of online banking users. This contention is supported by the fact the Complainant has already been part of other UDRP proceedings where the panels ordered transfer or cancellation of the disputed domain names, detecting bad faith in the registrations.
The Complainant alleges that even if excluding any illicit use of the disputed domain name, the sole further aim of the Respondent might be to resell the same to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith.
Additionally, the Respondent did not react on the cease and desist letter sent by the Complainant’s attorneys.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met.
A. Identical or Confusingly Similar
The Complainant proved that it holds valid trademark registrations for the INTESA trademarks. As the disputed domain name incorporates the word “intesa” in its entirety without any other word or letter, it is sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).
In the Panel’s opinion, the generic Top-Level Domain (“gTLD”) suffix “.pro” does not serve to distinguish the disputed domain name from the registered trademarks.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the INTESA trademark and as a consequence, the Complaint meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use the INTESA trademark; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent is not making a legitimate noncommercial or fair use of <intesa.pro>.
In line with the previous UDRP decisions, the Panel accepts that the Complainant has presented a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and as such the burden of production shifts to the Respondent (see Avid Dating Life Inc. v. Zhu Xumei, WIPO Case No. DCO2014-0006).
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no such rights or legitimate interests.
Therefore, the second element of paragraph 4(a) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the Respondent has registered the disputed domain names in bad faith as it copied a widely-known trademark which was present on the market much before the said registration. Moreover, the Panel accepts the Complainant’s assertion that in the circumstances of the case, there is no conceivable use that could be made of the disputed domain name that would not , in some manner, capitalize on the Complainant’s reputation and trademark rights.
Secondly, the present case is a classic example of passive holding which was outlined in many UDRP cases (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615). The Panel believes that the very act of having acquired the disputed domain name raises the probability of the Respondent using it in a manner that is contrary to the Complainant’s legal rights. As the Respondent has failed to answer the cease and desist letter and has not used its right to file a response or make any attempt to traverse the Complaint, the Complainant cannot be required to wait for some future use of the disputed domain name in order to establish bad faith. Furthermore, there is no information as to the business activities of the Respondent and the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name (see Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name identical to the Complainant’s trademark by the Respondent that would not be illegitimate to avoid a finding that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complaint satisfies 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 <intesa.pro> be transferred to the Complainant.
Date: March 4, 2015