WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. wangguiyan
Case No. D2015-0621
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 wangguiyan of Hangzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <intesasanpaolobank.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 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.
On April 15, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 16, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on April 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2015.
The Center appointed Francine Tan as the sole panelist in this matter on May 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 a leading Italian banking group. Its formation resulted from a merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. The merger took effect on January 1, 2007.
The Complainant asserts it is one of the top banking groups in the Euro zone, with a market capitalization exceeding EUR 52.9 billion, and an undisputed leader within Italy in various business areas including retail, corporate and wealth management. The Complainant has a network of approximately 4,500 branches in Italy with a market share of more than 14% in most Italian regions, serving approximately 11.1 million customers. Apart from its strong presence in Central-Eastern Europe with a network of approximately 1,400 branches and over 8.4 million customers, the Complainant is present in 29 countries including the United States of America, the Russian Federation, India and China.
The Complainant is the owner of trademark registrations for the marks INTESA SANPAOLO, INTESA SANPAOLO BANK and INTESA SANPAOLO BANKA, amongst other marks. Its trademark registrations include:
- International trademark registration No. 920896 for INTESA SANPAOLO, granted on March 7, 2007, in Classes 9, 16, 35, 36, 38, 41 and 42;
- International trademark registration No. 923982 for INTESA SANPAOLO & device, granted on March 27, 2007, in Classes 9, 16, 35, 36, 38, 41 and 42;
- International trademark registration No. 831572 for BANCA INTESA & device, granted on June 24, 2004, in Class 36;
- Community trademark registration No. 005301999 INTESA SANPAOLO, filed on September 8, 2006 and granted on June 18, 2007, in Classes 35, 36 and 38;
- Community trademark registration No. 006661672 for INTESA SANPAOLO BANK, filed on February 12, 2008 and granted on January 23, 2009, in Classes 9, 16, 35, 36, 38, 41 and 42; and
- Community trademark registration No. 006661821 INTESA SANPAOLO BANKA, filed on February 12, 2008 and granted on January 22, 2009, in Classes 9, 16, 35, 36, 38, 41 and 42.
China is one of the designated countries in each of the above-mentioned International registrations.
The Complainant is the owner of the following domain names, amongst others:
- <intesabank.com>; and
These domain names of the Complainant resolve to its official website at “www.intesasanpaolo.com”.
On February 26, 2014, the Respondent registered the disputed domain name. The Respondent’s website to which the disputed domain name resolves contains sponsored links to different banking and financial services.
On April 28, 2014, the Complainant sent a cease and desist letter to the Respondent and to request the transfer of the disputed domain name. The Respondent did not reply to the Complainant.
5. Parties’ Contentions
The disputed domain name is identical to the trade mark INTESA SANPAOLO BANK in which the Complainant has rights. It is also confusingly similar to the Complainant’s trade marks INTESA SANPAOLO and INTESA SANPAOLO BANKA.
The Respondent has no rights or legitimate interests in respect of the disputed domain name and this is evidenced by the fact that the Respondent has no relationship with the Complainant and has not been authorized to use the disputed domain name. The Respondent is not commonly known as “Intesasanpaolobank” and the Complainant has not found any fair or noncommercial use of the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Complainant’s marks INTESA SANPAOLO, INTESA SANPAOLO BANK and INTESA SANPAOLO BANKA are distinctive and well known around the world. The registration of the disputed domain name that is confusingly similar to these trade marks indicates that the Respondent had knowledge of the Complainant’s trade marks at the time of registration. Further, the disputed domain name is not used for any bona fide offering of goods or services. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation, or endorsement of the website. Internet users searching for information on the Complainant’s services are likely to be confused and led to the Respondent’s website. The disputed domain name is therefore used by the Respondent to intentionally divert traffic away from the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
The Complainant filed the Complaint in English. However, the Registration Agreement regarding the disputed domain name was in Chinese. The Complainant requested that the language of the proceeding be English as it is Italian and, in ensuring fairness and giving full consideration to the parties’ level of comfort with each language, English would be the most suitable language. Moreover, the Respondent registered the disputed domain name in Latin characters.
Paragraph 11(a) of the Rules stipulates that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. Paragraph 10(b) and (c) of the Rules stipulate, respectively, the principles to be upheld, namely that:
“(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition.”
The Panel determines that English should be the language of the proceeding in this case. As pointed out by the Complainant, the disputed domain name comprises Latin characters. The Panel also notes that the sponsored links included several which were in English and none of them were in Chinese. The Respondent did not respond to the issue of the language of the proceeding although he was given the opportunity to. Neither did he respond in the administrative proceeding. On the other hand, requiring the Complainant to translate the Complaint and the supporting evidence into Chinese would go against the policy consideration of “due expedition” in the administrative proceeding.
In the circumstances, the Panel concludes that it is appropriate in this case for English to be adopted as the language of the proceeding.
B. Identical or Confusingly Similar
It is evident that the Complainant has rights in the trade marks INTESA SANPAOLO and INTESA SANPAOLO BANK, amongst others. The INTESA SANPAOLO BANK mark has been incorporated in its entirety in the disputed domain name and is clearly identifiable. The only difference with the disputed domain name lies in the addition of the generic Top-Level Domain (gTLD) “.mobi” and the absence of spaces between the words “Intesa”, “Sanpaolo” and “Bank”. It is a well-established principle that such differences are typically of no relevance or consequence in the consideration of whether a domain name is identical or confusingly similar to a trade mark in which a complainant has rights.
The Panel therefore concludes that the disputed domain name is identical to the Complainant’s INTESA SANPAOLO BANK mark and confusingly similar to the Complainant’s INTESA SANPAOLO mark.
The first element of paragraph 4(a) of the Policy has been satisfied.
C. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name since:
(i) there is no evidence of a bona fide offering of goods or services on the Respondent’s website;
(ii) there is no evidence that the Respondent has been commonly known by the disputed domain name;
(iii) there is no relationship between the Complainant and the Respondent, nor has the former authorized the latter to use or register its trade marks; and
(vi) there appears to be an intention to mislead and divert Internet users who may be looking for the Complainant’s products and services.
The Panel finds that a prima facie case has been established by the Complainant, based on the
above-mentioned cumulative circumstances including the fact that the Complainant and its trade marks corresponding to its name are well established and well recognized in the industry. As the Respondent has defaulted, he has not rebutted this case. Further, as stated in paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), “Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ […] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.” Where, as here, the links capitalize on the “trademark value” of the word, such use would not be considered legitimate or bona fide as it creates a “misleading diversion”.
The Respondent has not responded in the proceeding nor shown with evidence that he has rights or legitimate interests in the disputed domain name. In the circumstances and without contrary evidence, the Panel is unable to find for the Respondent.
The second element of paragraph 4(a) of the Policy has therefore been satisfied.
D. Registered and Used in Bad Faith
The Panel is persuaded in this case that the Respondent has, “by using the domain name […] intentionally attempted to attract, for commercial gain, Internet users to [his] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [his] web site or location or of a product or service on [his] web site or location” (paragraph 4(b)(iv) of the Policy). Even if the Internet users would realize upon reaching the sponsored links page that the disputed domain name is probably not the Complainant’s, the confusion would have already occurred and the Complainant would potentially lose customers as the disputed domain name resolves to a page with sponsored links to the webpages of competitors of the Complainant or those offering similar products or services. It is also relevant that the passive holding of a domain name does not prevent a finding of bad faith. (See paragraph 3.2 of the WIPO Overview 2.0.)
The third element of paragraph 4(a) of the Policy has therefore been satisfied.
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 <intesasanpaolobank.mobi> be transferred to the Complainant.
Date: May 26, 2015