WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Anita Tessini
Case No. D2015-0789
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 Anita Tessini of Lille, France.
2. The Domain Names and Registrar
The disputed domain names <gruppo-intesa.com> and <group-intesa.com> are registered with Papaki Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2015. On May 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 6, 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 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 May 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2015.
The Center appointed Gunnar Karnell as the sole panelist in this matter on June 12, 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 disputed domain names <gruppo-intesa.com> and <group-intesa.com> were both registered January 7, 2015. They are passively held.
The Complainant has requested that the disputed domain names be transferred to the Complainant.
The Complainant is the owner of registrations for its trademark GRUPPO INTESA, applied and registered before the Respondent’s registration of the disputed domain names. Among other trademarks listed by the Complainant are the Community Trademark Registration GRUPPO INTESA, Registration No. 779827 and Italian registration GRUPPO INTESA, Registration No. 818811.
5. Parties’ Contentions
The disputed domain names are confusingly similar to the Complainant’s trademark GRUPPO INTESA.
The Complainant’s name became Intesa Sanpaolo S.p.A. after the merger in 2007 between the Italian banking groups Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.. The Complainant’s name is mirrored in a number of trademark registrations owned by the Complainant, e.g., Community Trademark Registration INTESA SANPAOLO GROUP SERVICES, Registration No. 8158883 and International Trademark Registration INTESA SANPAOLO, Registration No. 920896, applied and registered before the Respondent’s registrations of the disputed domain names. Among the Complainant’s previously registered domain names are <gruppointesa.com> and <gruppointesa.it>. These, and many others mirroring the Complainant’s trademark, are all connected to the Complainant’s official website “www.intesanpaolo.com”.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has never been authorized or licensed by the Complainant to use the disputed domain names. They do not correspond to the name of the Respondent and the Respondent is not commonly known as “Gruppo-Intesa” and/or “Group-Intesa”.
The disputed domain names were registered and they are used in bad faith. No fair or noncommercial use is made of the disputed domain names. They are not used for any bona fide offerings. Circumstances indicate that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting or otherwise transferring their registrations to the Complainant or to the Complainant’s competitors for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain names. There is no conceivable use that could be made of the disputed domain names that would not amount to an infringement of the Complainant’s trademark rights. There is no kind of bona fide use that the Respondent could make with the disputed domain names. They both exactly correspond to the Complainant’s trademarks and would refer, if used, similarly to the Complainant’s domain names currently used by the Complainant to provide online banking services for enterprises.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The factual foundation of the Complainant’s contentions, as presented by the Complainant, while supporting its non-contradicted request for transfer of the disputed domain names by written evidence and references to earlier UDRP case decisions, leads the Panel to the following conclusions:
A. Identical or Confusingly Similar
The disputed domain name <gruppo-intesa.com> fully incorporates the Complainant’s multi-registered and well-known trademark GRUPPO INTESA, whereas in <group-intesa.com> the word “group” is a plain translation of the Italian word “gruppo” which does not dispel confusion with the trademark of the Complainant. The Panel disregards the generic Top-Level Domain (“gTLD”) “.com” for purposes of this element of the Policy.
The Panel finds that the first element of the Policy has been established.
B. Rights or Legitimate Interests
The Complainant has made evident that it has not licensed or otherwise authorized the Respondent to use its trademark GRUPPO INTESA. Also, the Respondent does not appear to be commonly known by the disputed domain names and it is evidently not making a legitimate noncommercial or fair use of them.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there has been no rebuttal from the Respondent. Nothing in the case file gives reason to believe that the Respondent has or had any rights or legitimate interests in respect of the disputed domain names.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In this Panel’s view, there is no indication on the record that might impair the Complainant’s assertions regarding the facts leading up to its conclusions that the disputed domain names <gruppo-intesa.com> and <group-intesa.com> have been registered and are being used in bad faith.
By holding its registrations of the disputed domain names, under circumstances satisfactorily explained in the case file for a conclusion of acting in bad faith, the Respondent has prevented the Complainant from reflecting its well-known trademark GRUPPO INTESA for goods or services under the gTLD “.com”.
The Panel finds that the Respondent has registered the disputed domain names in bad faith and that the Respondent is also, by passively holding them under the circumstances indicated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, using them in bad faith, all within the meaning of paragraph 4(a)(iii) of the Policy.
In light of the above, the Panel confirms that the conditions for transfer of the disputed domain names to the Complainant are 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 names <gruppo-intesa.com> and <group-intesa.com> be transferred to the Complainant.
Date: June 15, 2015