WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Geosum / N/A
Case No. D2015-1283
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 Geosum / N/A of Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <intesasanpaolo.website> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 24, 2015. On July 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 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 August 3, 2015. On August 3, 2015, the Respondent sent an email communication to the Center. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2015. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on August 24, 2015.
The Center appointed Felipe Claro as the sole panelist in this matter on September 11, 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 owner, among others, of the following registrations for the trademark "INTESA SANPAOLO":
- International Trademark Registration No. 920896 INTESA SANPAOLO, granted on March 07, 2007, in connection with classes 9, 16, 35, 36, 38, 41 and 42;
- International Trademark Registration No. 923982 INTESA SANPAOLO, granted on March 27, 2007, in connection with classes 9, 16, 35, 36, 38, 41 and 42;
- International Trademark Registration No. 924099 INTESA SANPAOLO, granted on March 27, 2007, in connection with classes 9, 16, 35, 36, 38, 41 and 42.
- Community Trademark Registration No. 5301999 INTESA SANPAOLO, filed on September 8, 2006 and granted on June 18, 2007, in connection with classes 35, 36 and 38;
- Community Trademark Registration No. 5421177 INTESA SANPAOLO, filed on October 27, 2006 and granted on November 5, 2007, in connection with classes 9, 16, 35, 36, 38, 41 and 42.
The Complainant is also the owner, among the others, of the following domain names bearing the sign INTESA SANPAOLO: <intesasanpaolo.com>, <intesasanpaolo.org>, <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.net>, <intesasanpaolo.biz> and <intesa-sanpaolo.com>, <intesa-sanpaolo.org>, <intesa-sanpaolo.eu>, <intesa-sanpaolo.info>, <intesa-sanpaolo.net>, <intesa-sanpaolo.biz>.
The disputed domain name was registered on June 25, 2015.
5. Parties' Contentions
According to the Complainant, it is the leading Italian banking group and also one of the protagonists in the European financial arena. Intesa Sanpaolo is the company resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. Intesa Sanpaolo S.p.A. is among the top banking groups in the euro zone, with a market capitalisation exceeding 54.2 billion euros, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 4,400 branches capillary and well distributed throughout the country, with market shares of more than 14% in most Italian regions, the Group offers its services to approximately 11.1 million customers. Intesa Sanpaolo S.p.A. has a strong presence in Central-Eastern Europe with a network of approximately 1.400 branches and over 8, 3 million customers. Moreover, the international network specialised in supporting corporate customers is present in 29 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, Russian Federation, Republic of China and India.
The Respondent did not formally reply to the Complainant's contentions. The disputed domain name was registered on June 25, 2015.
6. Discussion and Findings
In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainants' undisputed representations. In that regard and apart from judging this proceeding through mere default of the Respondent, the Panel makes the following specific findings.
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's trademark INTESA SANPAOLO. As a matter of fact, there are no differences between the disputed domain names <intesasanpaolo.website> and the distinctive sign INTESA SANPAOLOregistered by Intesa Sanpaolo S.p.A. at a national and international level.
B. Rights or Legitimate Interests
The Respondent has not submitted to have any rights on the disputed domain name. The use of the trademark INTESA SANPAOLOhas to be authorized by the trademark owner. The Respondent has not been authorized or licensed by the Complainant to use the disputed domain name.
The disputed domain name does not correspond to the name of the Respondent and the Respondent is not commonly known as "intesasanpaolo".
There is no information about any fair or noncommercial uses of the disputed domain name.
In the absence of a rebuttal from the Respondent, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <intesasanpaolo.website> has been registered and is being used in bad faith.
The disputed domain name is not used for any bona fide offering, and the same is not connected to any web sites. Many UDRP decisions confirm that the passive holding of a domain name including another party's widely known trademark is evidence of bad faith registration and use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
See also the WIPO Overview of WIPO Views on Selected UDRP Questions ("WIPO Overview 2.0")at paragraph 3.2. In particular, the consensus view of WIPO UDRP panelists is that passive holding of a disputed domain name may, in appropriate circumstances, be consistent with a finding of bad faith. However, UDRP 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 trade mark rights. As regards to the first aspect, the Complainant has already proved the widely known character of its trademarks. As to the second circumstance, the Panel cannot see to what kind of legitimate use the Respondent could make with a domain name which exactly corresponds to the Complainant's trademark in the banking sector.
In the light of the above, the present case meets to the above requirements and the passive holding of the domain name <intesasanpaolo.website> has to be considered a use in bad faith. See, Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615, "The very act of having acquired [the domain name] raises the probability of Respondent using [it] in a manner that is contrary to Complainant's legal rights and legitimate interests. […] To argue that Complainant should have to wait for some future use of the disputed domain names to occur in order to demonstrate Respondent's bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant's goodwill and business. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent's bad faith. On the contrary, it raises the spectre of continuing bad faith abuse by Respondent of Complainant's Mark, name and related rights and legitimate business interests".
On July 17, 2015, the Complainant's attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the disputed domain name to their client. Despite such communication, the Respondent refused to comply with the above request, by requesting the payment of EUR 8.657,00 in order to let the disputed domain name <intesasanpaolo.website> transferred to the Complainant. It is clear that the above amount exceed the out-of-pocket costs directly related to the domain name. The fact of requesting a high sum for the transfer of a third party's name is another clear indication of bad faith.
In the light of the above, the third element of the Policy has been established.
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 <intesasanpaolo.website> be transferred to the Complainant.
Date: September 25, 2015