WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / domain admin, dcw group investments
Case No. D2015-2289
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 Above.com Domain Privacy of Beaumaris, Australia / domain admin, dcw group investments of Walnut, California, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <intesasanopaolo.com> is registered with Above.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2015. On December 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 30, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 25, 2016.
The Center appointed James Bridgeman as the sole panelist in this matter on January 27, 2016. 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 large Italian banking group with 11.1 million customers in 28 countries served by a network of approximately 4,300 branches. It has a market share of more than 14% in most Italian regions and has a strong presence in Central-Eastern Europe where it has 1,300 branches and over 8.2 million customers.
The Complainant is the owner of a portfolio of registrations for the INTESA SANPAOLO mark including:
- International trademark registration n. 920896 INTESA SANPAOLO, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42, also covering Australia;
- International trademark registration n. 923982 INTESA SANPAOLO & device, granted on March 27, 2007, in classes 9, 16, 35, 36, 38, 41 and 42, also covering Australia;
- Community trademark registration n. 5301999 INTESA SANPAOLO, applied for on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;
- Community trademark registration n. 5421177 INTESA SANPAOLO & device, applied for on October 27, 2006 and granted on November 5, 2007, in classes 9, 16, 35, 36, 38, 41 and 42.
Additionally Complainant owns and maintains a website at "www.intesasanpaolo.com" to which the domain names <intesasanpaolo.com>, <intesasanpaolo.org>, <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesa-sanpaolo.net> and <intesa-sanpaolo.biz> resolve.
The disputed domain name was registered on July 1, 2015 using the privacy services of the first named Respondent. There is no information available about the second named Respondent except for what was provided in the WhoIs and the Complaint. References to the Respondent below in this decision are references to the second named Respondent which was disclosed by the Registrar.
5. Parties' Contentions
The Complainant relies on its rights in the above-listed trademarks and submits that the disputed domain name is confusingly similar to Complainant's mark INTESA SANPAOLO. It exactly reproduces the Complainant's INTESA SANPAOLO mark, with the mere addition of the letter "o" in the second verbal portion "SANPAOLO". The additional letter is merely a minor variation of the cited trademark and does not distinguish the disputed domain name from the mark. In support of this submission the Complainant cites the decision Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, WIPO Case No. D2001-1314 in which the Panel found the domain names <duetschebank.com> and <duetsche-bank.com> to be confusingly similar to the complainant's mark and a clear example of "typosquatting" in circumstances where the domain names at issue were a slight alphabetical variation from a famous mark.
The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name, since the Respondent has no connection with the Complainant, has not been authorised or licenced by the Complainant to use its mark or to register the disputed domain name. The Respondent's name does not correspond with the disputed domain name and to the best of the Complainant's knowledge the Respondent is not commonly known as "INTESASANOPAOLO".
Finally referring to the content on the website that the Respondent has established at the disputed domain name, the Complainant submits that there is no evidence of any fair or noncommercial use of the disputed domain name by the Respondent.
The Complainant submits that the disputed domain name was registered and is being used in bad faith, alleging that the disputed domain name is confusingly similar to its trademark and was registered with knowledge of the Complainant's mark. If the Respondent had carried even a basic Google search in respect of the wording "INTESA SANPAOLO", the same would have yielded obvious references to the Complainant.
The Complainant alleges that the disputed domain name resolves to a website with links to providers of banking and financial services, which are precisely the services for which the Complainant's trademarks are registered and used. The Complainant submits that by such use of the disputed domain name 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 mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Complainant alleges that because of the similarity of the disputed domain name and the Complainant's mark, Internet users, while searching for information on the Internet for the Complainant's services, are confusingly led to the websites of the Complainant's competitors. The Complainant submits that it is obvious that the Respondent's activity is being remunerated.
Finally the Complainant requests this Panel to note that prior to commencing this proceeding, the Complainant's attorneys sent a cease and desist letter to the Respondent on September 28, 2015. The Respondent did not reply.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4 of the Policy requires the Complainant to establish that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its rights in the INTESA SANPAOLO mark established through the above-listed trademark registrations and the goodwill that it has established through extensive use of the mark in its international banking business.
This Panel accepts the Complainant's submission that the disputed domain name <intesasanopaolo.com> is confusingly similar to the Complainants INTESA SANPAOLO mark. The mere addition of letter "o" between "san" and "paulo" elements does not distinguish the domain name from the mark to any significant extent.
In the circumstances the Complainant has satisfied the first element of the test in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is almost identical to the Complainant's INTESA SANPAOLO mark; the Complainant has not authorized or licensed the use of its trademark in the disputed domain name by the Respondent; and there is no evidence of any legitimate, noncommercial use of the disputed domain name by the Respondent.
It is well established in decisions made under the Policy, that in such circumstances the burden of production shifts to the Respondent to establish its rights or legitimate interests. The Respondent has not filed any Response, nor has it replied to the cease and desist letter that was sent by the Complainant prior to the commencement of this proceeding.
As the Respondent has failed to discharge the burden of production, the Complainant is entitled to succeed in the second element of the test in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In the absence of any Response or explanation from the Respondent, this Panel finds that because of the distinctive character and reputation of the Complainant's INTESA SANPAOLO trademark and the confusing similarity of the disputed domain name, and the fact that the disputed domain name was registered long after the Complainant established its reputation and trademark rights, is highly unlikely that the domain name was chosen for any reason other than to consciously take predatory advantage of the Complainant's marks by confusing Internet users into believing that the website to which it resolves is owned by or associated with the Complainant.
This Panel finds that on the balance of probabilities the Respondent is engaged in "typosquatting" by registering and using the disputed domain name which is almost identical to the Complainant's mark except for the addition of one letter "o", placed between the elements "san" and "paulo".
This Panel is confirmed in this finding by the fact that the website to which the disputed domain name resolves expressly refers to the Complainant and its services and appears to provide links to providers of banking and financial services including the Complainant and some competitors of the Complainant.
In the circumstances this Panel finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's INTESA SANPAOLO mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Complainant has therefore also satisfied the third and final element of the test in paragraph 4(a)(iii) of the Policy and is entitled to succeed in the Complaint.
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 <intesasanopaolo.com> be transferred to the Complainant.
Date: January 28, 2016