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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Louis Marcus, Host Surf UK

Case No. D2016-0305

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 Louis Marcus, Host Surf UK of Yorkshire, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrars

The disputed domain names <serviziclienti-intesasanpaolo.com> and <servizi-intesasanpaolo.com> (the "Domain Names") are registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 15, 2016. On February 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 16, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2016. By email of March 4, 2016 the Center received an email from "Hosting Matters" stating that "The domains were registered by a customer of ours and not by ourselves" and that, therefore, the Complaint "should be lodged with the customer". However, it did not identify who this customer was. In addition, the listed registrant Louis Marcus, by email of March 5, 2016 replied that he 'and my company Host Surf UK Limited is the company that registered the domains on behalf of a customer who requested them sometime ago. The domains are no longer with myself or Host Surf UK Limited and we have no control over them as they have been moved. The customer who ordered these domains did not update the Whois which is why it still has mine and Host Surf UK Limited details on."

The Respondent did not submit any Response to the material allegations in the Complaint. Accordingly, the Center notified the Respondent's default on March 16, 2016.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 29, 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 came into existence following a merger in 2002 between the Italian banking companies Banca Intesa and Gruppo San Paolo IMI.

The Complainant has a market capitalisation exceeding EUR 43.8 billion, and in Italy, in all business areas (retail, corporate and wealth management) has a market share of more than 14% in most Italian regions, with approximately 11.1 million customers. The Complainant has approximately 1,200 branches and over 8.2 million customers in Central-Eastern Europe and an international network specialised in supporting corporate customers in 28 countries, in particular in the Mediterranean area and the United States of America, Russia, China and India.

The Complainant is the owner, among others, of the following registrations for the trade mark INTESA SANPAOLO:

- International trademark registration No. 920896 INTESA SANPAOLO, granted on March 7, 2007;

- Community trademark registration No. 5301999 INTESA SANPAOLO, applied on September 8, 2006 and granted on June 18, 2007;

- Community trademark registration No. 5421177 INTESA SANPAOLO, applied on October 27, 2006 and granted on November 5, 2007;

together hereafter referred to as the "Trade Marks".

The Respondent registered the Domain Names on August 31 or September 1, 2015.

5. Parties' Contentions

A. Complainant

The Complainant submits that the Domain Names are similar to the Trade Marks, since they exactly reproduce the Trade Marks, with the addition of the generic terms (in Italian) "servizi" and "servizi clienti" (meaning "services" and "customer services" respectively). According to the Complainant, this difference is a minor and descriptive variation of the Trade Marks.

The Complainant states that the Respondent has no rights on the Domain Names, since neither the respondent Louis Marcus nor the respondent Host Surf UK has been authorized by the Complainant to register the Domain Names or licensed to the Trade Marks. Furthermore, the Complainant points out that the Domain Names do not correspond to the names of the respondents (Louis Marcus and Host Surf UK) and, to the best of its knowledge, neither Respondent is commonly known under either of the Domain Names or any corresponding name. Finally, the Complainant submits that there is not any fair or noncommercial uses of the Domain Names, as they are not currently used by the Respondent, while the name "Intesa Sanpaolo" has been used by the Complainant since the merger of Banca Intesa and Gruppo San Paolo IMI in 2002.

According to the Complainant, the Domain Names were registered and are used in bad faith, inter alia since

- the Trade Marks are distinctive and well known around the world;

- the fact that the Respondent has registered the Domain Names, which are confusingly similar to the Trade Marks, in itself indicates that the Respondent had knowledge of the Complainant's trademark at the time of registration of the Domain Names;

- if the Respondent had carried out a basic Google search on "INTESA SANPAOLO", this would have yielded obvious references to the Complainant;

- the Domain Names are not used for any bona fide offering of goods or services, since they are not connected to a website;

- the passive holding of a domain name with knowledge that the domain name infringes another party's trademark rights is evidence of bad faith registration and use;

- there is no conceivable use that the Respondent could make of the Domain Names that would not infringe the Trade Marks;

- there is a risk of a wrongful use of the Domain Names, since the Complainant has already been targeted by some cases of phishing in the past few years, seeking to attract customers to a web page which imitates the real page of the bank, with a view to having customers disclose confidential information like a credit card or bank account number, for the purpose of unlawfully charging such bank accounts or withdrawing money out of them;

- the lack of response to a cease and desist letter dated December 14, 2015 from the Complainant to the Respondent.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Panel notes that the Complaint contains a reference to "four domain names" (on page 9), whereas this case concerns two domain names, and a reference to a domain name <intesacr.com> (on page 10), which is not one of the Domain Names. The Panel has assumed these references have been included by mistake (possibly taken from another Complaint that has served as example for the present Complaint) and has ignored them, as the remainder of the Complaint leaves no doubt that it concerns the Domain Names.

The Respondent has replied to the Complaint by stating that it registered the Domain Names on behalf of a customer (without identifying that customer) and that the Domain Names "have been moved" without updating the registrant's particulars in the WhoIs. However, the Registrar has confirmed that it is the registrar of the Domain Names and has accordingly barred the Domain Names from being transferred during the proceedings ("locked status"). In addition, as confirmed by the Respondent, the WhoIs still contains its names as registrant. Therefore, the proceedings have been rightfully instituted against the Respondent and a decision to transfer the Domain Names, if such were given, can be implemented by the Registrar.

A. Identical or Confusingly Similar

The Trade Marks consist of the element "Intesa Sanpaolo" which is incorporated in its entirety in the Domain Names. The addition of the generic words in Italian "servizi" (meaning "services" in English) and "serviziclienti" (meaning "customer services" in English) does not change the confusing similarity of the Domain Names and the Trade Marks, also taking into account that "Intesa Sanpaolo" is the name used by the Complainant for its company since the merger of Banca Intesa and Gruppo San Paolo IMI in 2002 and (therefore) not a generic term or word, as well as the reputation of the Trade Marks (see also WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9). The generic Top-Level Domain ("gTLD") ".com" is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 2.0, paragraph 1.2).

Therefore, the Panel finds that the Domain Names are confusingly similar to the Trade Marks.

B. Rights or Legitimate Interests

The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Names (WIPO Overview 2.0, paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not commonly known by the Domain Names and has not acquired trademark rights to the Domain Names. The Complainant has not authorized, licensed or otherwise consented to the Respondent's registration and use of the Trade Marks as part of the Domain Names.

Furthermore, also taking into account the reputation of the Trade Marks, the Panel cannot conceive of any fair or noncommercial use of the Domain Names on the facts before it.

In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Names the Respondent was or should have been aware of the Trade Marks.

First, the oldest registration of the Trade Marks predates the Domain Names' registration by 8 years.

Secondly, the name "Intesasanpaolo", of which the Trade Marks consist and which is incorporated in its entirety in the Domain Names, has been in use by the Complainant since 2002.

Thirdly, "Intesasanpaolo" is the name used by the Complainant for its company since the merger of Banca Intesa and Gruppo San Paolo IMI and is not a term or word that a person wishing to register a domain name would accidently think of.

Finally, a simple trade mark register search, or even a Google search, prior to the registration of the Domain Names would have informed the Respondent of the existence of the Complainant and the Trade Marks.

Under these circumstances, the Panel concludes that the Domain Names have been registered in bad faith.

The fact that the Domain Names at this stage do not appear to resolve to an active web site does not imply they are not being used. As set out in WIPO Overview 2.0 (paragraph 3.2), the consensus view is that the apparent lack of so-called active use (e.g., to resolve to a website) of a domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and recently HUGO BOSS Trade Mark Management GmbH & Co. KG , HUGO BOSS AG v. Dzianis Zakharenka, WIPO Case No. D2015-0640). In accordance with this UDRP jurisprudence, a UDRP panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.

In this case, the Panel finds that the following circumstances together are found to be indicative of bad faith use of the Domain Names:

- the reputation of the Trade Marks and the likelihood that the Respondent was aware or should have been aware of the Complainants' rights in the Trade Marks;

- the lack of a formal Response of the Respondent;

- the lack of a reply to an earlier cease and desist statement by the Respondent.

Therefore, the Panel concludes that the Domain Names have been registered and are being used in bad faith.

7. Decision

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 <serviziclienti-intesasanpaolo.com> and <servizi-intesasanpaolo.com> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist
Date: April 12, 2016

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