WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Domain Admin, Whois Privacy Corp.
Case No. D2016-1077
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 Domain Admin, Whois Privacy Corp. of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <intesasanpaoloits.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On May 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 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 June 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2016.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on June 30, 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 Intesa Sanpaolo, an Italian bank created on January 1, 2007, through the merger of two leading Italian banking groups, Banca Intesa and Sanpaolo IMI.
Intesa Sanpaolo is a leader in Italy in banking business areas. It has also an international presence in central eastern Europe, the middle east and north Africa, the United States of America, Brazil, Russian Federation, India and China.
The Complainant is the owner of inter alia the registered trademark INTESA SANPAOLO, since March 7, 2007.
Besides holding the rights in this trademark, it is also the owner of several domain names bearing the sign INTESA SANPAOLO: <intesasanpaolo.com>, “.org”, “.eu”, “.info”, “.net”, “.biz” and <intesa-sanpaolo.com>, “.org”, “.eu”, “.info”, “.net”, “.biz”.
The Complainant’s official website is <intesasanpaolo.com> to which all its other domain names redirect.
The Respondent registered the disputed domain name <intesasanpaoloits.com> on February 24, 2016. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The disputed domain name is confusingly similar to the trademark INTESA SANPAOLO in which the Complainant holds rights. The significant portion of the disputed domain name <intesasanpaoloits.com> is the trademark INTESA SANPAOLO, adding only the term “its” at the end, which represents a minor variation of the domain name used by the Complainant to identify its online services, <intesasanpaolo.com>.
2. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the owner of the trademark INTESA SANPAOLO. The Complainant has given no authorization or license to the Respondent in order to make use of its trademark. Additionally, the Respondent is not known to have any relation with the disputed domain name or to be making a fair or noncommercial use of the disputed domain name.
3. The Respondent has registered and is using the disputed domain name in bad faith. The Complainant’s trademark INTESA SANPAOLO is a distinctive and well known mark, easily found in a simple Google search. Therefore, it is more than likely that the disputed domain name would not have been registered if it were not for Complainant’s trademark. This clearly suggests that the Respondent did register the disputed domain name in bad faith, making an unlawful use of the Complainant’s trademark. The disputed domain name is not connected to any website and there is no bona fide offering of goods or services. The Complainant further argues that is it difficult to understand what kind of use one can make of a domain name that corresponds to the Complainant’s trademark, besides using it in bad faith. Finally, the Respondent did not comply with the Complainant’s amicable request for the voluntary transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”, Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”, Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”, Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark INTESA SANPAOLO.
The disputed domain name incorporates the trademark INTESA SANPAOLO in its entirety and adds the generic term “its”. The Panel finds that the significant portion of the disputed domain name is undoubtedly the trademark INTESA SANPAOLO and that the common term “its” adds a minor and subtle difference.
According to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, among other previous UDRP decisions, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. The Panel finds this applies to the present case as well.
In light of the above, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
In order for a complainant to prove that a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, among others, Croatia Airlines, d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name.
Based on the record before it, the Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
It is clear to the Panel that, in this case, there is no evidence that the Respondent has ever been commonly known by the disputed domain name. The Respondent has not presented any proof or argument that could lead the Panel to conclude that the Respondent could have any rights or legitimate interests in the disputed domain name. Further, the Panel sees no indication that any other circumstances of paragraph 4(c) of the Policy are present.
In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
The Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainant’s trademark INTESA SANPAOLO was registered in 2007 and since then has become widely known with a strong presence in the bank industry. The Panel understands that even if the Respondent was not aware of this trademark at the time the disputed domain name was registered, which is questionable, a simple and quick Internet research would have made the Respondent aware of this pre-existing trademark and the Complainant’s rights therein. This indicates that the Respondent should have been aware of the Complainant’s rights by the time it registered the disputed domain name.
As decided in Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085, the registration of a well-known trademark by a party with no connection to the owner of the trademark, no authorization and no legitimate purpose to use the mark is a strong indication of bad faith. The Panel agrees with this view.
Furthermore, the Panel notes that the Complainant evidenced that the website under the disputed domain name does not resolve to an active website. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2, the apparent lack of active use does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Some of the circumstances found to be indicative of bad faith when a domain name does not resolve to a website include having used a well-known trademark and not having replied to the complaint. The Panel finds these circumstances to be present.
In light of the above, the Panel finds that the disputed domain name has been registered and used in bad faith and therefore finds that the third element of the Policy has 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 <intesasanpaoloits.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: July 11, 2016