WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Milen Radumilo

Case No. D2016-1561

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 Milen Radumilo of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <intesasanpoaolo.com> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2016. On August 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 August 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2016.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on September 16, 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 leading Italian banking group. It resulted from the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. The Complainant has a market capitalization exceeding EUR 38.6 billion, with 4,100 branches and 11.1 million customers in Italy, and 1,300 branches and over 8.1 million customers in Central Eastern Europe, as well as an international network in 29 countries.

The Complainant submitted evidence that it holds trademark rights for INTESA SANPAOLO for use in connection with banking and finance services, including international trademark Registration No. 920896, registered on March 7, 2007, and European Union trade mark Registration No. 5301999, registered on June 18, 2007, as well as Israeli trademark registrations for the same mark, granted in 2009 (the “Trademarks”).

The Complainant indicates it has also registered the following domain names <intesasanpaolo.com>, <intesasanpaolo.org>, <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.net>, <intesasanpaolo.biz>, <intesa-sanpaolo.com>, <intesa-sanpaolo.org>, <intesa-sanpaolo.eu>, <intesasanpaolo.info>, <intesa-sanpaolo.biz>, and <intesa-sanpaolo.net>, all of which are now redirected to the official website of the Complainant “www.intesasanpaolo.com”.

The Respondent registered the disputed domain name <intesasanpoaolo.com> on May 27, 2016, well after the Complainant secured rights to the Trademarks. The website at the disputed domain name contains sponsored links to various other sites that offer banking services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name <intesasanpoaolo.com> is confusingly similar to the Trademarks, since it reproduces the word element “intesa sanpaolo” used in the Trademarks in its entirety, with the mere inversion of letters “a” and “o” in the second verbal element. In the Complainant’s view, such difference is a minor one and leads to the creation of a merely descriptive variation of the Trademarks.

In support of its arguments the Complainant quotes Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, where the panel considered the domain names <duetschebank.com> and <duetsche-bank.com> to be confusingly similar to the mark DEUTSCHE BANK and an example of the so-called typosquatting, i.e., a situation where the domain name is a slight alphabetical variation from a famous mark.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in the name and Trademarks INTESA SANPAOLO and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant also affirms that the Respondent has not been licensed, permitted or authorized by the Complainant to use its Trademarks, or to seek registration of any domain name incorporating said Trademarks.

In addition, the Complainant contends that the disputed domain name <intesasanpoaolo.com> does not correspond to the name of the Respondent, and that, to the best knowledge of the Complainant, the Respondent is not commonly known as “intesasanpoaolo”.

Finally, the Complainant claims that it did not find any fair or noncommercial use of the disputed domain name <intesasanpoaolo.com>.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

The Complainant contends that since the Trademarks are distinctive and well known globally, the fact that the Respondent has registered a domain name that is confusingly similar to them indicates that the Respondent had knowledge of the Trademarks at the time of registration. The Complainant also stresses that it sufficed for the Respondent to run a simple search on the Internet to realize that the words “Intesa Sanpaolo” clearly refer to the Complainant. In the Complainant’s view the disputed domain name <intesasanpoaolo.com> would not have been registered if it were not for its resemblance to the Trademarks.

The Complainant also contends that the disputed domain name is not used for any bona fide offerings, since there are circumstances indicating that, by using the disputed domain name <intesasanpoaolo.com>, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation, or endorsement of its website.

The Complainant submitted evidence that the disputed domain name <intesasanpoaolo.com> is connected to a website sponsoring, among others, banking and financial services, for which types of services Complainant’s Trademarks are registered and used. Consequently, according to the Complainant, the Internet users, while searching for information on the Complainant’s services, are confusingly led to the websites of the Complainant’s competitors, sponsored on the website connected to the disputed domain name <intesasanpoaolo.com>. Therefore, the Complainant considers that the Respondent has registered and is using the disputed domain name <intesasanpoaolo.com> in order to intentionally divert traffic away from the Complainant’s website “www.intesasanpaolo.com”.

In support of the above arguments the Complainant refers to numerous UDRP decisions, where the respondents registered and used disputed domain names to redirect Internet users to websites of complainants’ competitors, and where the panel found bad faith use and registration.

The Complainant indicates that the current use of the disputed domain, which allows accessing websites of Complainant’s competitors, causes damage as it misleads the present clients and leads to loss of potential new clients. The Complainant contends that the Respondent obtains commercial gain, since the redirecting by means of the disputed domain name is a remunerated sponsoring activity.

Finally, the Complainant indicates that it requested the Respondent to voluntarily transfer the disputed domain name by sending the Respondent a cease-and-desist letter on July 11, 2016. This request has never been answered.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to INTESA SANPAOLO, including international trademarks.

Secondly, the Panel finds that the disputed domain name <intesasanpoaolo.com> fully incorporates the word element of the Complainant’s INTESA SANPAOLO Trademarks, in which the Complainant has exclusive rights.

According to the consensus view of UDRP panels, a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see paragraph 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

In the disputed domain name <intesasanpoaolo.com> the Respondent changed the word element of the Trademarks only by inserting an additional letter “o” to their second component. In consequence, and following the approach taken in numerous UDRP decisions (e.g. Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971 (<fuijifilm.com>); Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073 (<humanna.com>); Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (<edmundss.com>)), the Panel finds that the disputed domain name contains an obvious misspelling of INTESA SANPAOLO Trademarks.

In addition, since the word element of the Trademarks has been incorporated in the disputed domain name in its entirety, the Panel considers that the misspelled trademark remains the dominant and principal component of the disputed domain name.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s Trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent is commonly known by the name “intesasanpoaolo” or is in any way affiliated with the Complainant or authorized or licensed to use the Trademarks or to seek registration of any domain name incorporating the Trademarks.

After having examined the website operating under the disputed domain name, as evidenced by the Complainant and the Panel’s own research and findings, the Panel finds that the disputed domain name does not, at the moment, redirect to the Complainant’s website. However, the website shows advertisements that include sponsored links leading to the websites of Complainant’s competitors. Except for these links, the website does not show any other activities. Therefore, and in view of the evidence of the Complainant, the Panel finds that there is no evidence showing that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

First of all, with regard to the Respondent’s registration of the disputed domain name, after reviewing the evidence presented by the Complainant, this Panel believes that the Respondent must have known and been aware of the Complainant’s rights on the prior INTESA SANPAOLO Trademarks and the associated products and services at the time of registration of the disputed domain name.

Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name. As asserted by the Complainant, and supported in the provided evidence, the Respondent appears to have made use of the disputed domain name to publish sponsored links leading to the websites of Complainant’s competitors. In result, since the disputed domain name is confusingly similar both to the Complainant’s Trademarks and the domain names the Complainant owns, the Internet users, while searching for information on the Complainant’s services, may be mistakenly led to websites of the Complainant’s competitors. It appears therefore that, by redirecting Internet users to competitors’ websites, the Respondent is trying to create confusion with the Complainant’s Trademarks and the Respondent’s website within within the meaning of paragraph 4(b)(iv) of the Policy. Similarly to other UDRP panels (see Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753; YAHOO! INC. v. David Murray, WIPO Case No. D2000-1013; Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319), this Panel considers the above to be bad faith use of the disputed domain name for the purposes of the Policy.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

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 name <intesasanpoaolo.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: September 30, 2016