WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Este sas di S. Terracina & C.
Case No. D2016-1944
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 Este sas di S. Terracina & C. of Milan, Italy.
2. The Domain Names and Registrar
The disputed domain names <intesa.cloud> and <sanpaolo.cloud> are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2016. On September 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 23, 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 October 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 25, 2016.
The Center appointed Edoardo Fano as the sole panelist in this matter on November 4, 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Intesa Sanpaolo S.p.A., a leading Italian banking group, owning many trademark registrations for INTESA SANPAOLO, including:
- International Trademark Registration No. 920896 INTESA SANPAOLO, registered on March 7, 2007;
- European Union Trademark Registration No. 5301999 INTESA SANPAOLO, registered on June 18, 2007;
- International Trademark Registration No. 793367 INTESA, registered on September 4, 2002 and duly renewed;
- European Union Trademark Registration No. 2803773 INTESA, registered on November 17, 2003 and duly renewed;
- International Trademark Registration No. 714661 SANPAOLO IMI and device, registered on May 27, 1999 and duly renewed;
- European Union Trademark Registration No. 1182716 SANPAOLO IMI and device, registered on July 19, 2000 and duly renewed.
The Complainant operates its main website at "www.intesasanpaolo.com" and also owns several other domain names, including <intesa.com>, <intesa.org>, <intesa.biz>, <intesa.info>, <intesa.mobi>, <sanpaolo.com>, <sanpaolo.net>, <sanpaolo.biz>, <sanpaolo.info>, <sanpaolo.xxx>.
The Complainant provided evidence in support of the above.
The disputed domain names <intesa.cloud> and <sanpaolo.cloud> were registered on March 1, 2016. At the time of filing the Complaint, the websites at the disputed domain names were not active.
5. Parties' Contentions
The Complainant states that the disputed domain names <intesa.cloud> and <sanpaolo.cloud> are confusingly similar to its trademark INTESA SANPAOLO.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, nor is the Respondent commonly known by the disputed domain names to the best of the Complainant's knowledge.
The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith because, even if at the moment of filing the Complaint the relevant websites appear to be inactive, no future legitimate use of the disputed domain name could be imagined.
Moreover, the Respondent is engaged in a pattern of registering many abusive domain name registrations.
The Respondent has made no reply to the Complainant's contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark INTESA SANPAOLO both by registration and acquired reputation and that the disputed domain names <intesa.cloud> and <sanpaolo.cloud> are confusingly similar to the trademark INTESA SANPAOLO.
It is also well accepted that a generic Top-Level Domain ("gTLD") suffix, in this case ".cloud", may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. It asserts that the Respondent is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain names. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, and the Panel is unable to establish any such interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that "for the purposes of paragraph 4(a)(iii) of the Policy, 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 [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location."
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant's trademark INTESA SANPAOLO in the field of banking and financial services is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain names, <intesa.cloud> and <sanpaolo.cloud>, because they are confusingly similar to the Complainant's trademark.
Regarding the use in bad faith of the disputed domain names, both of them pointing to an inactive website at the time of filing the Complaint, the Panel considers that bad faith may exist even in cases of so-called "passive holding", as found in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case the Panel finds that such passive holding amounts to bad faith use, also taking into consideration the pattern of conduct of the Respondent in several other cases of abusive domain name registration (see, e.g., COMUTO v. Este sas di S. Terracina & C. Societa/Ditta, WIPO Case No. D2016-0758).
The Panel takes note that the disputed domain name <Intesa.cloud> now resolves to what appears to be a dating website, and finds that this does not alter the Panel's assessment of registration and use in bad faith.
The Panel finds that the Complainant has presented sufficient evidence to satisfy the burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) 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 names <intesa.cloud> and <sanpaolo.cloud> be transferred to the Complainant.
Date: November 18, 2016