WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Sara Fusini, T. STUDIO S.r.l.
Case No. D2016-2075
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 Sara Fusini, T. STUDIO S.r.l. of Villa D'Alme, Italy.
2. The Domain Name and Registrar
The disputed domain name <isanpaoloprivate.com> is registered with 1&1 Internet SE (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2016. On October 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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.
On October 20, 2016, the Center notified the Parties in both English and French that the language of the Registration Agreement in this case was French. The Complainant requested English to be the language of the proceeding on October 21, 2016. The Respondent did not submit any coment regarding the language of the proceeding request.
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 in both French and English, and the proceedings commenced on October 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2016.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on November 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 is an Italian Bank group and also one of the top banking groups in Europe. The Complainant, Intesa Sanpaolo S.p.A., is the company resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.
The Complainant has, also, a strong presence in Central-Eastern Europe with a network of approximately 1,200 branches and over 8.1 million customers.
The Complainant is the owner, among others, of the following trademarks for INTESA SANPAOLO and INTESA SANPAOLO PRIVATE BANKING:
- International trademark registration n. 920,896 INTESA SANPAOLO, granted on March 07, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;
- European Union (“EU”) trademark registration number 5,301,999 INTESA SANPAOLO, applied on September 08, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;
- EU trademark registration number 5,421,177 INTESA SANPAOLO (and device), applied on October 27, 2006 and granted on November 5, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;
- EU trademark registration number 6,067,789 INTESA SANPAOLO PRIVATE BANKING, applied on July 4, 2007 and granted on May 20, 2008, in classes 9, 16, 35, 36, 38, 41 and 42;
- EU trademark registration number 6,067,862 INTESA SANPAOLO PRIVATE BANKING (and device), applied on July 4, 2007 and granted on June 6, 2008, in classes 9, 16, 35, 36, 38, 41 and 42;
- EU trademark registration number 6,069,603 INTESA SANPAOLO PRIVATE BANKING (and device), applied on July 4, 2007 and granted on May 20, 2008, in classes 9, 16, 35, 36, 38, 41 and 42.
The Complainant is also the owner, among others, of the following domain names:
The Domain Name <isanpaoloprivate.com> was registered on November 27, 2014. The Domain Name does not resolve to an active website.
5. Parties’ Contentions
The Complainant argues that the Domain Name is confusingly similar to its domain names and trademarks INTESA SANPAOLO and INTESA SANPAOLO PRIVATE BANKING.
The Domain Name reproduces exactly the Complainant's trademarks and domain names.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the Domain Name to advance legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.
The Complainant requests that the Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements is satisfied:
i. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.B);
ii. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.C.); and
iii. The Domain Name has been registered and is being used in bad faith (see below, section 6.D).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.
A. Preliminary question: Language of Proceeding
In accordance with paragraph 11(a) of the Rules, the language of the proceeding should be the language of the registration agreement. In the present case, the Center notified the parties in both English and French that the language of the Registration Agreement of the Domain Name was French. The Complainant requested English to be the language of the proceeding. The Respondent did not submit an objection to this request. Noting that the Respondent did not submit a language of the proceeding request, did not submit any Response and the Center notified the Complaint and sent all its communication to the Parties in both English and French, in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case.
B. Identical or Confusingly Similar
The Complainant has shown that it owns trademark rights in the INTESA SANPAOLO and INTESA SANPAOLO PRIVATE BANKING trademarks.
The Panel finds that the Domain Name <isanpaoloprivate.com> is confusingly similar to the Complainant’s trademarks INTESA SANPAOLO and INTESA SANPAOLO PRIVATE BANKING.
The Domain Name contains entirely the term “sanpaoloprivate”, which appears in many of the Complainant’s domain names. In addition, the letter “i” of the Domain Name clearly recalls the other part of the Complainant trademarks INTESA SANPAOLO and INTESA SANPAOLO PRIVATE BANKING, as “i” is the initial letter of both trademarks.
Therefore the Domain Name is only a slight alphabetical variation of the Complainant’s trademarks and domain names, and the Complainant argues this is an example of “typosquatting”.
This kind of "typosquatting" uses similar confusion resulting from typing errors commonly made by Internet users (see La Française des Jeux v. Mark L Virgin, WIPO Case No. D2006-0283).
In view of the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and has made commercial use of the trademarks for several years.
The first element of the Policy has, therefore, been met.
C. Rights or Legitimate Interests
The Panel finds that with regard to whether the Respondent has any rights or legitimate interests in respect of the Domain Name (paragraph 4(c) of the Policy), the Complainant has made an adequate prima facie showing that the Respondent does not have rights or legitimate interests.
The trademarks INTESA SANPAOLO and INTESA SANPAOLO PRIVATE BANKING do not correspond to the Respondent’s name, and there is no evidence that the Respondent is otherwise commonly known as “intesa sanpaolo” and “intesa sanpaolo private banking”.
The Complainant also declares that the Respondent has not been authorized or licensed to use the Domain Name <isanpaoloprivate.com>.
The Respondent did not come forward with any evidence that it has any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Domain Name.
The second element of the Policy has, therefore, been met.
D. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, whichconstitute evidence of bad faith. This list is not exhaustive, but merely illustrative.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, the [Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on its web site or location.”
Based on the case file, the Panel considers it likely that the Respondent, by registering the Domain Name incorporating the Complainant’s well-known registered trademark and domain names, has registered the Domain Name with the Complainant in mind.
In addition, the mere fact that the Respondent has registered a domain name which incorporates the famous trademarks of a well-known company, is alone sufficient to give rise to an inference of bad faith (see National Hockey League v. Jean Lucas, Domcharme Group, WIPO Case No. D2016-0315).
With reference to the use of the Domain Name, the Panel finds that the apparent lack of so-called active use (e.g., to resolve to a website) of the Domain Name without any active attempt to sell or to contact the trademark holder (passive holding), does not prevent for finding bad faith. Moreover, examining all the circumstances of the case the Panel determines that the Respondent is acting in bad faith, on the grounds that:
- the Complainant trademarks are well-known trademarks and the Respondent, also an Italian company, could not know the existence of the Complainant’s trademarks and;
- the Respondent did not reply to the Complainant’s contentions.
For all the foregoing reasons, the Panel concludes that the Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <isanpaoloprivate.com> be transferred to the Complainant.
Date: December 13, 2016