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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Rosa Giuffrida / Registration Private, Domains By Proxy, LLC

Case No. D2016-2590

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 Rosa Giuffrida of Milano, Italy / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States").

2. The Domain Name and Registrar

The disputed domain name <filialeintesacornaredo.com> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 21, 2016. On December 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 23, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 23, 2016.

The Center verified that the Complaint together with the amendment to 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 January 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 24, 2017.

The Center appointed Luca Barbero as the sole panelist in this matter on February 7, 2017. 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 has a network of 4,000 branches and a market share of more than 13% in most Italian regions, offering its services to approximately 11,1 million customers. It has also a strong presence in Central-Eastern Europe, with a network of approximately 1,200 branches and over 7,9 million customers.

The Complainant is the owner of several registrations for the trademarks INTESA and INTESA SANPAOLO, including the following:

- International trademark registration No. 793367 for INTESA, registered on September 4, 2002, in class 36;

- European Union trademark registration No. 2803773 for INTESA, registered on November 17, 2003, in class 36;

- United States trademark registration No. 4196961 for INTESA, registered on August 28, 2012, in class 36;

- International trademark registration No. 920896 for INTESA SANPAOLO, registered on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;

- European Union trademark registration No. 5301999 for INTESA SANPAOLO, registered on June 18, 2007, in classes 35, 36 and 38.

The Complainant is also the owner, among the others, of the following domain names encompassing the trademarks INTESA and INTESA SANPAOLO: <intesa.com>, registered on December 2, 1996, and <intesasanpaolo.com>, registered on August 24, 2006. Both domain names are redirected to the Complainant's official website "www.intesasanpaolo.com".

The disputed domain name <filialeintesacornaredo.com> was registered on October 31, 2016, and is not pointed to an active website.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name is almost identical to the Complainant's trademarks, as it reproduces the trademark INTESA with the mere addition of the terms "filiale" (the Italian translation for "branch") and "Cornaredo" (a small city close to Milan, Italy). The Complainant highlights that the expression "filiale Intesa Cornaredo" has an exact meaning, i.e. "the branch of Intesa located in Cornaredo", which is clearly referable to the business carried out by the Complainant under the trademark INTESA. It also points out that numerous prior decisions under the Policy have held that the mere addition of a descriptive term to a mark does not negate the confusing similarity between a trademark and a domain name.

The Complainant also states that the Respondent has no rights in the disputed domain name, since the Respondent has nothing to do with the Complainant and any use of the trademarks INTESA and INTESA SANPAOLO has to be authorized by the Complainant whilst the Respondent has not been authorized or licensed by the Complainant to use the disputed domain name. It also asserts that the disputed domain name does not correspond to the name of the Respondent and that, to the best of the Complainant's knowledge, the Respondent is not commonly known as "Filialeintesacornaredo". Lastly, the Complainant does not find any fair or noncommercial uses of the disputed domain name.

The Complainant submits that the Respondent registered the disputed domain name in bad faith because the trademarks INTESA and INTESA SANPAOLO are distinctive and well-known all around the world and the fact that the Respondent registered a domain name that is confusingly similar to them indicates that it had knowledge of the Complainant's trademarks at the time of the registration of the disputed domain name. In addition, the Complainant alleges that, if the Respondent had carried even a basic Google search in respect of the wordings "intesa" and "intesa sanpaolo", the same would have yielded obvious references to the Complainant.

As to the use of the disputed domain name, the Complainant asserts that the Respondent is not using it for any bone fide offerings and that the main purpose of the Respondent was to use the disputed domain name for phishing financial information in an attempt to defraud the Complainant's customers, namely the customers located in the area of Cornaredo.

The Complainant also states that, even considering that the Respondent is not currently using the disputed domain name, it could find no other possible legitimate use of the disputed domain name, and countless UDRP decisions confirmed that 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. The Complainant also asserts that the sole further scope of the Respondent might be to resell the disputed domain name to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, according to paragraph 4(b)(i) of the Policy.

The Complainant informs the Panel that the Complainant's attorneys sent a cease and desist letter to the Respondent asking for the voluntary transfer of the disputed domain name to the Complainant but, despite such communication, the Respondent did not comply with the above request.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the trademark INTESA based on the trademark registrations cited in Section 4 above.

The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark as it encompasses the trademark in its entirety with the mere addition of the terms "filiale" ("branch" in Italian) and "Cornaredo" (name of a city in Italy), which are not sufficient to exclude confusing similarity.

Therefore, the Panel finds that the Complainant has met the requirement prescribed by paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.

According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark INTESA or the disputed domain name.

Moreover, there is no evidence that the Respondent might have been commonly known by the disputed domain name or that it might have used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use before receiving any notice of the dispute.

Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In light of the prior registration and use of the Complainant's trademark INTESA in several countries of the world, including in Italy, where the Respondent is based, the Panel finds that the Respondent was or should have been aware of the Complainant's trademark at the time of the registration of the disputed domain name.

Moreover, the Respondent's actual knowledge of the trademark INTESA is suggested by the terms combined with the Complainant's trademark in the disputed domain names, i.e., "filiale" ("branch" in Italian), which refers to locations where the Complainant's activity is conducted, and "Cornaredo", corresponding to the name of an Italian city.

As to the use of the disputed domain name, it does not resolve to an active website at the time of the drafting of this Decision. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

In the case at hand, in view of the Respondent's registration of a domain name confusingly similar to the Complainant's well-known trademark, the absence of any documented right or legitimate interest of the Respondent and its failure to respond to the Complaint, the Panel finds that the Respondent's lack of use of the disputed domain name also amounts to bad faith.

In light of the above, the Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain name 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 name <filialeintesacornaredo.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: February 18, 2017

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