WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Milen Radumilo
Case No. D2016-2618
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 <intesansanpaolo.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2016. On December 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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.1 The Center sent an email communication to the Complainant on December 28, 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 29, 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 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 26, 2017.
The Center appointed Erica Aoki as the sole panelist in this matter on February 9, 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.
The language for the present administrative proceeding is English.
4. Factual Background
The Complainant is one of the leading Italian banking groups and is the result of the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.
The Complainant is the owner of several trademark registrations for INTESA SANPAOLO, among others the International Trademark Registration no. 920896, registered in March 2007. The Complainant is also the owner of the following domain names containing "Intesa Sanpaolo": <intesasanpaolo.com>, as well as in the Top-Level Domains ("TLDs") ".org", ".eu", ".info", ".net", ".biz" and <Intesa-sanpaolo.com>, also in the TLDs ".org", ".eu", ".info", ".net", ".biz", all connected to the official website "www.intesasanpaolo.com".
The disputed domain name was registered on November 30, 2016, and resolves to a Pay-Per-Click ("PPC") parking site featuring links to other sites related to the Complainant's business.
5. Parties' Contentions
The Complainant is among the top banking groups in Europe, with a market capitalisation exceeding EUR 35.1 billion, and the undisputed leader in Italy in several business areas (retail, corporate and wealth management). With a network of approximately 4,000 branches capillary and well distributed throughout the country, with market shares of more than 13% in most Italian regions, the Complainant offers its services to approximately 11.1 million customers.
The Complainant has a strong presence in Central-Eastern Europe with a network of approximately 1,300 branches and over 7.9 million customers. Moreover, the international network specialised in supporting corporate customers is present in 29 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States, Russia, China and India.
The Complainant contends that the disputed domain name is identical to the Complainant's marks INTESA SANPAOLO with the mere addition of the letter "n" before the second verbal portion "sanpaolo".
Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in relation to the disputed domain name. The Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant's mark in connection with a website or for any other purpose. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services, is not generally known by the disputed domain name, and has not acquired any trademark or service mark rights in that name or mark.
The Complainant contends that no fair or non-commercial use of the domain name can be found in this case.
The Complainant also contends that the Respondent registered and used the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In the Panel's view, the Complainant has satisfied the requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in respect of which the Complainant has rights; and
(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
Based on the facts presented by the Complainant, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights, as required under paragraph 4(a)(i) of the Policy. The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark, as the disputed domain name is nearly identical to the Complainant's INTESA SANPAOLO marks, adding one additional letter.
Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds the following on the record in this proceeding:
- The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain name;
- The Respondent's knowledge of the Complainant's right is presumed since INTESA SANPAOLO is generally regarded as a well-known trademark in Europe particularly in the banking industry;
- The Respondent is in no way connected with the Complainant and has no authorization to use any of the Complainant's trademarks; and
- There is no evidence that the Respondent is or was commonly known by the disputed domain name as an individual, business or other organization.
Thus, in the Panel's view, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Further, the Panel notes that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use activity.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
In the Panel's view, there is no doubt that the Respondent was aware of the Complainant's rights in the INTESA SANPAOLO marks at the time the disputed domain name was registered since the links at the website are related to the Complainant or its business area, indicating that such registration was made in bad faith.
Furthermore, the Panel finds that the Respondent's use of the disputed domain name for PPC links involves the deception of Internet users that are seeking the Complainant's products, and the diversion of Internet users to other sites, including those of the Complainant's competitors. Thus, under the circumstances of this case, the Panel finds that the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, under paragraph 4(a)(iii) of the Policy.
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 <intesansanpaolo.com> be transferred to the Complainant.
Date: February 16, 2017
1 The Complaint was filed naming the privacy shield reflected in the WhoIs at the time of submission as the Respondent.