WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Kara Turner
Case No. D2018-0639
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A. of Turin, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy.
The Respondent is Kara Turner of West Des Moines, Iowa, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <31903intesasanpaolo.com> is registered with Eranet International Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 22, 2018. On March 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2018, 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 March 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 18, 2018.
The Center appointed Torsten Bettinger as the sole panelist in this matter on April 23, 2018. 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 describes itself as the leading Italian banking group and one of the top banking groups in the Eurozone, with a market capitalization exceeding EUR 46,4 billion. It has a network of approximately 4,800 branches and a strong presence in Central-Eastern Europe with a network of approximately 1,100 branches and over 7,6 million customers. The Complainant is present in 26 countries, including the United States, the Russian Federation, China and India.
The Complainant is the owner, among others, of the following registrations for the trademarks INTESA SAN PAOLO:
- International Trademark registration No. 920896 INTESA SANPAOLO, registered on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42, designating Australia, China, United States, Japan, Russian Federation and others countries;
- European Union Trade Mark registration No. 5301999 INTESA SANPAOLO, filed on September 8, 2006 and registered on June 18, 2007 for classes 35, 36 and 38;
- European Union Trade Mark registration No. 5421177 INTESA SANPAOLO & device, filed on October 27, 2006 and registered on November 5, 2007 for classes 9, 16, 35, 36, 38, 41 and 42.
In addition, the Complainant is the owner of the following domain names <intesasanpaolo.com>, <intesasanpaolo.info>, <intesasanpaolo.org>, <intesasanpaolo.biz>, <intesa-sanpaolo.com>, <intesa-sanpaolo.info>, <Intesa-sanpaolo.org> and <intesa-sanpaolo.biz>.
The Respondent registered the disputed domain name on January 26, 2018. The Complainant provided evidence that the website available under the disputed domain name had been identified as a dangerous website by Google Safe Browsing and showed a warning to users when they attempted to navigate to the website. Currently, the disputed domain name does not resolve to an active website.
5. Parties' Contentions
The Complainant asserts that disputed domain name is confusingly similar to the Complainant's INTESA SANPAOLO trademark as it incorporates the Complainant's trademark in its entirety and that the addition of the numbers "31903" does not distinguish the disputed domain name from the included mark as the number is used by the Complainant to identify its online banking services for the enterprises.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- it has never licensed nor otherwise permitted the Respondent to use the INTESA SANPAOLO mark or use a domain name that incorporates or is similar to the INTESA SANPAOLO mark;
- to the best of the Complainant's knowledge, the Respondent is not commonly known as INTESA SANPAOLO;
- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that the Respondent was aware of the Complainant's trademarks at the time of registration of the disputed domain name as the trademark INTESA SANPAOLO is distinctive and
well-known around the world.
The Complainant further contends that the Respondent has registered the disputed domain name primarily for the purpose of illicit phishing activities as Google Safe Browsing identified the website under the disputed domain name as a dangerous website and showed a warning to users when they attempt to navigate to the website.
The Complainant also argues that the mere passive holding of the disputed domain name with the intent to infringe a third party's trademark may be considered bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 (<guiness.com>); Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 (<ansellcondoms.com>); Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843 (<dixons-online.net> and <dixons-online.org>); AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 (<attinternet.com> and <attuniversal.com>); BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480 (<kool.com>); see also section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
In this case, the disputed domain name contains the Complainant's trademark INTESA SANPAOLO in its entirety.
The addition of numbers "31903" to the disputed domain name is not sufficient to distinguish the disputed domain name from the Complainant's trademark. This is especially true in this case where the numbers themselves are used by the Complainant as an online identification number and therefore have a specific relationship to the Complainant's mark, brand and services.
Furthermore, it has been long established under the UDRP decisions that the specific generic Top-Level Domain ("gTLD") designation, such as ".com", is typically not taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons, the Panel concludes that the disputed domain name <31903intesasanpaolo.com> is confusingly similar to the Complainant's trademark INTESA SANPAOLO, in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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."
The Complainant has asserted that it never licensed or permitted the Respondent to use its INTESA SANPAOLO trademark, that the Respondent has no trademark rights that correspond to the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name.
Furthermore, the Complainant has provided evidence that Google Safe Browsing identified the website under the disputed domain name as a dangerous website and showed a warning to users when they attempt to navigate to the website.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Given that the Respondent has failed to come forward with any evidence to refute the Complainant's prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has also satisfied the second element of the Policy set forth by paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed 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 documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
The Panel notes the Complainant's allegations on phishing and that the Complainant claims that the disputed domain name was registered with the aim to sell it to the Complainant.
The Panel notes that, whether or not paragraph 4(b)(i) applies, in circumstances such as the present case the passive holding of the disputed domain name is sufficient evidence of bad faith.
Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by the Respondent, it is by now well accepted that the passive holding of a website, in certain circumstances, can constitute bad faith use under the Policy. See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and WIPO Overview 3.0, section 3.3.
While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:
(i) the degree of distinctiveness or reputation of the complainant's mark,
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,
(iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and
The circumstances of the present case are sufficiently similar to those present in Telstra Corporation Limited v. Nuclear Marshmallows, supra caseto establish bad faith in passive holding of the disputed domain name.
The Complainant's highly distinctive trademark INTESA SANPAOLO is long established and widely known. The trademark INTESA SANPAOLO is distinctive and has no generic or descriptive meaning.
The Panel notes that the disputed domain name comprises the Complainant's mark INTESA SANPAOLO and the numbers "31903", which are used by the Complainant to identify its online banking service for enterprises.
It is therefore inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademarks INTESA SANPAOLO.
Given that the Complainant's mark INTESA SAN PAOLO is solely connected with the Complainant and does not have any generic or descriptive meaning, the disputed domain name is also not susceptible to be used in a good faith generic or descriptive sense.
The Complainant provided evidence that Google Safe Browsing identified the website under the disputed domain name as a dangerous website and showed a warning to users when they attempt to navigate to the website.
Therefore, though not precisely within the example of evidence in bad faith set out in paragraph 4(b)(i) of the Policy, the Panel concludes that the registration and use of the disputed domain name constitutes bad faith registration and use, and that therefore the Complainant has satisfied its burden on 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 <31903intesasanpaolo.com> be transferred to the Complainant.
Date: May 4, 2018