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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Milen Radumilo

Case No. D2018-2288

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 <tesasanpaolo.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2018. On October 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 10, 2018, 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 the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2018 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 October 17, 2018.

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 October 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2018.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on November 13, 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

It results from the Complainant’s undisputed allegations that the Complainant is the leading Italian banking group and among the top banking groups in the euro zone, with a market capitalization exceeding 37,2 billion euro. The Complainant claims to hold a market share of more than 17% in most Italian regions offering its services to approximately 11,9 million customers in Italy. Furthermore, the Complainant present in 25 countries, in particular in the Mediterranean area but also in Central Europe, the United States of America, Russian Federation, China and India.

It further results from the undisputed evidence provided by the Complainant that the Complainant is the registered owner of many trademarks consisting of the terms INTESA SANPAOLO, covering amongst others, Romania, where the Respondent is located, such as European Union trademark registration no. 5301999 INTESA SANPAOLO, filed on September 8, 2006 and granted on June 18, 2007, for services in classes 35, 36 and 38.

In addition, the Complainant owns a number of domain names containing the terms “intesasanpaolo”, such as <intesasanpaolo.com> or <intesasanpaolo.eu>.

It finally results from the WhoIs extract provided by the Complainant, that the Disputed Domain Name’s creation date is May 31, 2018.

According to the undisputed evidence provided by the Complainant, the Disputed Domain Name currently resolves to a website displaying sponsored links amongst others in Italian language for banking and financial services.

On August 7, 2018, 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. The Respondent did not comply with this request.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is confusingly similar to the INTESA SANPAOLO trademark in which the Complainant has rights because said trademark remains clearly recognizable within the Disputed Domain Name despite the deletion of the initial letters “I” and “N”.

The Complainant further contends that the Respondent has no prior rights or legitimate interests in the Disputed Domain Name. Furthermore, the Complainant states that (i) it has not licensed or otherwise authorized the Respondent or any other person to register the Disputed Domain Name; (ii) the Respondent is not commonly known by the Disputed Domain Name; and (iii) there is no evidence that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services.

Finally, the Complainant contends that the Respondent registered the Disputed Domain Name in bad faith. In particular, the Complainant states that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the Disputed Domain Name should be transferred or cancelled:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The Panel is satisfied that the registrant of record for the Disputed Domain Name is the Respondent and will, therefore, proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

It results from the evidence provided that the Complainant is the registered owner of various trademarks for INTESA SANPAOLO. Reference is made to EU trademark registration no. 5301999 INTESA SANPAOLO, filed on September 8, 2006 and granted on June 18, 2007, for services in classes 35, 36 and 38. This trademark registration largely predates the creation date of the Disputed Domain Name, which is May 31, 2018.

The Disputed Domain Name includes the trademark INTESA SANPAOLO almost in its entirety and merely deletes the two initial letters “IN”. This slight difference consisting in two out of 14 letters does not avoid a confusing similarity between the Disputed Domain Name and the Complainant’s trademark INTESA SANPAOLO, in particular regarding its wording and pronunciation. All the contrary, this Panel has no doubts that in a side-by-side comparison of the Disputed Domain Name and the relevant trademark INTESA SANPAOLO, the latter mark is clearly recognizable within the Disputed Domain Name.

In light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the Disputed Domain Name. In the Panel’s view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.

First, no evidence or information has been provided that could lead the Panel to conclude that the Respondent is commonly known by the Disputed Domain Name pursuant to paragraph 4(c)(ii) of the Policy. In addition, the Complainant has not authorized or licensed the Respondent or any other person to use the Disputed Domain Name.

Second, it results from the evidence provided by the Complainant that the Disputed Domain Name is currently connected to a website displaying sponsored links amongst others for banking and financial services in Italian language, which is the language of the country where the Complainant originates from. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy. In fact, this Panel shares the view of previous panels holding that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition - “WIPO Overview 3.0”).

It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. Since the Respondent failed to come forward with any allegations or evidence in this regard, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the Disputed Domain Name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the Disputed Domain Name’s registration and use in bad faith.

One of those circumstances are those specified in paragraph 4(b)(iv), i.e. where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

In the Panel’s view, the Respondent has intentionally registered the Disputed Domain Name which reproduces the Complainant’s trademark INTESA SANPAOLO almost identically. By the time the Disputed Domain Name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant’s trademark. The Complainant also proved that the Respondent is using the Disputed Domain Name to lead to a parking page, with sponsored links - amongst others - in Italian language and related to banking and financial services that represent the Complainant’s core business (and for which its trademarks are registered and used). These facts, confirm that the Disputed Domain Name is used to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Finally, the further circumstances surrounding the Disputed Domain Name’s registration and use confirm the findings that the Respondent has registered and is using the Disputed Domain Name in bad faith: (1) The Respondent originally used a privacy service hiding its identity; (2) The clear absence of rights or legitimate interests coupled with no reply to the warning letter and to the Complaint with conceivable or credible explanations of the Respondent’s conduct.

In the light of the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <tesasanpaolo.com> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: November 27, 2018

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