WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. ROSPOT SRL / Silviu Tatut
Case No. DRO2013-0004
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 ROSPOT SRL of Timisoara, Romania / Silviu Tatut of Brasov, Romania.
2. The Domain Name and Registrar
The disputed domain name <bancaintesa.ro> is registered with ROTLD (the “Registry”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2013. On the same date, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On August 20, 2013, the Registry 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 August 23, 2013 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 26, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Romanian, and the proceedings commenced on September 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2013, as extended by the Center following correspondence of the Parties in this respect. The Respondent did not submit any formal response within the Response due date, although it filed two e-mail correspondence on August 23, 2013 and September 9, 2013, respectively.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 17, 2013. 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. Language of proceedings
As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
As such, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. As stated by previous UDRP panels, the Panel’s discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matter such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either of the parties in their abilities to articulate the arguments for the case. See, Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.
In the present case:
- The Registry informed the Center that the language of the Registration Agreement is Romanian;
- The Complaint was submitted in English and following the Language of Proceedings Notification sent by the Center the Complainant filed a request that the language of the proceedings be English arguing, inter alia, that the Complainant is an Italian company, while the Respondent is Romanian; hence the Complaint is drafted in English, as an international language comprehensible to both parties;
- The Respondent did not specifically object to English being the language of the proceedings, but transmitted two e-mails to the Center in Romanian;
According to the Rules, paragraph 11(a) and (b), based on the circumstances of this case, the Panel finds that the language of the proceeding should be English for the following reasons:
- The Complainant requested English to be the language of the administrative proceedings;
- English is the language used on the website at the disputed domain name;
- The Center sent all the communications in both languages, Romanian and English; and
- It should also be noted that the spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language. In the present case, although the Registration Agreement for the disputed domain name is in Romanian, the Complainant is not able to communicate in Romanian language (see in this respect Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002), while the Respondent seems to understand English since it replied within couple of hours from receipt of the Complaint from the Center arguing on the merits of the Complaint.
5. Factual Background
The following facts have been asserted by the Complainant and not refuted by the Respondent:
The Complainant is the leading Italian banking group and also one of the protagonists in the European financial arena. The Complainant is a company resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. The Complainant is among the top banking groups in the euro zone, with a market capitalization exceeding EUR 29.8 billion, and the undisputed leader in Italy, in all business areas (retails, corporate and wealth management). The Complainant has a strong presence in Central-Eastern Europe with a network of approximately 2,000 branches and over 8.5 million customers. Moreover, the international network specialized 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 of America, Russian Federation, China and India. In Romania, the Complainant operates through its local branch Intesa Sanpaolo Bank. The Complainant registered various trademarks and domain names comprising the word “intesa” or “banca intesa” (among others, International trademark registration No. 831572 BANCA INTESA, registered on June 24, 2004 and renewed until June 24, 2014; International trademark registration No. 793367 INTESA, registered on September 4, 2002 renewed until September 4, 2022; or Community trademark registration No. 2803773 INTESA, registered on August 7, 2002 and valid until August 7, 2022).
The disputed domain name was registered on October 24, 2005.
6. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the trademark BANCA INTESA and confusingly similar to the trademark INTESA owned by the Complainant. Also, the Complainant contends that the disputed domain name is also identical to the domain names registered by the Complainant.
Moreover, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant did not authorize or license the Respondent to use or register the disputed domain name.
The Complainant also argues that the disputed domain name was registered and is being used in bad faith. The fact that the Respondent has registered a domain name that is identical and confusingly similar to Complainant’s distinctive and well known trademark BANCA INTESA and INTESA, respectively, indicates that the Respondent had knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name. As regards the use of the disputed domain name, the Complainant argues that the disputed domain name is connected to a website sponsoring banking and financial services. Therefore, Internet users, while searching for information on the Complainant’s services, are confusingly led to the websites of the Complainant’s competitors, sponsored on the website connected to the disputed domain name. The Complainant concludes that the Respondent has registered and is using the disputed domain name in order to intentionally divert traffic away from the Complainant’s website.
The Respondent did not submit any formal response within the Response due date. However, on August 23, 2013 and September 9, 2013 the Respondent submitted e-mail communications in Romanian to the Center before the commencement of the proceeding and in reply to the notification of Complaint and commencement of administrative proceedings, respectively, asking for further information and for an extension of 15 days in order to contact a law firm to represent itself.
In the second email communication, the Respondent also argued that during the period 2004-2008, it purchased various domain names by “inregistrare-domenii.ro”. The Respondent contends that these domain names were purchased in order for certain projects to be developed. The disputed domain name was purchased in order to develop a project in the field of the Radio Frequency Identification (“RFID”) technology. The project also included a data base for all RFID chips inserted by veterinaries to domestic dogs and cats so that in case the domestic dog or cat was lost or stolen, it could be identified later on with a RFID reader and its data could be verified on-line by the founder or the police on the website “www.bancaintesa.ro”. The Respondent argues that in the meantime, it renounced to continue with this project since the demand in Romania for such services is limited and does not justify the project further being developed.
The Respondent contends that, the date of receipt of the Complaint, it verified the disputed domain name and found that it hosts a webpage containing information related to banks. The Respondent claims that the name server was modified without its agreement and the information currently found on the webpage to which the disputed domain name resolves appeared without its consent. According to the Respondent, the page to which the disputed domain name resolved contained only information of the name of the company that purchased the disputed domain name. The Respondent claims that it is not aware of the person making the changes to the webpage.
In addition to the above, the Respondent expressed its intention to amicably settle the dispute on condition that the Complainant offers a compensation for the disputed domain name.
Finally, the Respondent requested the Center a 15-days extension period to file the Response. Despite the fact that a shorter extension was granted, the Respondent did not file a formal Response.
7. Discussion and Findings
Noting the fact that the Respondent has not filed a formal Response, the Panel shall consider the issues referred to it, based on the statements and documents submitted to the Panel, including the communications from the Respondent referred to above. (“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 15(a) of the Rules.).
Applied to this case, 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 the trademark in 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
The Panel finds that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark BANCA INTESA as well as of the trademark INTESA (at international and European level). These trademarks are registered prior to the registration of the disputed domain name.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved.
Here, the disputed domain name fully incorporates the prior trademark BANCA INTESA on which the Complainant has proven rights. It is well accepted by UDRP panels that a country code Top-Level Domain (“ccTLD”) such as “.ro”, is to be ignored when assessing identity or confusing similarity of a trademark and a domain name (see, e.g., Bella Aktiengesellschaft v. Ganea Nicolae, WIPO Case No. DRO2002-0001; Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001).
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, 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; or
(ii) the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making 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 or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the disputed domain name rests with a complainant in, as far as making out a prima facie, case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Namely, the Panel notes that the Respondent is not commonly known by the disputed domain name and there is no evidence that the Respondent has any connection with the trademarks of the Complainant and the Complainant has not given the Respondent any permission to use such trademarks. Also, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent argues that it purchased the disputed domain name with the intention to develop a project in the field of RFID technology, namely to create a data base for all RFID chips inserted to domestic cats and dogs by veterinaries. However, the Respondent failed to support such arguments with any evidence. Hence, the Respondent has provided no tangible evidence to demonstrate its preparations to use the disputed domain name in a bona fide way.
In light of the above, the Panel finds that the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris, WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.”
The fact that the disputed domain name wholly incorporates the Complainant’s well-known trademark BANCA INTESA (see, for example, Banca Intesa S.p.A., v. Fahri Dogan Bato, WIPO Case No. D2006-0509), which is used in the Complainant’s line of business, indicates not only that the Respondent was aware of the Complainant’s business but also that it registered the disputed domain name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.
The current use of the disputed domain name where reference is made to various banking services or bank institutions (including bank institutions from Italy where the Complainant is incorporated), which operate in the same field of activity as the Complainant equals bad faith use of the disputed domain name.
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent offered to settle the present dispute on condition that the Complainant offers a compensation for the disputed domain name which seem to imply that an amount higher than the registration costs would be required;
- the Respondent has provided no evidence whatsoever of any actual or contemplated bona fide use of the disputed domain name;
- any use of the disputed domain name would lead the public to the conclusion that the disputed domain name and its connecting website is associated with the Complainant.
The Respondent asserts that the information on the website, to which the disputed domain name resolves, appeared without its approval. However, the Respondent has not provided any evidence to support this assertion. As such, the Panel is unable to accept these submissions based on the available record (for a similar finding see also TeamViewer GmbH v. Nigel Burke, WIPO Case No. DAU2012-0027).
Even if such affirmation would have been proven, as the owner and registrant of the disputed domain name, this Panel finds that the Respondent has the responsibility to ensure that the content of the webpage at the disputed domain name does not infringe any third party’s rights nor it is used in any improper manner (see Bharatiya Janata Party (BJP) v. Iahead, Vinay KM / WhoisGuard/ Namecheap.com / Enom Inc., WIPO Case No. D2011-0768). Under such circumstances, and as held by previous UDRP panel in Bharatiya Janata Party (BJP) v. Iahead, Vinay KM / WhoisGuard/ Namecheap.com / Enom Inc., supra, “respondents in previous cases have not been absolved of responsibility for links placed on their websites although such links may have been placed without the knowledge of the respondent. The ultimate responsibility is that of the respondent as the respondent is in contractual control of the disputed domain name and its website and is therefore responsible for the links on the website corresponding to the domain name. Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912”.
In addition, the Respondent has owned the disputed domain name since 2005 and, from the evidence, it can be inferred that the Respondent did not actively use the disputed domain name other than using it as a parking page. In this regard, the Respondent stated that it only found out that the disputed domain name was used to host a webpage with information specific to banks after receiving the Complaint. This statement indicates that the Respondent was not actually using the disputed domain name in connection with a bona fide offering of goods and services, but rather it passively held the disputed domain name. It is well established by UDRP panels that passive holding a domain name that incorporates a third party well-known mark under certain circumstances is recognized as bad faith registration and bad faith use of the domain name. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As such, the requirement in the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g., Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002). In this particular case, the above mentioned actions are considered as further evidence of registration and use in bad faith. If it would be true that the Respondent is not responsible for the current content of the website, it nonetheless results that it has passively held the disputed domain name for 8 years. The passive holding of the disputed domain name by the Respondent together with the circumstances of the case constitute, in the opinion of the Panel, bad faith registration and use (see also Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., supra; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055).
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
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 <bancaintesa.ro> be transferred to the Complainant.
Date: October 31, 2013