WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Domain Admin, PrivacyProtect.org / Banco Dinapoli

Case No. D2016-2159

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 Domain Admin, PrivacyProtect.org of Queensland, Australia / Banco Dinapoli of Giugliano, Italy.

2. The Domain Name and Registrar

The disputed domain name <bancodinapoli.online> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2016. On October 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 October 27, 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 October 28, 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 October 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2016.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on December 1, 2016. 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 Intesa Sanpaolo S.p.A. (“Intesa Sanpaolo”), the leading Italian banking group that is among the top banking groups in the euro zone, with a market capitalization exceeding EUR 35.6 billion. The Complainant is the leader in Italy, in all business areas (retail, corporate and wealth management). Through a network of approximately 4,000 branches capillary and well distributed all over the country, with market shares of more than 13 percent in most Italian regions, the Complainant’s Group offers its services to approximately 11.1 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1,200 branches and over 8.1 million customers. Moreover, the international network specialized in supporting corporate customers is present in 29 countries, in particular in the Mediterranean area, in the United States of America, the Russian Federation, China and India.

One of the Complainant’s subsidiaries is Banco di Napoli S.p.A., established in 1861 and operating as independent bank under the name “Banco di Napoli” until 2003. Following the acquisition of the bank at the end of 2002 by the Sanpaolo IMI group, in 2003 the bank changed its name into “Sanpaolo Banco di Napoli”.

The Complainant is the owner of the following registrations for trademarks consisting of the wording “Banco Di Napoli”:

- Italian trademark registration number 1,304,943 BANCO DI NAPOLI, filed on June 27, 1989 and granted on May 12, 1992, duly renewed, in classes 35 and 36;

- European Union (“EU”) trademark registration number 5,816,178 BANCO DI NAPOLI, filed on April 5, 2007 and granted on January 17, 2008, in classes 9, 16, 35, 36, 38 and 41;

- EU trademark registration number 6,067,532 BANCO DI NAPOLI, filed on July 4, 2007 and granted on June 6, 2008, in connection with classes 9, 16, 35, 36 38, 41 and 42;

- EU trademark registration number 6,068,795 BANCO DI NAPOLI, filed on July 4, 2007 and granted on May 21, 2008, in classes 9, 16, 35, 36 38, 41 and 42.

Moreover, the Complainant owns, among others, the following domain names incorporating the BANCO DI NAPOLI trademark: <bancodinapoli.com>, <bancodinapoli.net>, <bancodinapoli.org>, <bancodinapoli.info>, <bancodinapoli.biz>, <bancodinapoli.eu> and <bancodinapoli.it>, all of them connected to the official website “www.intesasanpaolo.com”.

The disputed domain name <bancodinapoli.online> was created on October 12, 2016 and, according to the evidence submitted by the Complainant, it resolves to a parking page displaying sponsored links related to banking and financial services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the Complainant’s BANCO DI NAPOLI trademark because it exactly reproduces that sign.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name and has nothing to do with the Complainant. The Complainant has never authorized or licensed the Respondent or any other person to register or use the disputed domain name.

Moreover, the disputed domain name does not correspond to the name of the Respondent, who is not commonly known as “bancodinapoli”.

Finally, the disputed domain name is not use in connection with a bona fide offering of goods or services.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

The Respondent’s bad faith registration is established by the fact that the Respondent was aware of the existence of the Complainant’s trademark at the time of the registration, given the distinctiveness and the renown of the Complainant’s trademark BANCO DI NAPOLI all over the word, and the reproduction in the disputed domain name of the BANCO DI NAPOLI trademark in its entirety.

Moreover the disputed domain name is not used for any bone fide offering. Indeed by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website (paragraph 4(b)(iv) of the Policy): in fact, the disputed domain name is connected to a website sponsoring, among others, banking and financial services, for whom the Complainant’s trademarks are registered and used. Consequently the Respondent has registered and is using the disputed domain name in order to intentionally divert traffic away from the Complainant’s website.

Moreover the Respondent’s commercial gain is evident since it is obvious that the Respondent’s sponsoring activity is being remunerated.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(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.

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s trademark BANCO DI NAPOLI; the only difference is the adjunction of the generic Top-Level Domain (“gTLD”) suffix “.online”.

With regards to the gTLD suffix “.online”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000−1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary technical component of the domain name and does not give it any distinctiveness.

Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken carefully note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:

(i) use or preparation 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 prior to notice of the dispute; or

(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making 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.

There is no evidence in the case file that the Respondent has any right or legitimate interest in the disputed domain name.

The Complainant states that there is and has never been a relationship between the Complainant and the Respondent. The Respondent is not affiliated or related to the Complainant, nor is a licensee of the Complainant and no authorization has been granted to the Respondent to use the BANCO DI NAPOLI trademark.

The Respondent is not generally known by the disputed domain name, and it has not acquired any trademark or service mark rights in the name or mark.

Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant’s trademark BANCO DI NAPOLI, diverting Internet users to a website where pay-per-click links exist and generate income for the Respondent.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to previous UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith.

In light of the evidence filed by the Complainant, the Panel finds that the Complainant’s trademark and activity are well established and well known throughout the world, in connection with the sector of banking services.

Accordingly in the Panel’s belief, the Respondent must have known about the Complainant’s existence and rights at the time of the registration of the disputed domain name <bancodinapoli.online>.

Indeed, the Respondent’s awareness of the Complainant’s activity and rights is proven by the fact that the Respondent registered a domain name confusingly similar to the Complainant’s trademark, that is connected to a website sponsoring services that compete with those offered by the Complainant, including links directly referred to the Complainant and/or to the Complainant’s competitors. The Respondent does not provide, nor is it apparent to the Panel, any reason why the disputed domain name was registered or acquired other than by reference to the Complainant. The registration of the disputed domain name in awareness of the Complainant’s activities and rights, in the absence of rights or legitimate interests, amounts to registration in bad faith.

As the Panel has found that the Respondent has no rights or legitimate interests in the disputed domain name, in line with other previous UDRP decisions (Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000−1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, given the circumstance of this case and in the absence of any rights or legitimate interests and lacking any contrary evidence by the Respondent, the Respondent’s registration of the disputed domain name confusingly similar to the Complainant’s worldwide well-known trademark, suggests opportunistic bad faith (see also MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412 and Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411).

Concerning the use of the disputed domain name, the Complainant has proven that it resolves to a website where sponsored links exist, offering banking, insurance and financial services and products from the Complainant and competitors of the Complainant.

In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s services and to obtain information about the Complainant’s activity, to another variety of advertising banking, insurance and financial products and services, by creating a likelihood of confusion with the Complainant’s trademark and business.

By exploiting the renown of the Complainant’s trademark, the Respondent diverts Internet users looking for the Complainant’s website and seeks to gain profit out of the disputed domain name by providing sponsored links to several other websites and obtaining revenues from the diverted traffic. According to numerous previous UDRP decisions, this Panel believes that such exploitation of the reputation of the Complainant’s trademarks is an indication of use in bad faith (besides the decisions mentioned by the Complainant, see also Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946; Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955; MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325; and Giorgio Armani S.p.A. v. Daulet Tussunbayev, WIPO Case No. D2011-2082).

Finally, the Panel finds that the use of a proxy registration service to avoid disclosing the name and contact details of the real owner of the disputed domain name, is also consistent with an inference of bad faith in registering and using the disputed domain name (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311).

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name <bancodinapoli.online> was registered and is being used 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 <bancodinapoli.online> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist
Date: December 15, 2016