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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	102065
Time of Filing	2018-06-29 13:59:51
Disputed domain name	BANCAINTESA.SITE

Case Administrator
Name	Iveta Špiclová

Complainant
Organization	Intesa Sanpaolo S.p.A.
Authorized Representative
Organization	Perani Pozzi Associati

Respondent
Organization	Whois Privacy Corp.

Other Legal Proceedings
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

Identification of rights
The Complainant owns several trademarks, including - EU trademark registration nr. 779793 “BANCA INTESA”, registered on November 15, 1999 for goods and services in classes 9, 16, 36, 38, 41 and 42; - International trademark registration nr. 831572 “BANCA INTESA”, registered on June 24, 2004 for services in class 36; and - Italian trademark registration nr 1235313 “BANCA INTESA”, registered on December 18, 2009 for goods and services in classes 9, 16, 36, 38, 41 and 42 (hereinafter the "Trademarks").

Identification of rights

The Complainant owns several trademarks, including
- EU trademark registration nr. 779793 “BANCA INTESA”, registered on November 15, 1999 for goods and services in classes 9, 16, 36, 38, 41 and 42;
- International trademark registration nr. 831572 “BANCA INTESA”, registered on June 24, 2004 for services in class 36; and
- Italian trademark registration nr 1235313 “BANCA INTESA”, registered on December 18, 2009 for goods and services in classes 9, 16, 36, 38, 41 and 42 (hereinafter the "Trademarks").

Factual Background
The Complainant is a leading Italian banking group. It is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.. The Complainant has a market capitalization exceeding 42.3 billion euro, provides its services approximately to 12 million customers and is the leader in Italy with a network of approximately 4,600 branches and a market share of more than 17% in most Italian regions. The Complainant also has a network of approximately 1.100 branches and over 7,7 million customers in Central-Eastern Europe and an international network specialized in supporting corporate customers in 25 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 disputed domain name was registered on May 19, 2018 and is presently passively held.

Factual Background

The Complainant is a leading Italian banking group. It is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.. The Complainant has a market capitalization exceeding 42.3 billion euro, provides its services approximately to 12 million customers and is the leader in Italy with a network of approximately 4,600 branches and a market share of more than 17% in most Italian regions. The Complainant also has a network of approximately 1.100 branches and over 7,7 million customers in Central-Eastern Europe and an international network specialized in supporting corporate customers in 25 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 disputed domain name was registered on May 19, 2018 and is presently passively held.


No administratively compliant Response has been filed.

Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Principal Reasons for the Decision
a. According to standard case law, the top level domain, in this case “.site” should be ignored when comparing the disputed domain name and the trademarks the Complainant relies on. Consequently, the Panel finds that the disputed domain name is identical to the Trademark. b. The Panel is satisfied that the Respondent was not licensed or authorized to use the Trademark in the disputed domain name. The Panel further finds that the Respondent has successfully submitted prima facie evidence that the Respondent has made no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate non-commercial or fair use of the disputed domain name. The Panel therefore finds the Respondent has no rights or legitimate interests in respect of the disputed domain name. c. In the absence of a Response, the Panel infers that the Respondent had the Trademark in mind when registering the disputed domain name, as the disputed domain name copied the entire Trademark, while the Trademark is sufficiently distinctive that is it likely that the Respondent was familiar with the Trademark when it registered the disputed domain name. Further, the Respondent has not responded to the Complainant’s attorney’s cease and desist letter, asking for the voluntary transfer of the disputed domain name, while the Respondent was also not using the disputed domain name for any bona fide purpose. For these reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that all three elements under the paragraph 4(a) of the Policy have been proved by the Complainant.

Principal Reasons for the Decision

a. According to standard case law, the top level domain, in this case “.site” should be ignored when comparing the disputed domain name and the trademarks the Complainant relies on. Consequently, the Panel finds that the disputed domain name is identical to the Trademark.

b. The Panel is satisfied that the Respondent was not licensed or authorized to use the Trademark in the disputed domain name. The Panel further finds that the Respondent has successfully submitted prima facie evidence that the Respondent has made no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate non-commercial or fair use of the disputed domain name. The Panel therefore finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.

c. In the absence of a Response, the Panel infers that the Respondent had the Trademark in mind when registering the disputed domain name, as the disputed domain name copied the entire Trademark, while the Trademark is sufficiently distinctive that is it likely that the Respondent was familiar with the Trademark when it registered the disputed domain name. Further, the Respondent has not responded to the Complainant’s attorney’s cease and desist letter, asking for the voluntary transfer of the disputed domain name, while the Respondent was also not using the disputed domain name for any bona fide purpose. For these reasons the Panel finds that the disputed domain name was registered and is being used in bad faith.

Therefore, the Panel finds that all three elements under the paragraph 4(a) of the Policy have been proved by the Complainant.

Decision
For all the reasons stated above, the Complaint is	Accepted
and the disputed domain name(s) are to be
BANCAINTESA.SITE	Transferred to Intesa Sanpaolo S.p.A.

Panellists
Name	Alfred Meijboom
Date of Panel Decision	2018-08-06

Publication of the Decision
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Dispute 102065

Panel Decision