PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant’s contentions are as follows:
The domain name at issue is identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “GRUPPO INTESA SANPAOLO”. As a matter of fact, INTESAGROUPS-SANPAOLO.COM exactly reproduces the well-known trademark “INTESA SANPAOLO”, with the mere addition of the word “groups”, between the terms “INTESA” and “SANPAOLO”, (INTESAGROUPS-SANPAOLO). Therefore, the disputed domain name seems to refer also to the Complainant’s trademark “GRUPPO INTESA SANPAOLO”, “groups” being an English translation.
THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DOMAIN NAME
The Respondent has no rights in the disputed domain name, and any use of the trademarks “INTESA SANPAOLO” and “GRUPPO INTESA SANPAOLO” has not been authorized by the Complainant. Nobody has been authorized or licensed by the Complainant’s banking group to use the domain name at issue.
The disputed domain name does not correspond to the name of the Respondent and the Respondent is not commonly known as “INTESAGROUPS-SANPAOLO”.
There are no fair or non-commercial uses of the disputed domain name.
THE DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH
The disputed domain name INTESAGROUPS-SANPAOLO.COM was registered and is used in bad faith.
The Complainant’s trademarks “INTESA SANPAOLO” and “GRUPPO INTESA SANPAOLO” are distinctive and well known all around the world. The fact that the Respondent has registered a domain name that is confusingly similar to them indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. In addition, if the Respondent had carried out even a basic Google search in respect of the wordings “INTESA SANPAOLO” and “GRUPPO INTESA SANPAOLO”, the same would have yielded obvious references to the Complainant. This raises a clear inference of knowledge of the Complainant’s trademark on the part of the Respondent. Therefore, it is more than likely that the domain name at issue would not have been registered if it were not for Complainant’s trademark. This is a clear evidence of registration of the domain name in bad faith.
In addition, the disputed domain name is not used for any bona fide offerings of goods or services. More particularly, there are circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (par. 4(b)(i) of the Policy).
The disputed domain name is not used for any bona fide offerings, even if it is connected to a Registrar’s web page without particularly active contents. In fact, countless UDRP decisions confirmed that the passive holding of a domain name with knowledge that the domain name infringes another party’s trademark rights is evidence of bad faith registration and use (see, in this regard, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and also the panels’ consensus view on this point, as reflected in the “WIPO Overview of WIPO Views on Selected UDRP Questions” at paragraph 3.2.).
In particular, the consensus view of WIPO UDRP panellists is that passive holding of a disputed domain name may, in appropriate circumstances, be consistent with a finding of bad faith. However, panels have tended to make such findings in circumstances in which, for example, a complainant’s mark is well-known, and there is no conceivable use that could be made of the domain name that would not amount to an infringement of the complainant’s trade mark rights.
In the light of the above, the present case completely matches to the above requirements and the passive holding of the disputed domain name has to be considered a use in bad faith: «The very act of having acquired [the domain name] raises the probability of Respondent using [it] in a manner that is contrary to Complainant’s legal rights and legitimate interests. [...] To argue that Complainant should have to wait for some future use of the disputed domain names to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant’s goodwill and business. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the spectre of continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests» (Decision No. D2004-0615, Comerica Inc. v. Horoshiy, Inc., concerning the case of a bank).
The risk of a wrongful use of the domain name at issue is even higher in the present case, since the Complainant has already been targeted by some cases of phishing in the past few years. Such a practice consists of attracting the customers of a bank to a web page which imitates the real page of the bank, with a view to having customers disclose confidential information like a credit card or bank account number, for the purpose of unlawfully charging such bank accounts or withdrawing money out of them. It has happened that some clients of the Complainant have received e-mail messages asking, by the means of web pages which were very similar to the Complainant’s ones, for the sensitive data of the Clients, like user ID, password etc. Then, some of the Clients have been cheated of their savings. Also in the present case, the Complainant believes that the current owner registered the disputed domain name in order to induce and divert the Complainant’s legitimate customers to its website and steal their money.
Even excluding any “phishing” purposes or other illicit use of the domain name in the present case, anyway the Complainant could find no other possible legitimate use of INTESAGROUPS-SANPAOLO.COM. The sole further aim of the owner of the disputed domain name might be to resell it to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, according to par. 4(b)(i) («circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name»).
Lastly, it shall be noted that on August 29, 2019 the Complainant’s attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the domain name at issue. Despite such communication, the Respondent did not comply with the above request.
In the light of the above, the third and final element necessary for finding that the Respondent has engaged in abusive domain name registration and use has been established.
RESPONDENT:
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
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