NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.
The Complainant made the following contentions:
The Complainant argues that it is more than obvious that the disputed domain name is identical or – at least – confusingly similar to the Complainant’s trademarks "INTESA SANPAOLO" and "INTESA". As a matter of fact, VERIFICA-INTESANPAOLO.COM exactly reproduces the Complainant’s well-known trademark "INTESA SANPAOLO", with the mere omission of letters "S" and "A" in the mark’s verbal portion "INTESA" and the addition of the Italian descriptive term "VERIFICA", meaning "VERIFICATION".
The Complainant further contends that the Respondent has no right or legitimate interest in respect of the disputed domain name. In particular, the Complainant states that the Respondent has no rights on the disputed domain name, and any use of the trademark "INTESA SANPAOLO" and "INTESA" has to be authorized by the Complainant, whereas nobody has been authorized or licensed by the Complainant to use the disputed domain name.
The disputed domain name does not correspond to the name of the Respondent and, to the best of the Complainant’s knowledge, the Respondent is not commonly known as "VERIFICA-INTESANPAOLO".
Lastly, the Complainant does not find any fair or non-commercial uses of the disputed domain name.
Turning to the bad faith argument, the Complainant asserts that its trademarks "INTESA" and "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 even a basic Google search in respect of the wordings "INTESA" and "INTESA SANPAOLO", the same would have yielded obvious references to the Complainant. The Complainant submitted an extract of a Google search in support of its allegation. 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 disputed domain name would not have been registered if it were not for the Complainant’s trademark. The Complainant argues that this is a clear evidence of registration of the domain name in bad faith.
In addition, the Complainant submits that the disputed domain name is not used for any bona fide offerings. More particularly, there are present circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name 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 (paragraph 4(b)(i) of the Policy).
The disputed domain name is not used for any bona fide offerings, even if it is not connected to any web site, at the time of filing the Complaint. The Complaint refers to numerous UDRP decisions which 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 (e.g. WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows, and also paragraph 3.2 of the WIPO Jurisprudential Overview 3.0). In particular, the Complainant infers that the consensus view of the WIPO UDRP panels 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.
As regards the first aspect, the Complainant argues it has extensively proved the renown of its trademarks. For what concern the second circumstance, the Complainant states that it is objectively not possible to understand what kind of use the Respondent could make with the disputed domain name which does exactly correspond to the Complainant’s trademarks and that is so similar to the Complainant’s domain names currently used by the Complainant to provide online banking services for enterprises.
The Complainant then quotes the reasoning from the WIPO Case No. D2004-0615, Comerica Inc. v. Horoshiy, Inc., and concludes that the present case completely matches the above requirements and that the passive holding of the disputed domain name has to be considered a use in bad faith.
Pursuant to the Complainant, the risk of a wrongful use of the disputed domain name 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 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, the sensitive data of the clients, like user ID, password etc. Then, some of the clients have been cheated of their savings.
Even excluding any "phishing" purposes or other illicit use of the disputed domain name, the Complainant could find any other possible legitimate use of VERIFICA-INTESANPAOLO.COM anyway. 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 paragraph 4(b)(i) of the Policy.
On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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