Except for the space between “INTESA” and “SANPAOLO” (which for technical reasons cannot be represented in an internet domain name) and the suffix ".com" (which is also owed to the technical requirements of the domain name system), the only difference between Complainant’s trademark “INTESA SANPAOLO” and the disputed domain name is the is the descriptive prefix “CLIENTI-", which is insignificant to the overall impression. The Panel therefore finds the disputed domain name to be confusingly similar to the “INTESA SANPAOLO” mark in which Complainant has rights.
The Panel further finds that Complainant successfully submitted prima facie evidence that Respondent has neither made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain name, nor is commonly known under the disputed domain name. This prima facie evidence was not challenged by Respondent.
The Panel also finds that the Complainant successfully submitted prima facie evidence that Respondent was aware of the Complainant's rights in the well-known designation “INTESA SANPAOLO” when registering the disputed domain name. Again, this prima facie evidence was not challenged by the Respondent, which supports the conclusion that the disputed domain name was REGISTERED in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Given the fact that the disputed domain name only resolves to the registrar’s standard template website, the primary question of this proceeding is whether or not the Respondent has also USED the disputed domain name in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). The Complainant's case regarding such bad faith use is that the Respondent is effectively engaged in “passive holding” of the disputed domain name within the terms originally established by Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panel in Telstra noted that the question as to which circumstances of “passive holding” may constitute use in bad faith cannot be answered in the abstract. This question may only be determined on the basis of the particular facts of each case. A panel should give close attention to all the circumstances of the Respondent's behaviour, and a remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith (cf. Sanofi-aventis v. Gerard Scarretta, WIPO Case No. D2009-0229; Mount Gay Distilleries Limited v. shan gai gong zuo shi, CAC Case No. 100707; RueDuCommerce v. TOPNET, CAC Case No. 100617; INFRONT MOTOR SPORTS LICENCE S.r.l. v. VICTOR LEE, CAC Case No. 100385).
With this approach in mind, the Panel has identified the following circumstances as material to the issue in the present case:
(i) The Complainant's trademark has a history of more than 10 year (with an even longer history of its two predecessors Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.), a strong reputation, is highly distinctive and is widely known (particularly in Italy where the Respondent is located);
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, nor can the Panel conceive of any such good faith use;
(iii) taking into account the nature of the disputed domain name the Panel cannot conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law; and
(iv) finally, special care should be taken with regard to bank websites, as there is a continuous realistic risk that domain names comprising a bank’s name will be abused for phishing attacks to illegally obtain customer’s user credentials for online banking. In particular the prefix "CLIENTI" (which means “customers” in Italian) combined with the bank’s name “INTESA SANPAOLO” could mislead customers to (wrongly) believe that the disputed domain name is used to operate an online banking website for the Complainant’s customers.
Given all of these circumstances the Panel finds that the manner in which the disputed domain name is being used constitutes use in bad faith. The requirements of paragraph 4(a)(iii) of the Policy have therefore been met.
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