The disputed domain name 02INTESASANPAOLO.TOP is virtually identical and hence confusingly similar to the Complainant’s “INTESA SANPAOLO” trademark since it comprises the entirety of the Complainant’s well-known trademark “INTESA SANPAOLO”, with the mere addition of the number “02”, together with the inconsequential gTLD ".top", which may be ignored.
In the absence of any Response, the Panel accepts the Complainant's submission that the Respondent has no rights in respect of the disputed domain name because: (i) any use of the trademark “INTESA SANPAOLO” has to be authorized by the Complainant and nobody has been authorized or licensed by the Complainant to use the disputed domain name; (ii) 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 “02INTESASANPAOLO”; and (iii) the Complainant has not found any fair or non-commercial uses of the disputed domain name, which does not resolve to an active website.
As to bad faith, the Panel finds that the Complainant’s “INTESA SANPAOLO” trademark is distinctive and well known around the world so the Respondent’s registration of a confusingly similar domain name indicates that the Respondent was well aware of the Complainant’s trademark at that time and registered the domain name in bad faith.
The Panel does not accept the Complainant’s submission that there are present 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 the 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). Although this is a possibility, there is no evidence from which such a conclusion can be drawn.
However, the Panel does accept the Complainant’s submission that because the Respondent must have known of the Complainant’s well-known mark at the time of registration of the disputed domain name and because there is no conceivable use that could be made of the disputed domain name that would not amount to an infringement of the Complainant’s trade mark rights, this is a case in which the Respondent’s passive holding of the disputed domain name with knowledge of the Complainant’s trademark rights is evidence of both bad faith registration and use. See, in this regard, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and also the “WIPO Overview of WIPO Views on Selected UDRP Questions” at paragraph 3.2.
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