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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.	103614
Time of Filing	2021-03-02 09:29:36
Disputed domain name	ENTRA-INTESASANPAOLO.COM, SMS-INTESASANPAOLO.COM

Case Administrator
Name	Iveta Špiclová

Complainant
Organization	Intesa Sanpaolo S.p.A.
Authorized Representative
Organization	Intesa Sanpaolo S.p.A.

Respondent
Name	Liberato Monaldo

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 is the owner of several trademarks bearing the words “INTESA SANPAOLO” and “INTESA” in several countries, such as: - International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42; - EU trademark registration n. 5301999 “INTESA SANPAOLO”, applied on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38; - International trademark registration n. 793367 “INTESA”, granted on September 4, 2002 and duly renewed, in connection with class 36; - EU trademark registration n. 12247979 “INTESA”, filed on October 23, 2013 and granted on March 5, 2014, in connection with classes 9, 16, 35, 36 38, 41 and 42. The Complainant also owns an important domain names portfolio bearing the words “INTESA SANPAOLO” and “INTESA”, such as: “INTESA SANPAOLO” and “INTESA”: INTESASANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ, INTESA-SANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ and INTESA.COM, INTESA.INFO, INTESA.BIZ, INTESA.ORG, INTESA.US, INTESA.EU, INTESA.CN, INTESA.IN, INTESA.CO.UK, INTESA.TEL, INTESA.NAME, INTESA.XXX and INTESA.ME.

Identification of rights

The Complainant is the owner of several trademarks bearing the words “INTESA SANPAOLO” and “INTESA” in several countries, such as:

- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;

- EU trademark registration n. 5301999 “INTESA SANPAOLO”, applied on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;

- International trademark registration n. 793367 “INTESA”, granted on September 4, 2002 and duly renewed, in connection with class 36;

- EU trademark registration n. 12247979 “INTESA”, filed on October 23, 2013 and granted on March 5, 2014, in connection with classes 9, 16, 35, 36 38, 41 and 42.

The Complainant also owns an important domain names portfolio bearing the words “INTESA SANPAOLO” and “INTESA”, such as:

“INTESA SANPAOLO” and “INTESA”: INTESASANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ, INTESA-SANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ and INTESA.COM, INTESA.INFO, INTESA.BIZ, INTESA.ORG, INTESA.US, INTESA.EU, INTESA.CN, INTESA.IN, INTESA.CO.UK, INTESA.TEL, INTESA.NAME, INTESA.XXX and INTESA.ME.

Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT: The Complainant is an Italian banking group. It is among the top banking groups in the Euro zone, with a market capitalisation exceeding 35,1 billion euro, and the leader in Italy, in all business areas (retail, corporate and wealth management). Caused by a network of approximately 5,300 branches capillary and well distributed throughout the country, with market shares of more than 21% in most Italian regions, the Complainant offers its services to approximately 14,7 million customers. Also the Complainant has a strong presence in Central-Eastern Europe with a network of approximately 1.000 branches and over 7,1 million customers. Moreover, the international network specialised in supporting corporate customers is present in 26 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 Complainant uses, inter alia, the domain name <INTESASANPAOLO.COM> and its trademarks “INTESA SANPAOLO” and “INTESA” for its services and as company name. The disputed domain names <ENTRA-INTESASANPAOLO.COM> and <SMS-INTESASANPAOLO.COM> were registered on July 19, 2020 by the Respondent. Both are not connected to any website.

Factual Background

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is an Italian banking group. It is among the top banking groups in the Euro zone, with a market capitalisation exceeding 35,1 billion euro, and the leader in Italy, in all business areas (retail, corporate and wealth management). Caused by a network of approximately 5,300 branches capillary and well distributed throughout the country, with market shares of more than 21% in most Italian regions, the Complainant offers its services to approximately 14,7 million customers. Also the Complainant has a strong presence in Central-Eastern Europe with a network of approximately 1.000 branches and over 7,1 million customers. Moreover, the international network specialised in supporting corporate customers is present in 26 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 Complainant uses, inter alia, the domain name <INTESASANPAOLO.COM> and its trademarks “INTESA SANPAOLO” and “INTESA” for its services and as company name.

The disputed domain names <ENTRA-INTESASANPAOLO.COM> and <SMS-INTESASANPAOLO.COM> were registered on July 19, 2020 by the Respondent. Both are not connected to any website.


NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 names (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 names have been registered and are 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
As the Respondent did not file an administratively compliant Response, pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences therefrom as it considers appropriate. Thus, the Panel accepts the contentions of the Complainant as admitted by the Respondent. A. The disputed domain names are confusingly similar to the trademarks “INTESA SANPAOLO” and “INTESA” of the Complainant. The Complainant has, to the satisfaction of the Panel, shown that it has valid rights for the trademarks “INTESA SANPAOLO” and “INTESA”. The disputed domain names <ENTRA-INTESASANPAOLO.COM> and <SMS-INTESASANPAOLO.COM> both include the Complainant's trademarks in its entirety. Also, the addition of the descriptive terms “SMS” and “ENTRA” are not sufficient to distinguish the disputed domain names from the trademarks. Furthermore, the addition of the gTLD suffix “.COM” is not sufficient to escape the finding that the disputed domain names are confusingly similar to the Complainant's trademarks and do not change the overall impression of the designation as being connected to the trademarks of the Complainant. B. The Respondent has no rights or legitimate interests in respect of the disputed domain names within the meaning of the Policy. The Complainant has established a prima facie proof that the Respondent has no rights or legitimate interests in the disputed domain names, since the Respondent is neither known under the disputed domain names, nor is he a licensee of the Complainant or has the Complainant granted any permission or consent to use its trademarks in a domain name. In addition, the disputed domain names point to no website. Rather, only website maintenance notes are shown. This passive holding of the disputed domain names indicates that the Respondent lacks rights and legitimate interests in the disputed domain names. Summarised, there is no evidence for a use of the disputed domain names for any bona fide offer of goods or services or a legitimate non-commercial or fair use. C. The disputed domain names have been registered and are being used in bad faith within the meaning of the policy. The Complainant’s trademarks “INTESA SANPAOLO” and “INTESA” are widely known. Given the distinctiveness of the Complainant's trademarks and reputation, it can be concluded that the Respondent has registered the disputed domain names with full knowledge of the Complainant's trademarks. Also, the passive holding of the disputed domain names with presumed knowledge of the corresponding trademark rights of the Complainant indicates, that the Respondent has registered and uses the disputed domain names in bad faith.

Principal Reasons for the Decision

As the Respondent did not file an administratively compliant Response, pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences therefrom as it considers appropriate. Thus, the Panel accepts the contentions of the Complainant as admitted by the Respondent.

A. The disputed domain names are confusingly similar to the trademarks “INTESA SANPAOLO” and “INTESA” of the Complainant.

The Complainant has, to the satisfaction of the Panel, shown that it has valid rights for the trademarks “INTESA SANPAOLO” and “INTESA”.

The disputed domain names <ENTRA-INTESASANPAOLO.COM> and <SMS-INTESASANPAOLO.COM> both include the Complainant's trademarks in its entirety.

Also, the addition of the descriptive terms “SMS” and “ENTRA” are not sufficient to distinguish the disputed domain names from the trademarks.

Furthermore, the addition of the gTLD suffix “.COM” is not sufficient to escape the finding that the disputed domain names are confusingly similar to the Complainant's trademarks and do not change the overall impression of the designation as being connected to the trademarks of the Complainant.

B. The Respondent has no rights or legitimate interests in respect of the disputed domain names within the meaning of the Policy.

The Complainant has established a prima facie proof that the Respondent has no rights or legitimate interests in the disputed domain names, since the Respondent is neither known under the disputed domain names, nor is he a licensee of the Complainant or has the Complainant granted any permission or consent to use its trademarks in a domain name.

In addition, the disputed domain names point to no website. Rather, only website maintenance notes are shown. This passive holding of the disputed domain names indicates that the Respondent lacks rights and legitimate interests in the disputed domain names.

Summarised, there is no evidence for a use of the disputed domain names for any bona fide offer of goods or services or a legitimate non-commercial or fair use.

C. The disputed domain names have been registered and are being used in bad faith within the meaning of the policy.

The Complainant’s trademarks “INTESA SANPAOLO” and “INTESA” are widely known. Given the distinctiveness of the Complainant's trademarks and reputation, it can be concluded that the Respondent has registered the disputed domain names with full knowledge of the Complainant's trademarks.

Also, the passive holding of the disputed domain names with presumed knowledge of the corresponding trademark rights of the Complainant indicates, that the Respondent has registered and uses the disputed domain names in bad faith.

Decision
For all the reasons stated above, the Complaint is	Accepted
and the disputed domain name(s) is (are) to be
ENTRA-INTESASANPAOLO.COM	Transferred to Complainant
SMS-INTESASANPAOLO.COM	Transferred to Complainant

Panellists
Name	Dominik Eickemeier
Date of Panel Decision	2021-04-13

Publication of the Decision
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Dispute 103614

Panel Decision