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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.	103615
Time of Filing	2021-03-02 09:31:08
Disputed domain name	SICUREZZA-INTESASANPAOLO.COM

Case Administrator
Name	Iveta Špiclová

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

Respondent
Name	fabio capello

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 owns several trademarks, including the following trademark registrations: - International trademark n° 920896 for the word mark “INTESA SANPAOLO”, registered on March 7, 2007 for goods and services in classes 9, 16, 35, 36, 41 and 42; - European Union trademark n° 005301999 for the word mark “INTESA SANPAOLO”, registered on June 18, 2007, for services in classes 35, 36 and 38. Such trademarks are hereinafter individually and jointly referred to as the "INTESA SANPAOLO trademarks".

Identification of rights

The Complainant owns several trademarks, including the following trademark registrations:

- International trademark n° 920896 for the word mark “INTESA SANPAOLO”, registered on March 7, 2007 for goods and services in classes 9, 16, 35, 36, 41 and 42;

- European Union trademark n° 005301999 for the word mark “INTESA SANPAOLO”, registered on June 18, 2007, for services in classes 35, 36 and 38.

Such trademarks are hereinafter individually and jointly referred to as the "INTESA SANPAOLO trademarks".

Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT: The Complainant is a leading Italian banking group. It is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. The Complainant has a market capitalization exceeding 35.1 billion euro and has a network of approximately 5,300 branches distributed throughout Italy, with market shares of more than 21% in most Italian regions to provide its services to approximately 14.7 million customers. The Complainant also has a network of approximately 1,000 branches and over 7.1 million customers in Central and Eastern Europe and an international network specialized in supporting corporate customers in 26 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, the Russian Federation, the People's Republic of China and India. On February 3, 2020, the Respondent registered the disputed domain name, which links to a parking site sponsoring, inter alia, banking and financial services.

Factual Background

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

The Complainant is a leading Italian banking group. It is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.

The Complainant has a market capitalization exceeding 35.1 billion euro and has a network of approximately 5,300 branches distributed throughout Italy, with market shares of more than 21% in most Italian regions to provide its services to approximately 14.7 million customers. The Complainant also has a network of approximately 1,000 branches and over 7.1 million customers in Central and Eastern Europe and an international network specialized in supporting corporate customers in 26 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, the Russian Federation, the People's Republic of China and India.

On February 3, 2020, the Respondent registered the disputed domain name, which links to a parking site sponsoring, inter alia, banking and financial services.


No administratively compliant Response has been filed.

Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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 name (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 name has been registered and is 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
1. According to standard case law, the top level domain, in this case ".com" should be ignored when comparing the disputed domain name and the INTESA SANPAOLO trademarks. The Panel finds that the disputed domain name is confusingly similar to the "INTESA SANPAOLO" trademarks as the disputed domain name includes the INTESA SANPAOLO trademarks in its entirety, with the sole difference that the disputed domain name also includes the term "sicurezza", which means "security" in Italian. The addition of such generic term does not take away the similarity between the disputed domain name and the INTESA SANPAOLO trademarks. 2. The Panel finds that the Complainant successfully made a prima facie case that the Respondent has made no use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, neither is Respondent making a legitimate non-commercial or fair use of this disputed domain name, nor is Respondent commonly known under the disputed domain name. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant's allegations were not challenged by the Respondent. 3. In the absence of a Response, the Panel infers that the Respondent had the Complainant's "INTESA SANPAOLO" trademarks in mind when registering the disputed domain name, as it copied the entire "INTESA SANPAOLO" trademarks, while the trademarks are sufficiently distinctive and actually well-known, that is it likely that the Respondent was familiar with the trademarks when it registered that disputed domain name. Furthermore, the Panel is satisfied that the Respondent’s use of the disputed domain name which links to a website with sponsored links to, inter alia, the Complainant’s competitors, does not constitute bona fide offerings, but rather shows the Respondent’s intentional attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the "INTESA SANPAOLO" trademarks as to the source, sponsorship, affiliation, or endorsement of his website. For these reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that all three elements under the paragraph 4(a) of the Policy have been proved by the Complainant with respect to the disputed domain name.

Principal Reasons for the Decision

1. According to standard case law, the top level domain, in this case ".com" should be ignored when comparing the disputed domain name and the INTESA SANPAOLO trademarks. The Panel finds that the disputed domain name is confusingly similar to the "INTESA SANPAOLO" trademarks as the disputed domain name includes the INTESA SANPAOLO trademarks in its entirety, with the sole difference that the disputed domain name also includes the term "sicurezza", which means "security" in Italian. The addition of such generic term does not take away the similarity between the disputed domain name and the INTESA SANPAOLO trademarks.

2. The Panel finds that the Complainant successfully made a prima facie case that the Respondent has made no use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, neither is Respondent making a legitimate non-commercial or fair use of this disputed domain name, nor is Respondent commonly known under the disputed domain name. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant's allegations were not challenged by the Respondent.

3. In the absence of a Response, the Panel infers that the Respondent had the Complainant's "INTESA SANPAOLO" trademarks in mind when registering the disputed domain name, as it copied the entire "INTESA SANPAOLO" trademarks, while the trademarks are sufficiently distinctive and actually well-known, that is it likely that the Respondent was familiar with the trademarks when it registered that disputed domain name. Furthermore, the Panel is satisfied that the Respondent’s use of the disputed domain name which links to a website with sponsored links to, inter alia, the Complainant’s competitors, does not constitute bona fide offerings, but rather shows the Respondent’s intentional attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the "INTESA SANPAOLO" trademarks as to the source, sponsorship, affiliation, or endorsement of his website. For these reasons the Panel finds that the disputed domain name was registered and is being used in bad faith.

Therefore, the Panel finds that all three elements under the paragraph 4(a) of the Policy have been proved by the Complainant with respect to the disputed domain name.

Decision
For all the reasons stated above, the Complaint is	Accepted
and the disputed domain name(s) is (are) to be
SICUREZZA-INTESASANPAOLO.COM	Transferred to Intesa Sanpaolo S.p.A.

Panellists
Name	Alfred Meijboom
Date of Panel Decision	2021-05-20

Publication of the Decision
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Dispute 103615

Panel Decision