Language

This site serves for these domain disputes:

generic Top Level Domains and .co.nl, .co.no and .sx domains

Back to entry page - choose type of domain name dispute

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.	103905
Time of Filing	2021-07-02 09:35:10
Disputed domain name	UFFICIO-INTESASANPAOLO.COM

Case Administrator
Name	Denisa Rihova

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

Respondent
Organization	IceNetworks Ltd.

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, inter alia, the proprietor of the International trademark registration n. 920896 “INTESA SANPAOLO“, registered on March 7, 2007 and duly renewed, in several classes, among them class 36, in several countries, inter alia registered for Iceland.

Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT: The Complainant is a leading Italian banking group and is among the top banking groups in the euro zone, with a market capitalisation exceeding 47,0 billion euro. Thanks to a network of approximately 4,700 branches capillary and well distributed throughout the Country, with market shares of more than 19% in most Italian regions, the Group offers its services to approximately 13,5 million customers. Intesa Sanpaolo 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 25 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. On June 6, 2020, the Respondent registered the disputed domain name. The website under the disputed domain name was sponsoring, among others, banking and financial services, for whom the Complainant’s trademarks are registered and used. The Complainant sent a warning letter to Respondent for voluntarily transfer of the disputed domain name. A transfer did not take place.

Factual Background

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

The Complainant is a leading Italian banking group and is among the top banking groups in the euro zone, with a market capitalisation exceeding 47,0 billion euro. Thanks to a network of approximately 4,700 branches capillary and well distributed throughout the Country, with market shares of more than 19% in most Italian regions, the Group offers its services to approximately 13,5 million customers. Intesa Sanpaolo 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 25 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.

On June 6, 2020, the Respondent registered the disputed domain name. The website under the disputed domain name was sponsoring, among others, banking and financial services, for whom the Complainant’s trademarks are registered and used. The Complainant sent a warning letter to Respondent for voluntarily transfer of the disputed domain name. A transfer did not take place.


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
The Complainant has established the fact that it has valid trademark rights for “INTESA SANPAOLO”. The disputed domain name is confusingly similar to this trademark since the descriptive addition of the element “UFFICIO" (meaning „office“) does not have a decisive influence on the similarity of the disputed domain name to the trademark of the Complainant. The Panel therefore considers the disputed domain name to be confusingly similar to the trademark “INTESA SANPAOLO” in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks or designations confusingly similar to its trademarks. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name, since there is no indication that the Respondent is commonly known by the name “UFFICIO-INTESASANPAOLO” or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy. In view of the size of the company of the Italian Complainant, the Respondent, allegedly domiciled in Iceland, must have been aware of the Complainant and its trademarks when registering the disputed domain name. The Complainant has not authorized the Respondent to make use of a designation which is highly similar to its marks. This Panel does not see any conceivable legitimate use that could be made by the Respondent of this particular disputed domain name without the Complainant’s authorization. The circumstances of this case, in particular the website sponsored, among others, banking and financial services, also indicate that the Respondent registered and uses the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to its potential website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location. The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

Principal Reasons for the Decision

The Complainant has established the fact that it has valid trademark rights for “INTESA SANPAOLO”. The disputed domain name is confusingly similar to this trademark since the descriptive addition of the element “UFFICIO" (meaning „office“) does not have a decisive influence on the similarity of the disputed domain name to the trademark of the Complainant.

The Panel therefore considers the disputed domain name to be confusingly similar to the trademark “INTESA SANPAOLO” in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

The Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to the Respondent to use its trademarks or designations confusingly similar to its trademarks. Furthermore, the Respondent has no rights or legitimate interests in the disputed domain name, since there is no indication that the Respondent is commonly known by the name “UFFICIO-INTESASANPAOLO” or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.

The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.

In view of the size of the company of the Italian Complainant, the Respondent, allegedly domiciled in Iceland, must have been aware of the Complainant and its trademarks when registering the disputed domain name. The Complainant has not authorized the Respondent to make use of a designation which is highly similar to its marks. This Panel does not see any conceivable legitimate use that could be made by the Respondent of this particular disputed domain name without the Complainant’s authorization.

The circumstances of this case, in particular the website sponsored, among others, banking and financial services, also indicate that the Respondent registered and uses the disputed domain name primarily with the intention of attempting to attract, for commercial gain, Internet users to its potential website or other online locations, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such website or location, or of a product or service on such website or location. The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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

Panellists
Name	Dietrich Beier
Date of Panel Decision	2021-08-06

Publication of the Decision
Publish the Decision

Print this form

ADR.eu

Dispute 103905

Panel Decision