Pursuant to Rule 15 of the UDRP Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP Policy, the UDRP Rules, and any rules and principles of law that the Panel deems applicable.
Paragraph 4(a) of the UDRP Policy provides the following threshold for the Complainant to meet in order to divest the Respondent of the disputed domain name:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
It is therefore incumbent on the Complainant the onus of meeting the above threshold. The evidentiary standard under the UDRP proceedings is the balance of probabilities and, on that basis, the Panel will now proceed to determine each of the three Policy elements in turn.
I. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns trade mark rights in “INTESA” since 2002.
The disputed domain name is <ltesa-spa.com>, and the Complainant’s trade mark is INTESA.
The Panel notes that the Complainant’s trade mark INTESA is nearly wholly incorporated into the disputed domain name, the mere differences being the substitution of the letter “i” with the letter “l” in the word “Itesa”, and the addition of the abbreviation “SPA”, which stands for "Società per Azioni” (in the Italian language) or “joint stock company” in the English language (Source: Collins dictionary https://www.collinsdictionary.com/ which coincidentally or not, is the Complainant’s legal form. In the Panel’s view, these differences have no material impact on the confusing similarity assessment, such that the disputed domain name clearly evokes the Complainant’s trade mark INTESA.
The Panel therefore finds that the Complainant has met the requirement under paragraph 4(a)(i) of the UDRP Policy.
II. Rights or Legitimate Interests
The Respondent has defaulted in these UDRP proceedings. Nevertheless, the Panel is empowered to draw adverse inferences from the Respondent’s silence (UDRP Rule 14 (b)).
The Panel notes that the Complainant firmly denies any affiliation and/or association with, or authorisation for, the Respondent of any nature. Moreover, the Complainant argues that the Respondent is not known by the disputed domain name; and that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name.
The Respondent has submitted no evidence to refute any of the Complainant’s assertions. On balance, the Panel considers the available evidence to lend credence to the Complainant’s contentions.
The Panel therefore finds that the Complainant has succeeded under paragraph 4(a)(ii) of the UDRP Policy.
III. Registered and Used in Bad Faith
Registration
The following facts are compelling evidence to this Panel that the disputed domain name was registered in bad faith:
• The Complainant has been in operation since at least 2007, with a major presence in Italy, where the Respondent appears to be based;
• The Complainant operates its activities through the domain name <intesasanpaolo.com>, which was registered in 2006;
• The disputed domain name <ltesa-spa.com> was registered on 7 February 2021; and
• UDRP panels have consistently found that a typo of a widely-known trade mark can by itself create a presumption of bad faith (WIPO Panel Views on Selected UDRP Questions, Third Edition, paragraph 3.1.4 (“WIPO Jurisprudential Overview 3.0”)), and the Panel accepts that the Complainant’s trade marks are widely known.
Use
The Complainant alleges that the Respondent has engaged in the conduct described in paragraph 4(b)(iv) of the UDRP Policy, which provides as follows:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.”
At the time of writing, the disputed domain name does not resolve to an active website (the Respondent’s website).
The Panel refers to paragraph 3.3 of the WIPO Jurisprudential Overview 3.0 to determine whether or not there has been bad faith use of the disputed domain name. UDRP panels have found that the non-use of a domain name may support a finding of bad faith under certain circumstances. Factors that have supported such finding include, but are not limited to (i) the degree of distinctiveness or reputation of the complainant’s trade mark; (ii) the respondent’s default; (iii) the respondent’s concealing of its identity; and (iv) the implausibility of any good faith use to which the domain name may be put.
The Panel considers that all four factors listed above are relevant and present in these UDRP proceedings. In particular, the Panel notes the Complainant’s claim that the Respondent’s website has been used for fraudulent purposes. The Panel cannot disregard this possibility given the above findings, and therefore views as implausible any good faith use of the disputed domain name.
The Panel therefore finds that the Complainant has succeeded under paragraph 4(a)(iii) of the UDRP Policy.
In view of the above finding, the Panel will not make a determination on the Complainant’s alternative claim under paragraph 4(b)(i) of the UDRP Policy.
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