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. 102547
Time of Filing 2019-06-27 09:24:47
Disputed domain name INTBANCASASANPAOLO.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization Intesa Sanpaolo S.p.A.
Authorized Representative
Organization Perani Pozzi Associati
Respondent
Name Milen Radumilo
Other Legal Proceedings
The Panel is not aware of any other legal proceedings.
Identification of rights
According to the evidence submitted by Complainant, Complainant is the owner of multiple trademarks including the European Union trademark INTESA SANPAOLO, number 005301999, registration date 18 June 2007, and the European Union trademark BANCA INTESA SANPAOLO, number 005302377, registration date 6 July 2007.
Factual Background
According to the provided information Complainant is a leading Italian banking group. It is among the top banking groups in the euro zone with a network of approximately 4,100 branches. Moreover, the international network specialized in supporting corporate customers is present in 26 countries, in particular in the Mediterranean area and those areas where Italian companies are most active.

The disputed domain name <intbancasanpaolo.com> was registered on 12 December 2018. The disputed domain name is used in connection with a pay-per-click website with automatically generated listings.

The trademark registrations of Complainant have been issued prior to the registration of the disputed domain name.

According to Complainant the disputed domain name is identical or confusingly similar to Complainant's trademarks as it is almost identical to Complainant’s well-known trademark BANCA INTESA SANPAOLO with the mere addition of letters “int”, probably a reference to the word “international”, a generic term.

According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name. Respondent is not related in any way with the business of Complainant. Nobody has been authorized or licensed by Complainant to use the disputed domain name.

According to Complainant the disputed domain name is registered in bad faith. Complainant’s trademarks INTESA SANPAOLO and BANCA INTESA SANPAOLO are distinctive and well-known all around the world. The fact that Respondent has registered a domain name that is confusingly similar to the trademarks indicates that Respondent had knowledge of Complainant’s trademarks at the time of registration of the disputed domain name.

Complainant submits that the disputed domain name is connected to a website sponsoring, among others, banking and financial services. Consequently, Internet users, while searching for information on Complainant’s services, are confusingly led to the websites of competitors of Complainant, sponsored on the websites connected to the disputed domain name.
 
NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

Rights
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 Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
Complainant has, to the satisfaction of the Panel, shown 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
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
In the opinion of the Panel the disputed domain name is confusingly similar to Complainant's trademarks (within the meaning of paragraph 4 (a)(i) of the Policy). Many UDRP decisions have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the complainant’s trademark or the principal part thereof in its entirety. The European Union trademarks of Complainant predate by many years the registration date of the disputed domain name. The principal part of Complainant’s European Union trademark BANCA INTESA SANPAOLO is incorporated in the disputed domain name with the deletion of the part “INTESA”. The top-level domain “com”, and the addition of the generic word “int” may be disregarded.

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its trademarks or to register the disputed domain name incorporating its marks. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights. Complainant has no relationship with Respondent.
Respondent did not submit any response. Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name (within the meaning of paragraph 4 (a)(ii) of the Policy).

The Panel finds that 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). The trademarks of Complainant have been existing for a long time and are well-known. Respondent knew or should have known that the disputed domain name included Complainant’s trademarks.

The Panel notes the undisputed submission of Complainant that the disputed domain name resolves to a website with automatically generated pay-per-click links leading to websites of other banking and financial services. The fact that such links may be generated automatically does not prevent a finding of bad faith. The Panel further notes that the disputed domain name incorporates the principal part of Complainant’s well-known trademarks in its entirety, which indicates, in the circumstances of this case, that Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
INTBANCASASANPAOLO.COM Transferred to Complainant
Panellists
Name Dinant T.L. Oosterbaan
Date of Panel Decision 2019-08-07
Publication of the Decision
Publish the Decision