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. 102792
Time of Filing 2020-02-04 09:14:50
Disputed domain name INTESASANPAOLOSPA.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization Intesa Sanpaolo S.p.A.
Authorized Representative
Organization Perani Pozzi Associati
Respondent
Organization Johnwhyte Concept
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 the following International registered trademark:

INTESA SANPAOLO, word mark, registered on 7 March, 2007 under number 920896 in use classes 9, 16, 35, 36, 38, 41 and 42 and designated in respect of 68 territories.

The Complainant is also the owner of the following European Union registered trademark:

INTESA SANPAOLO, word mark, registered on 18 June, 2007 under number 5301999 in use classes 35, 36 and 38.

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

The Complainant is a leading Italian banking group which resulted from the merger on January 1, 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two major Italian banking groups. The Complainant is among the top banking groups in the Euro Zone, with a market capitalisation exceeding EUR 41.1 billion. In Italy, the Complainant’s business features a network of approximately 3,800 branches distributed throughout the country, with market shares of more than 15% in most Italian regions and approximately 11.8 million customers. It also maintains an international network specialised in supporting corporate customers in 25 countries, in particular in the Mediterranean area and the United States of America, Russia, China and India.

The Complainant is the owner of a variety of registered trademarks for the words INTESA SANPAOLO predating the disputed domain name, together with a variety of registered domain names bearing this sign in different top-level domains which point to the Complainant’s primary domain name <intesasanpaolo.com> at which its corporate website is found.

The disputed domain name was registered on 3 August, 2019 and replicates the Complainant’s well-known INTESA SANPAOLO trademark along with the letters “SPA” which represent the Complainant’s legal form, “Società per Azioni”, meaning “limited company” in Italian. The disputed domain name is therefore confusingly similar to the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. No person such as the Respondent has been authorized or licensed by the Complainant or its banking group to use the disputed domain name. The disputed domain name does not correspond to the name of the Respondent and, to the best of the Complainant's knowledge, the Respondent is not commonly known as “INTESASANPAOLOSPA”. The Complainant has not identified any fair or non-commercial use of the disputed domain name.

The disputed domain name was registered and is being used in bad faith. The Complainant’s INTESA SANPAOLO trademark is distinctive and well-known globally. The fact that the Respondent has registered a domain name that is confusingly similar thereto indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. If the Respondent had carried out even a basic Google search in respect of the Complainant’s marks, this would have yielded obvious references to the Complainant. It is more than likely that the disputed domain name would not have been registered if it were not for the Complainant’s trademark.

The disputed domain name is not used for any bona fide offering of goods or services and is passively held within the meaning of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and the related consensus view of UDRP panels. The Complainant has proved the renown of its trademarks and it is not possible to understand objectively what legitimate use the Respondent could make of a domain name clearly representing the Complainant’s marks and business name. The Respondent may have registered the disputed domain name either to sell it to the Complainant for an amount in excess of its out-of-pocket costs or for use in a phishing attack, given that such attacks using similar domain names have targeted the Complainant and its customers in recent years.

On September 19, 2019, the Complainant’s representatives sent a cease and desist letter to the Respondent asking for the voluntary transfer of the domain name at issue. Despite such communication, the Respondent did not comply with the above request.
 
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 Panel is satisfied that the disputed domain name contains the Complainant’s INTESA SANPAOLO registered trademark in its entirety coupled with the generic word or letters “spa”. The addition of such word or letters to the Complainant’s mark does not avoid a finding of confusing similarity under the Policy. The Complainant’s trademark is fully recognizable in the disputed domain name as the first and most dominant element thereof. Furthermore, the fact that the Complainant’s corporate name is represented by its INTESA SANPAOLO mark coupled with the three letters “SpA”, which denotes “Società per Azioni”, serves to enhance the possibility of the already apparent confusion. The generic Top-Level Domain, in this case “.com”, is typically disregarded for the purposes of the comparison exercise.

The Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant submits that neither it nor its banking group has authorized or licensed the Respondent to use the disputed domain name, that the disputed domain name does not correspond to the name of the Respondent and that, to the best of the Complainant's knowledge, the Respondent is not commonly known as “INTESASANPAOLOSPA”. The Complainant adds that it has not identified any fair or non-commercial use of the disputed domain name and notes that the Respondent does not appear to be using the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent failed to file a Response in this case and accordingly has provided no submissions or evidence which would serve to rebut the Complainant’s prima facie case. Furthermore, the Respondent did not reply to the Complainant’s cease and desist letter providing any indication of rights or legitimate interests in the disputed domain name. Accordingly, the Respondent having failed to rebut the Complainant’s prima facie case, and there being no facts or circumstances on the present record indicating that the Respondent may otherwise have rights or legitimate interests in the disputed domain name, the Panel finds that the Respondent has no such rights or legitimate interests therein.

The Panel considers that the Complainant has established that the disputed domain name has been registered and is being used in bad faith. The disputed domain name does not resolve to an active website. The Complainant’s primary contention is that bad faith registration and use can be found in the present case on the basis of the doctrine of “passive holding”. In support of such contention, the Complainant relies upon the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”). The term “passive holding” as described in Telstra means circumstances of respondent inaction following the registration of a domain name. The panel in that case indicated that such circumstances could amount to bad faith within the meaning of the Policy, subject to a review of all the facts in each specific case. In Telstra itself, factors which the panel identified as demonstrating respondent bad faith were, first, that the complainant’s trademark was widely known nationally and internationally, secondly, that the respondent had provided no evidence of any actual or contemplated good faith use of the domain name concerned, thirdly, that the respondent had taken active steps to conceal its true identity, fourthly, that the respondent had actively provided and failed to correct false contact details, and fifthly, that taking into account all of these aspects, it was not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent which would not be illegitimate, such as by constituting passing off, an infringement of consumer protection legislation or an infringement of the complainant’s rights under trademark law.

In the present case, the Panel accepts that the Complainant has demonstrated the national and international renown of its INTESA SANPAOLO trademark. The Complainant also exhibits a Google search result which indicates, in the absence of any countervailing evidence, that INTESA SANPAOLO cannot sensibly refer to anyone or anything else, particularly when accompanied by the letters "spa" which match the Complainant’s own corporate entity's legal designation. This suggests to the Panel on the balance of probabilities that the Respondent’s intent in selecting the disputed domain name for registration was to impersonate the Complainant in some unauthorised fashion. As the Complainant notes, such impersonation could be carried out by email without the need for any website to be activated at the disputed domain name. In any event, the Respondent has not provided any evidence of actual or contemplated good faith use of the disputed domain name and, particularly in the absence of a Response in this case, the Panel cannot conceive of any such use to which the disputed domain name might be put which would indicate a good faith motivation on the Respondent’s part.

In failing to file any Response, the Respondent has not availed itself of the opportunity to address the Complainant’s contentions or to advance any alternative explanation for the registration and use of the disputed domain name which might have indicated that its actions were in good faith. On the basis of the present record, and in the absence of such a Response, the Panel cannot conceive of any reasonable explanation which might have been tendered by the Respondent regarding 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
INTESASANPAOLOSPA.COM Transferred to the Complainant
Panellists
Name Andrew Lothian
Date of Panel Decision 2020-02-28
Publication of the Decision
Publish the Decision