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. 103817
Time of Filing 2021-05-24 09:29:27
Disputed domain name INTESASANPAOLO-CLIENTI.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization Intesa Sanpaolo S.p.A.
Authorized Representative
Organization Intesa Sanpaolo S.p.A.
Respondent
Name ricardo alfonso marcos marcos
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 International trademark registration no. 920896 “INTESA SANPAOLO”, registered on March 07, 2007 for goods and services in classes 9, 16, 35, 36, 38, 41 and 42 and of European Union trademark registration no. 5301999 “INTESA SANPAOLO”, registered on June 18, 2007 for services in classes 35, 36 and 38.
Factual Background
FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

It results from the Complainant’s undisputed allegations that it is the leading Italian banking group and also one of the protagonists in the European financial arena. Intesa Sanpaolo 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., two of the top Italian banking groups. Intesa Sanpaolo is among the top banking groups in the Euro zone and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 4,700 branches throughout Italy, 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 26 countries, in particular in the Mediterranean area and in the United States, Russia, China and India.

It also uses the official website www.intesasanpaolo.com.

The Complainant further contends its trademark INTESA SANPAOLO is distinctive and well-known all around the world.
The disputed domain name <INTESASANPAOLO-CLIENTI.COM> was registered on June 19, 2020 and resolved to an inactive webpage.

 


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. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Many Panels have found that a disputed domain name is confusingly similar to a Complainant’s trademark where the disputed domain name incorporates the Complainant’s trademark in its entirety. This is the case in the case at issue where the Complainant’s registered trademark “INTESA SANPAOLO” is fully included in the disputed domain name followed by a hyphen and by the generic and descriptive Italian term “clienti” (meaning clients in English), which indicates the Complainant’s users. The Complainant’s trademark is clearly recognizable within the disputed domain name and the addition of the descriptive term does not prevent a finding of confusing similarity, on the contrary it is likely to increase the possibility of confusion amongst consumers.

2. In the absence of any Response, or any other information from the Respondent indicating the contrary, the Panel further holds that the Complainant successfully presented its prima facie case and that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Respondent is not affiliated with nor authorized by the Complainant in any way, and he is not related in any way to the Complainant’s business. In addition, the Respondent is not commonly known by the disputed domain name.
Finally, no content is displayed on the website to which the disputed domain name resolves. This Panel finds that such use can neither be considered a bona fide offering of goods or services nor 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 trademark or service mark at issue.

3. According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
The Panel finds that the disputed domain name has been registered and is being used in bad faith. It is the view of this Panel that the Respondent has intentionally registered the disputed domain name which totally reproduces the Complainant’s trademarks INTESA SANPAOLO. By the time the disputed domain name was registered, it is unlikely that the Respondent did not have knowledge of the Complainant’s rights on its trademarks INTESA SANPAOLO.

The Complainant also proved that the Respondent used the disputed domain name to lead to an inactive webpage. This Panel finds that the non-use of the disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding. In fact, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Respondent failed to submit a response and to comply with the request sent through the cease and desist letter or to provide any evidence of actual or contemplated good-faith use; (2) the Respondent’s concealing its identity; (3) the implausibility of any good faith use to which the disputed domain name may be put.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
INTESASANPAOLO-CLIENTI.COM Transferred to Complainant
Panellists
Name Dr. Federica Togo
Date of Panel Decision 2021-07-05
Publication of the Decision
Publish the Decision