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. 103901
Time of Filing 2021-07-02 09:30:57
Disputed domain name BANKISP.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization Intesa Sanpaolo S.p.A.
Authorized Representative
Organization Intesa Sanpaolo S.p.A.
Respondent
Organization Elite Domains
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 several international and EU trademarks including the terms "INTESA", "INTESA SANPAOLO" and "INTESA SANPAOLO BANK", in particular, the EU trademark No. 7310337 “ISP”, filed on 13 October 2008 and registered on 12 February 2010, in class 36 and EU trademark No. 6661672 “INTESA SANPAOLO BANK & device”, filed on 12 February 2008, and registered on 23 January 2009 for classes 9, 16, 35, 36, 41 and 42 ("Complainant`s Trademarks").

The disputed domain name <bankisp.com> was registered on 13 February 2021.
Factual Background
As the Respondent did not file any response to the Complaint, the Panel took into account the following facts asserted by the Complainant (and supported by the documentary evidence submitted by the Complainant) and unchallenged by the Respondent:

(a) The Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 47,0 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 4,700 branches capillary and well distributed throughout the Country, with market shares of more than 22% 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.

(b) Moreover, the Complainant is also the owner, among the others, of the following domain names bearing the signs “INTESA SANPAOLO” and “INTESA”: INTESASANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ, INTESA-SANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ and INTESA.COM, INTESA.INFO, INTESA.BIZ, INTESA.ORG, INTESA.US, INTESA.EU, INTESA.CN, INTESA.IN, INTESA.CO.UK, INTESA.TEL, INTESA.NAME, INTESA.XXX, INTESA.ME. All of them are now connected to the official website http://www.intesasanpaolo.com.



(c) On 28 June 2021 when the Complainant took the screenshot, the disputed domain name redirected to a parking page in which the same is offered for sale for the amount of $280.00.
 
PARTIES' CONTENTIONS:

COMPLAINANT:

In addition to the above factual assertions, the Complainant also contends the following:

(a) The disputed domain name is identical, or – at least – confusingly similar, to the Complainant’s trademarks “ISP”, “INTESA SANPAOLO” and “INTESA SANPAOLO BANK”. As a matter of fact, BANKISP.COM is identical to “ISP” (with the mere addition of the descriptive word “bank”), while it is also almost identical to “INTESA SANPAOLO BANK” (with the mere substitution of the mark’s verbal portion “INTESA SANPAOLO” with the abbreviation “ISP” and the inversion of the terms “ISP” and “BANK”).

(b) The Respondent has no rights on the disputed domain name, and any use of the trademarks “INTESA SANPAOLO” and “INTESA SANPAOLO BANK” has to be authorized by the Complainant. Nobody has been authorized or licensed by the above-mentioned banking group to use the domain name at issue. The disputed domain name does not correspond to the name of the Respondent and, to the best of Complainant‘s knowledge, the Respondent is not commonly known as “BANKISP”. Therefore, the Respondent has no rights or legitimate interest in the disputed domain name.

(c) The Complainant’s trademarks “INTESA SANPAOLO” and “INTESA SANPAOLO BANK”, are distinctive and well known all around the world. The fact that the Respondent has registered a domain name that is confusingly similar to them indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. Moreover, the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for $280, i.e. valuable consideration in excess of the Respondent’s costs directly related to the disputed domain name. Therefore, the Respondent registered and has been using the disputed domain name in bad faith.


RESPONDENT:

The Respondent did not provide any response to the complaint.
Rights
The Panel concluded that the disputed domain name is confusingly similar to Complainant’s Trademark within the meaning of paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy ("UDRP" or "Policy").

For details, please see "Principal Reasons for the Decision".
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.

For details, please see "Principal Reasons for the Decision".
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.

For details, please see "Principal Reasons for the Decision".
Procedural Factors
The Panel is satisfied that all procedural requirements under the Policy were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or revoked:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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.


The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in these proceedings.


RIGHTS

The disputed domain name is confusingly similar to Complainant’s Trademarks as it includes the EU trademark No. 7310337 in its entirety and adds a descriptive term "BANK" and at the same time it is an abbreviation of EU trademark No. 6661672.

For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the ".com") must be disregarded under the identity / confusing similarity test as it is a necessary technical requirement of registration.

Therefore, the Panel concludes that the Complainant satisfied the requirement under paragraph 4(a)(i) of the Policy.


NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (for example, WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd.).

As asserted by the Complainant (and unchallenged by the Respondent), the Respondent is not commonly known by the disputed domain name. Neither is the Respondent in any way related to the Complainant. The Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a) (ii) of the Policy).

Therefore, the Panel concludes that the Respondent did not establish any right or legitimate interest to the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).


BAD FAITH

Given the reputation of the Complainant and well-known nature of its trademarks the Panel cannot find any conceivable good faith registration and use of the disputed domain name by the Respondent in a situation where there is no legitimate website under the disputed domain name and there was no response to the complaint in which the Respondent could have established such good faith use of the disputed domain name (or at least preparations for such good faith use). Moreover, the disputed domain name was for sale for $280 which exceeds the costs of registration and maintenance of the disputed domain name. Therefore, the Panel concurs with the Complainant 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).
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
BANKISP.COM Transferred to Complainant
Panellists
Name Michal Matějka
Date of Panel Decision 2021-08-15
Publication of the Decision
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