Decision for dispute CAC-UDRP-102731

The Panel is not aware of other legal proceedings which are pending or decided and which relate to the Disputed Domain Name.

The Complainant is the owner of several trademarks including or consisting of the words “INTESA SANPAOLO” in several countries, such as the international trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007 and duly renewed, in class 36, and EU trademark registration n. 5301999 “INTESA SANPAOLO”, applied on September 8, 2006, granted on June 18, 2007 and duly renewed, in classes 35, 36 and 38.

The Complainant also owns an important domain names portfolio bearing the words “INTESA SANPAOLO” and “INTESA”, such as:

- 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, IN-TESA.NAME, INTESA.XXX, INTESA.ME.

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

The Complainant is an Italian banking group. It is among the top banking groups in the Euro zone, with a market capitalisation exceeding 38 billion Euro, and the market leader in Italy, in the business areas retail, corporate and wealth management. Caused by a network of approximately 3,900 branches capillary and well distributed throughout the Country, with market shares of more than 16% in most Italian regions, the Complainant offers its services to approximately 11,8 million customers. Further, the Complainant has a strong presence in Central-Eastern Europe with a network of approximately 1.100 branches and over 7,2 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.

The Complainant uses, inter alia, the domain name <INTESASANPAOLO.COM> and its well known trademarks “INTESA SANPAOLO” and “INTESA” for its services and as company name.

The Disputed Domain Name <INTESASANPAOLO-CAMPAGNA.COM > was registered on July 19th, 2019. It does not point to any web site.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

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).

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).

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).

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.

As the Respondent did not file an administratively compliant Response, pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences therefrom as it considers appropriate. Thus, the Panel accepts the contentions of the Complainant as admitted by the Respondent.

A. The Disputed Domain Name is confusingly similar to the trademark “INTESA SANPAOLO” of the Complainant.

The Complainant has, to the satisfaction of the Panel, shown that it has valid trademark rights “INTESA SANPAOLO”.

The Disputed Domain Name includes the Complainant's trademark in its entirety.

The Disputed Domain Name is confusingly similar to the Complainant's registered trademark “INTESA SANPAOLO” since the addition of the Italian descriptive term “CAMPAGNA”, meaning “campaign”, is not sufficient to distinguish the domain name from the trade mark.

Furthermore, the addition of the gTLD suffix “.COM” is not sufficient to escape the finding that the Disputed Domain Name is identical to the Complainant's trademark and does not change the overall impression of the designation as being connected to the trademark of the Complainant.

B. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name within the meaning of the Policy.

The Complainant has established a prima facie proof that the Respondent has no rights or legitimate interests in the Disputed Domain Name, since the Respondent is not a licensee of the Complainant nor has the Complainant granted any permission or consent to use its mark in a domain name.

Furthermore, the Disputed Domain Name does not correspond to the name of the Respondent and the Respondent is not commonly known as “INTESASANPAOLO".

In addition, the Disputed Domain Name never pointed to any website. This is an indication that the Respondent lacks rights and legitimate interests in the Disputed Domain Name. It indicates also, that there is no evidence for a use of the Disputed Domain Name for any bona fide offer of goods or services or a legitimate non-commercial or fair use.

C. The Disputed Domain Name has been registered and is being used in bad faith within the meaning of the Policy.

The Complainant’s trademark “INTESA SANPAOLO” are widely known. Given the distinctiveness of the Complainant's trademark and reputation, it can be concluded that the Respondent has registered and used the Disputed Domain Name with full knowledge of the Complainant's trademark. This result is supported by the fact that the Respondent added the word "CAMPAGNA" to the trademark of the Complainant, which indicates that users of the internet may think of a campaign of the Complainant, when recognizing the Disputed Domain Name.