Decision for dispute CAC-UDRP-103079

The Panel is not aware of any other legal proceedings relating to the disputed domain name.

The Complainant relies on:

- International trademark registration no. 793367 for the mark “INTESA”, granted on 4 September 2002;

- International trademark registration no. 920896 for the mark “INTESA SANPAOLO”, granted on 7 March 2007;

- EU trademark registration no. 12247979 for the mark “INTESA” granted on 5 March 2014; and

- EU trademark registration no. 5301999 for the mark “INTESA SANPAOLO” granted on 18 June 2007.

The Complainant is a leading Italian banking group, formed from the merger of the banking groups Banca Intesa SpA and Sanpaolo IMI SpA. The Complainant has a market capitalisation of about 25 billion Euro, a network of 3700 branches in Italy, with nearly 12 million customers and a market share of more than 15% in most regions of Italy, as well as a strong presence in Central-Eastern Europe with a network of about 1000 branches and over 7 million customers.

The Complainant is the owner of international and EU registered trademarks in respect of "INTESA SANPAOLO" and "INTESA" as identified above. The Complainant maintains a website at www.intesasanpaolo.com and holds a number of other domain names consisting of "ïntesasanpaolo" or "intesa" with various suffices, which are directed to that website.

The disputed domain name was registered on 10 February 2020.

No administratively compliant Response has been filed.

The Panel finds that the Complainant has registered rights in the mark "INTESA SANPAOLO". The Panel is also satisfied that the disputed domain name is confusingly similar to this mark, from which it differs only in the addition of the prefix "conto", the substitution of a hyphen instead of a space between the words "intesa" and ''sanpaolo", and the generic top level domain suffix.

The word ''conto'' means "account'' in Italian and is a generic term in the context of banking. It does not provide a distinction between the domain name and the Complainant's mark that would avert the risk of confusion. Accordingly, 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).

There is no reason to doubt the Complainant's statements that the Respondent has not been authorised or licensed to use the disputed domain name or make any other use of the Complainant's marks, that the Respondent is not commonly known by the disputed domain name, and that it has not made any use of it for any bona fide offering or for any legitimate non-commercial or fair purpose.

In these circumstances and given also the implausibility of any fair use of this domain name without the Complainant's authorisation in view of its close similarity to the Complainant's primary mark and corporate name, 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).

In the absence of any satisfactory explanation for registering the disputed domain name, which is so obviously confusing with the primary name and mark of a leading bank, it is right to infer that it was registered in bad faith for some abusive purpose. The retention of such a domain name is also a passive use of it in 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).

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.

Disputed domain name consisting of Complainant's distinctive registered mark and generic elements registered without any authorisation by the Complainant. No use by the Respondent of the disputed domain name or any corresponding name. Bad faith inferred in the absence of any explanation for the registration of a domain name so obviously confusing with the primary mark and name of a leading bank.