Decision for dispute CAC-UDRP-103533

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complainant owns the following trademark registrations (among others):

- International trademark registration n. 793367 “INTESA”, granted on 4 September 2002 in class 36;
- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on 7 March 2007 in classes 9, 16, 35, 36, 41, 42;
- EU trademark registration n. 12247979 “INTESA”, granted on 5 March 2014 in classes 9, 16, 35, 36, 38, 41 and 42 on an application filed on 23 October 2013; and
- EU trademark registration n. 5301999 “INTESA SANPAOLO”, granted on 18 June 2007 in classes 35, 36 and 38 on an application filed on 8 September 2006.

The Complainant is a leading Italian banking group, formed from the merger of Banca Intesa SpA and Sanpaolo IMI SpA. It has a market capitalisation exceeding 37 billion Euros. It is the leading bank in Italy in all main business areas with a market share of more than 21% in most regions. It has 5360 branches throughout the country and 14.6 million Italian customers. It also has a strong presence in central and eastern Europe with about 1000 branches and 7.2 million customers.

As well as the registered marks identified above, the Complainant also owns many domain names containing "intesasanapaolo" or "intesa" as their second level domains.

The disputed domain names were registered by the Respondent in February 2020. They have not been directed to any website. The Complainant's attorneys sent a cease and desist letter to the Respondent's registrar on 9 April 2020 with a request to forward it to the Respondent, whose identity and address were concealed by a privacy shield. The Respondent did not comply.

No administratively compliant Response has been filed.

The Panel finds that the Complainant has registered rights in the marks INTESA and INTESA SANPAOLO. The Panel also considers that each of the disputed domain names is confusingly similar to each of these marks. Each of the disputed domain names starts with the name "intesa" and continues with an abbreviation of "san paolo". The Panel has no doubt that many Internet users would understand the disputed domain names to indicate the Complainant.

Accordingly, the Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to marks in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

The Panel finds on the undisputed evidence that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names.

The Panel is satisfied that the Respondent has not used or made preparations to use any of the disputed domain names for a bona fide offering of goods or services. The Respondent is evidently not commonly known by any of the disputed domain names. Nor is the Respondent engaged in any legitimate non-commercial or fair use of the disputed domain names. The Complainant has not authorised the Respondent to register or use the disputed domain names.

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of any of the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy.

The Panel considers that the disputed domain names are inherently unlikely to be used for any bona fide purpose, given that they are obviously intended to indicate the Complainant through their confusing similarity with its well-known marks. It is well-established that passively holding a domain name that is confusingly similar to a well-known mark with the threat of using it to damage the owner of the mark by deception can constitute use in bad faith for the purposes of the third requirement of the UDRP.

In the absence of any explanation by the Respondent of its purpose and intent in registering the disputed domain names, the Panel finds on the balance of probabilities that they were registered and are being used in bad faith. Accordingly, the Complainant has, to the satisfaction of the Panel, shown that the disputed domain names have been registered and are 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.

The Complainant is a leading banking group. The Respondent registered the disputed domain names recently and has not used them for any website. Their second level domains are abbreviated version of the Complainant's name and comprise the entirety of some of its registered marks and nearly the entirety of others of its registered marks. The disputed domain names are clearly confusingly similar with the Claimant's marks and obviously intended to refer to the Complainant. The Respondent has not used or prepared to use the disputed domain names for any bona fide offering of goods or services or for any legitimate non-commercial or fair purpose. The Respondent is not commonly known by the disputed domain names and has not been authorised by the Complainant to use them. It is difficult to envisage any good faith use for the disputed domain names. In the absence of any explanation by the Respondent, the Panel finds on the balance of probabilities that they were registered and are being used (if only passively at the moment) in bad faith.