Decision for dispute CAC-UDRP-103764

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 is the owner of the following trademark registrations, among others:

- International trademark registration n. 920896 “INTESA SANPAOLO”, registered on March 7, 2007, in classes 9, 16, 35, 36, 38, 41 and 42;

- EU trademark registration n. 5301999 “INTESA SANPAOLO”, registered on June 18, 2007, in classes 35, 36 and 38;

- International trademark registration n. 793367 “INTESA”, registered on September 4, 2002 and duly renewed, in class 36;

- EU trademark registration n. 12247979 “INTESA”, registered on March 5, 2014, in classes 9, 16, 35, 36 38, 41 and 42.

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

The Complainant is the leading Italian banking group resulting from the merger in 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.

The Complainant’s trademarks “INTESA SANPAOLO” and “INTESA” are distinctive and well known all around the world.

On May 4, 2020 the Respondent registered the domain names <INTESAPALO.COM> and <INTENSAPAOLO.COM>. They do not resolve to active websites.

The domain names are identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”.

The Respondent has no rights or legitimate interests in relation to the domain names, which were registered and are being used in bad faith.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown 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 Panel finds that the domain names <INTESAPALO.COM>, <INTENSAPAOLO.COM> are virtually identical and are confusingly similar to the Complainant’s famous trademarks “INTESA SANPAOLO” and “INTESA”. Each of the domain names is a typosquatted version of the Complainant's marks and is presently being passively held.

In light of the Complainant's submissions and the absence of any response, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in either of the domain names and that they were registered in bad faith by the Respondent with full knowledge of the Complainant's famous marks. Further, as in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, there is no conceivable active use that could be made of the domain names that would not amount to an infringement of the Complainant’s trade mark rights. Accordingly the Panel finds that the Respondent's passive use of the domain names constitutes use in bad faith.