Decision for dispute CAC-UDRP-103949

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name <INTESASANPALO.XYZ>.

The Complainant is an Italian banking group which was established on 1 January 2007 resulting from the merger of Banca Intesa S.p.A and San Paolo IMI S.p.A being effected. Intesa Sanpaolo is among the top banking groups in the eurozone, with a market capitalisation exceeding 45,3 billion euro, and an undisputed leader in Italy, in all business areas (retail, corporate and wealth management).


The Complainant further states and provides evidence to support, that it is the owner, among others, of multiple trademark registrations for the trademarks “INTESA” and “INTESA SANPAOLO”:

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

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

- EU trademark registration n. 12247979 “INTESA”, applied on October 23, 2013 and granted on March 5, 2014, in classes 9, 16, 35, 36, 38, 41 and 42;

- 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.

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 www.intesasanpaolo.com.

The Complainant claims it is the leading Italian banking group and also one of the protagonists in the European financial arena. Intesa Sanpaolo is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.

The Complainant states and provides evidence of his well-known trademarks and provides a list of some of its trademark registrations.

The Complainant provides that the Respondent registered the disputed domain name <INTESASANPALO.XYZ> ("Disputed Domain Name" or "Domain Name") on May 24, 2021.


PARTIES’ CONTENTIONS:

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

COMPLAINANT:

• The disputed domain name is confusingly similar to the protected mark

According to the Complainant, the Respondent’s registered disputed domain name is identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. Essentially, <INTESASANPALO.XYZ> exactly reproduces the Complainant's well-known trademark “INTESA SANPAOLO”, with the mere omission of the letter “O” in the mark’s verbal portion “SANPAOLO”. This, according to the Complainant, represents a clear example of typosquatting.


• Respondent does not have any rights or legitimate interest in the disputed domain name

The Complainant argues that the Respondent has no rights on the disputed domain name, and any use of the trademarks “INTESA SANPAOLO” and “INTESA” has to be authorized by the Complainant. Nobody has been authorized or licensed by the above-mentioned banking group to use the disputed domain name.

The disputed domain name does not correspond to the name of the Respondent and, to the best of the Complainant's knowledge, the Respondent is not commonly known as “INTESASANPALO”.


• The disputed domain name has been registered and is being used in bad faith

The Complainant claims that the disputed domain name was registered and is used in bad faith. The Complainant’s trademarks “INTESA” and “INTESA SANPAOLO” 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.

The Complainant contends it is evident from a basic Google search in respect of the wordings “INTESA” and “INTESA SANPAOLO”, the same would have yielded obvious references to the Complainant. This raises a clear inference of knowledge of the Complainant’s trademark on the part of the Respondent. Therefore, it is more than likely that the disputed domain name would not have been registered if it were not for Complainant’s trademark. This is clear evidence of registration of the disputed domain name in bad faith.

Also, the disputed domain name is not used for any bona fide offerings. More particularly, there are present circumstances indicating that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site (par. 4(b)(iv) of the Policy).

The disputed domain name is currently passively held. The disputed domain name is not used for any bona fide offerings, considering that the same is connected to a website that has been blocked by Google Safe Browsing through a warning page. The Complainant argues that the main purpose of the Respondent was to use the above website for “phishing” financial information in an attempt to defraud the Complainant’s customers and that Google promptly stopped the illicit activity carried out by the Respondent.

The Complainant provides that countless WIPO decisions consider "Phishing" a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user Ids, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company and this information is used for identity theft and other nefarious activities”. See, in this concern, Halifax Plc. v. Sontaja Sanduci, WIPO Case No. D2004-0237 and also CarrerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251.

Several WIPO decisions also stated that the “Use of a disputed domain name for the purpose of defrauding Internet users by the operation of a “phishing” website is perhaps the clearest evidence of the registration and use of a domain name in bad faith”(Case No. D2012-2093, The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado).

Even excluding any “phishing” purposes or other illicit use of the disputed domain name in the present case, the Complainant claims there is no other possible legitimate use of <INTESASANPALO.XYZ>. The sole further aim of Respondent under consideration might be to resell it to the Complainant, which represents, in any case, evidence of the registration and use in bad faith, according to par. 4(b)(i). I.e. circumstances indicating that the Respondent has registered or acquired the disputed 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 valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

Lastly, it shall be noted that on July 1, 2021, the Complainant’s attorneys sent to the Respondent a cease and desist letter asking for the voluntary transfer of the disputed domain name. Despite such communication, the Respondent did not comply with the above request.

RESPONDENT:

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.

The UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY of the Internet Corporation for Assigned Names and Numbers (ICANN) (the “Policy”) provides that a complainant must prove each of the following to obtain transfer or cancellation of a domain name:

1. that respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

2. that respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.


1) The disputed domain name is confusingly similar to a trademark in which the Complainant has rights (Para.4(a)(i) of the Policy).

The Complainant has provided evidence and proved to be the owner of several “INTESA” and “INTESA SANPAOLO” trademarks in various jurisdictions. Essentially, the Respondent has appropriated the trademark “INTESA SANPAOLO” with the mere omission of the letter “O” in the mark’s verbal portion “SANPAOLO” to presumably lead consumers to believe that it is affiliated with the Complainant.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks “INTESA” and “INTESA SANPAOLO” since the mere omission of the letter “O” in the mark’s verbal portion “SANPAOLO” does not eliminate any confusing similarity. This is especially true where, as here, the trademark is “the dominant portion of the domain name,” LEGO Juris A/S v. Domain Tech Enterprises, WIPO Case No. D2011-2286, or where the trademark in the domain name represents “the most prominent part of the disputed domain name[] which will attract consumers’ attention.” Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768.

The Panel agrees with the Complainant's opinion that the registration of the disputed domain name is an example of typosquatting. The omission of the letter “O” in the mark’s verbal portion “SANPAOLO” created a word (“SANPALO”) without meaning. This is a clear indication that such word was created in order for the Respondent to benefit from people mispelling the Complainant’s domain name <intesasanpaolo.com>. It is well established that typosquatting can constitute a finding that the domain name is confusingly similar (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, DaimlerChrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201).

In addition, the Panel understands that typosquatting is per se an indication of bad faith, as already decided, in the cases, Bang & Olufsen a/s v. Unasi Inc, WIPO Case No. D2005-0728 and The Nasdaq Stock Market, Inc. v. Act One Internet Soluctions, WIPO Case No. D2003-0103.

The Panel thus considers this to be a clear case of typosquatting.

In conclusion, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks “INTESA” and “INTESA SANPAOLO”.


2) The Respondent lacks rights or legitimate interests in the disputed domain name (Para. 4(a)(ii) of the Policy).

Under the Policy, a 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 burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see WIPO Overview 2.0, paragraph 2.1).

According to the Complainant, the Respondent has no rights in respect of the Disputed Domain Name, and any use of the trademarks “INTESA SANPAOLO” and “INTESA SANPAOLO” has to be authorized by the Complainant. The Respondent has not been authorized or licensed by the above-mentioned banking group to use the disputed domain name.

In a present case, the Respondent failed to file a Response in which it could have provided evidence in support of its rights or legitimate interests. Therefore, all these circumstances are sufficient to establish a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.

The Panel thus takes the view that the Respondent lacks rights or legitimate interests in the disputed domain name.


3) The disputed domain name has been registered and is being used in bad faith (Paragraph 4(a)(iii) of the Policy).

The Panel agrees with the Complainant that its trademarks “INTESA SANPAOLO” and “INTESA SANPAOLO” are distinctive and well known globally. The fact that the Respondent has registered a domain name that is confusingly similar to them indicates and in the absence of any evidence contrary (or any administratively compliant response at all) being put forward by the Respondent, that the Respondent, according to this Panel, had knowledge (or should have known) of the Complainant’s trademarks and that they had such knowledge prior to the registration and use of the disputed domain name.

The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (see section 3.3, WIPO Overview 3.0).

In the present case, the Panel is of the opinion that the Complainant’s trademarks are distinctive and well known, which makes it difficult to conceive any plausible legitimate future use of the disputed domain name by the Respondent.

The disputed domain name is currently passively held. The disputed domain name is not used for any bona fide offerings. The Panel believes that it is likely that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (par. 4(b)(i) of the Policy). Countless UDRP decisions confirmed that the passive holding of a domain name with the knowledge that the domain name infringes another party’s trademark rights is evidence of bad faith registration and use (see, in this regard, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and also the panels’ consensus view on this point, as reflected in the “WIPO Overview of WIPO Views on Selected UDRP Questions” at paragraph 3.2.).

For all reasons stated above, the Panel is satisfied that the Complainant has proven the third element of the Policy that is that the Respondent's registration and use of the disputed domain name in bad faith.
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