Decision for dispute CAC-UDRP-104113

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

The Complainant is the owner of the following trademark registrations for the sign “INTESA SANPAOLO” (the “INTESA SANPAOLO trademark”):

- the International trademark INTESA SANPAOLO with registration No.920896, registered on 7 March 2007 for goods and services in International Classes 9, 16, 35, 36, 41 and 42; and

- the European Union trademark INTESA SANPAOLO with registration No.5301999, registered on 18 June 2007 for goods and services in International Classes 35, 36 and 38.

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

The Complainant is the leading Italian banking group, formed as a result of the merger in 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. The market capitalisation of the Complainant exceeds 47.7 billion Euro, and it has a network of 4300 branches and 13.5 million customers in Italy. The Complainant has a strong presence in Central and Eastern Europe with a network of approximately 1000 branches and over 7.2 million customers. The international network of the Complainant specialised in supporting corporate customers is present in 25 countries in the Mediterranean area, the United States, Russia, China and India.

The Complainant’s official website is located at the domain name <intesasanpaolo.com>.

The Respondent registered the disputed domain name on 3 February 2021. It is inactive.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s INTESA SANPAOLO trademark, as it exactly reproduces this well-known trademark with the substitution of the letter “I” with the letter “L” in the trademark’s element “INTESA” (a clear example of typosquatting) and the addition of the number “7” and the terms “PORTALE” (meaning “portal”) and ”web”, which are descriptive.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that it has never authorized the Respondent to use the INTESA SANPAOLO trademark, and the Respondent is not commonly known by the disputed domain name and is not making any fair or non-commercial use of it.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. It maintains that the INTESA SANPAOLO trademark is distinctive and well known around the world, and the fact that the Respondent has registered the disputed domain name which is confusingly similar to it, indicates that it had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Complainant submits that it has not been used for any bona fide offerings. Rather, the circumstances of the case indicate that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

The Complainant points out that the disputed domain name is inactive. According to it, there is no conceivable use that could be made of the disputed domain name that would not amount to an infringement of the Complainant’s trademark rights, since the disputed domain name corresponds to the Complainant’s well-known INTESA SANPAOLO trademark and the Complainant’s domain names used by it to provide online banking services for enterprises.

The Complainant submits that the risk of a wrongful use of the disputed domain name is even higher in the present case, since the Complainant has already been targeted by some cases of phishing in the past few years. Some clients of the Complainant have received e-mail messages asking for their sensitive data. In the present case, the Complainant believes that the Respondent registered the disputed domain name with a phishing purpose, in order to induce and divert the Complainant’s legitimate customers to its website and steal their money since the disputed domain name is an example of typosquatting.

Apart from phishing, there is according to the Complainant no other possible use of the disputed domain name except to resell it to the Complainant.


RESPONDENT:

The Respondent did not submit a Response in this proceeding.

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.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent has registered and is using the domain name in bad faith.

In this case, the Provider has employed the required measures to achieve actual notice of the Complaint to the Respondent, and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.

Identical or confusingly similar

The Complainant has provided evidence and has thus established its rights in the INTESA SANPAOLO trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of each of the disputed domain names is therefore the sequence “7portaleweb-lntesa-sanpaolo”, which reproduces the INTESA SANPAOLO trademark entirely with the replacement of the capital letter “l” by the small letter “l”, which have an identical appearance, and the addition of the combination “7portaleweb”, which includes the dictionary words “portale” and “web” and the number “7”. The addition of these non-distinctive elements has a low effect on the overall impression made by the disputed domain name, in which the INTESA SANPAOLO trademark is easily distinguishable and dominating, even though in a misspelled form. As discussed in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. As discussed in section 1.9 of the WIPO Overview 3.0, a domain name that consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

Taking all the above into account, the Panel finds that the disputed domain name is confusingly similar to the INTESA SANPAOLO trademark in which the Complainant has rights.

Rights and legitimate interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent was not authorized to use the INTESA SANPAOLO trademark and is not commonly known under the disputed domain name. The Complainant also points out that the disputed domain name is an example of typosquatting and does not resolve to an active website. According to the Complainant, the Respondent has registered the disputed domain name for the purpose of phishing attacks against the Complainant’s legitimate customers or to resell it to the Complainant or a competitor of the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a Response and has not provided an explanation of the reasons why it has registered the disputed domain name.

In the Panel’s view, the circumstances of this case do not contradict the prima facie case made by the Complainant and do not support a finding that the Respondent has rights and legitimate interests in the disputed domain name. It represents a typosquatted version of the popular INTESA SANPAOLO trademark, which is easily distinguishable and dominates in it. In the lack of any arguments or evidence to the contrary, all the above leads the Panel to the conclusion that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s INTESA SANPAOLO trademark, has registered the disputed domain name targeting this trademark in an attempt to exploit its goodwill by confusing and attracting Internet users who may believe that the disputed domain name is affiliated to the Complainant.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The registration of the distinctive INTESA SANPAOLO trademark significantly predates the registration date of the disputed domain name. It reproduces the INTESA SANPAOLO trademark entirely with a spelling mistake that is difficult to notice, which may lead Internet users to believe that it is affiliated to the Complainant. The Panel is therefore of the view that the Respondent is more likely to have registered the disputed domain name with knowledge of the Complainants' trademark rights and with the intention of taking advantage of their goodwill.

The disputed domain name is inactive, but since it represents a misspelling of the INTESA SANPAOLO trademark and the Respondent has not provided any plausible explanation of its choice of domain name, the Panel is not aware of any good faith use to which the disputed domain name may be put. As submitted by the Complainant, its non-use would not prevent a finding of bad faith under the doctrine of passive holding, taking account of the degree of distinctiveness and reputation of the Complainant’s INTESA SANPAOLO trademark, the failure of the Respondent to submit a Response, and the implausibility of any good faith use to which the disputed domain name may be put. See section 3.3 of the WIPO Overview 3.0.

This satisfies the Panel that the disputed domain name has been registered and used in bad faith.