Decision for dispute CAC-UDRP-104110

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

- EU trademark registration n. 5301999 “INTESA SANPAOLO”, filed on 8 September 2006 and registered on 18 June 2007, in classes 35, 36 and 38;

- International trademark registration n. 793367 “INTESA”, registered on 4 September 2002 and duly renewed, in class 36;
- EU trademark registration n. 12247979 “INTESA”, filed on 23 October 2013 and registered on 5 March 2014, in classes 9, 16, 35, 36 38, 41 and 42; and

- EU trademark registration n. 6661672 “INTESA SANPAOLO BANK & device”, filed on 12 February 2008 and registered on 23 January 2009, in classes 9, 16, 35, 36, 41 and 42.

The Complainant is also owner of numerous domain names registered in several TLDs and including the terms “INTESA SANPAOLO”, “INTESA” and “INTESA SANPAOLO BANK” (e.g., INTESASANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ, INTESA-SANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ, INTESA.COM, .INFO, .BIZ, .ORG, .US, .EU, .CN, .IN, .CO.UK, .TEL, .NAME, .XXX, .ME, and INTESASANPAOLOBANK.IT, .EU, .COM, .NET, .MOBI, .PL, etc.). All of them resolves to the official website of the Complainant (https://www.intesasanpaolo.com).

The above-mentioned trademarks and domain names are hereinafter collectively referred to as the INTESA SANPAOLO Trademark.

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

The Complainant is a leading Italian banking group, born from the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., effective as of 1 January 2007.

The Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 47,7 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 4,300 branches capillary and well distributed throughout the Country, with market shares of more than 19% in most Italian regions, the Group offers its services to approximately 13,5 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1.000 branches and over 7,2 million customers. Moreover, the international network specialised in supporting corporate customers is present in 25 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States, Russia, China and India.

The Complainant owns several trademarks and domain names, all of them characterised by the presence of the distinctive terms "INTESA SANPAOLO", “INTESA”, and “INTESA SANPAOLO BANK”.

The disputed domain name was registered on 13 January 2021, well after the registration of the Complainant's INTESA SANPAOLO Trademark, by Eli Teezy, in the United States.

The domain name is connected to a website sponsoring, among others, banking and financial services, for whom the Complainant’s trademarks are registered and used. The Complainant sent a cease and desist letter to the Respondent without obtaining any response.

The facts asserted by the Complainant are not contested by the Respondent.

PARTIES' CONTENTIONS:

COMPLAINANT:

THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS

It is more than obvious that the domain name at issue is identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. As a matter of fact, <INTESASABANK.COM> is almost identical to the Complainant‘s well-known trademark “INTESA”, with the mere addition of the letters “S” and “A” and the addition of the term “BANK”, that is descriptive of the services for which Complainant’s trademarks have been registered and are used.


THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

The Respondent has no rights in 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 domain name at issue.

The domain name at stake does not correspond to the name of the Respondent and, to the best of our knowledge, the Respondent is not commonly known as “INTESASABANK”.

The Complainant did not find any fair or non-commercial uses of the domain name at stake.


THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH

The disputed domain name <INTESASABANK.COM> was registered and is used in bad faith.

The Complainant’s trademarks “INTESA SANPAOLO” and “INTESA” 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. In addition, if the Respondent had carried even a basic Google search in respect of the wordings “INTESA SANPAOLO” and “INTESA”, the same would have yielded obvious references to the Complainant. The Complainant submitted an extract of a Google search in support of its allegation. 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 domain name at issue would not have been registered if it were not for Complainant’s trademark. This is a clear evidence of registration of the disputed domain name in bad faith.


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.

This is the last of hundreds of UDRPs involving the “Intesa” and “San Paolo” Italian bank.

Yet, it shares almost the identical factual background, namely: the incorporation – even in association with misspelled generic names - of the Complainant’s well-known (and UDRP victorious) trademarks.

No authorized or fair use of the disputed domain name is present within any of the meanings under paragraph 4(a)(ii) of the Policy. Full knowledge of the Complainant’s trademarks, and the lack of any possible genuine use of the disputed domain name – especially after the Complainant’s cease and desist letter, and the lack of any response – confirms the finding that the disputed domain name was registered and used in bad faith according to 4(a)(iii) of the Policy.