Decision for dispute CAC-UDRP-104881

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

According to the evidence submitted by Complainant, Complainant is the owner of multiple trademarks for INTESA SANPAOLO, including the European Union trademark INTESA SANPAOLO, number 005301999, registration date 18 June 2007.

According to the provided information Complainant is a leading Italian banking group. It is among the top banking groups in the euro zone with a network of approximately 3,700 branches. Moreover, the international network specialized in supporting corporate customers is present in many countries, in particular in the Mediterranean area and those areas where Italian companies are most active.

The disputed domain name <intesesanpaoloverifica.com> was registered on 14 February 2022. The disputed domain name currently does not resolve to an active website.

The trademark registrations of Complainant have been issued prior to the registration of the disputed domain name.

According to Complainant the disputed domain name is identical or confusingly similar to Complainant's trademarks as it is almost identical to Complainant’s well-known trademark INTESA SANPAOLO with the mere addition of the term “verifica”, which Italian word means “verification” in English, a generic term.

According to Complainant, Respondent has no rights or legitimate interest in the disputed domain name. Nobody has been authorized or licensed by Complainant to register or use the disputed domain name. The disputed domain name does not correspond to the name of Respondent and Respondent is not commonly known as “INTESASANPAOLOVERIFICA”. Finally, there is not any fair or non-commercial use of the disputed domain name.

According to Complainant the disputed domain name was registered and is used in bad faith. Complainant’s trademark INTESA SANPAOLO is distinctive and well-known all around the world. The fact that Respondent has registered a domain name that is confusingly similar to the trademarks indicates that Respondent had knowledge of Complainant’s trademarks at the time of registration of the disputed domain name. The disputed domain name is not used for any bona fide offerings, and if it is not connected to any website. In fact, countless UDRP decisions confirmed that the passive holding of a domain name with knowledge that the domain name infringes another party’s trademark rights is evidence of bad faith registration and use.

In addition, Complainant submits that the risk of wrongful use of the disputed domain name issue is high in the present case, since Complainant has already been targeted by some cases of phishing in the past few years. Such a practice consists of attracting customers of a bank to a web page which imitates the real page of the bank, with a view to having customers disclose confidential information like a credit card or bank account number, for the purpose of unlawfully charging such bank accounts or withdrawing money out of them. It happened that some clients of Complainant have received e-mail messages asking, by the means of web pages which were very similar to Complainant’s ones, the sensitive data of the clients, like user ID, password etc. Then, some of the clients have been cheated out of their savings. Also in the present case, Complainant believes that Respondent registered the disputed domain name with the “phishing” purpose, in order to induce and divert Complainant’s legitimate customers to its website and steal their money.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

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 Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

Complainant has, to the satisfaction of the Panel, shown 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).

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.

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its trademarks or to register the disputed domain name incorporating its marks. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights. Complainant has no relationship with Respondent.

In the opinion of the Panel Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use its trademarks or to register the  disputed domain name incorporating its marks. Respondent is not making a legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights. Complainant has no relationship with Respondent.
Respondent did not submit any response. Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name (within the meaning of paragraph 4 (a)(ii) of the Policy).

The Panel finds that 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 trademarks of Complainant are well-known. Respondent knew or should have known that the disputed domain name included Complainant’s trademarks.
The Panel notes that the disputed domain name does not resolve to an active website. It is well established that non-use of a domain name does not prevent a finding of bad faith use under the doctrine of passive holding (see section 3.3. of the WIPO Overview 3.0).
The Panel also notes the undisputed submission of Complainant that the risk of wrongful use of the disputed domain name issue is high in the present case, since Complainant has already been targeted by some cases of “phishing” in the past few years. In the view of the Panel this risk of “phishing” could especially be true in view of the “verifica” part of the disputed domain name in combination with the “intesasanpaolo” part of the disputed domain name which is not only the INTESA SANPAOLO trademark of Complainant, but also the financial term of verification. This indicates, in the circumstances of this case, that Respondent registered and used the disputed domain name with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.