Decision for dispute CAC-UDRP-105221

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, among others, of the following registrations for the trademarks “INTESA SANPAOLO” and “INTESA”:

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

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

- EU trademark registration n. 5301999 “INTESA SANPAOLO”, filed on September 8, 2006, granted on June 18, 2007 and duly renewed, in connection with the classes 35, 36 and 38;

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

The Complainant is the leading Italian banking group and also one of the protagonists in the European financial area. 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.

On December 15, 2022, the Respondent registered the domain name INTESASANPAOLO-SERVIZI.COM. 

The webpage connected to the disputed domain is currently blocked by Google Safe Browsing because of a suspected phishing activity.

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

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).

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, INTESASANPAOLO-SERVIZI.COM exactly reproduces the well-known trademark “INTESA SANPAOLO”, with the mere addition of the Italian term “SERVIZI” (meaning “services”), that is merely descriptive of the services offered by the Complainant to its customers.

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 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. The Respondent has been authorized or licensed by the Complainant banking group to use the domain name at issue.

The disputed domain name does not correspond to the name of the Respondent and according to Complaint´s contentions and available evidence the Respondent is not commonly known as “INTESASANPAOLO-SERVIZI”.

Lastly, the Panel does not find any fair or non-commercial uses of the domain name at stake

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 domain name INTESASANPAOLO-SERVIZI.COM was registered and is used in bad faith. It shall be underlined that the webpage connected to the disputed domain is currently blocked by Google Safe Browsing because of a suspected phishing activity.

In addition, the disputed domain name is not used for any bona fide offerings. More particularly, there are present circumstances indicating that, by using the 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).

It is clear 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.

As underlined by countless WIPO decisions, “<Phishing> is 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 registration and use of a domain name in bad faith” (see Case No. D2012-2093, The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado). In particular, the UDRP jurisprudence considered phishing attacks as “proof of both bad faith registration and use in bad faith”. In this sense, it shall also bear in mind WIPO Case No. D2006-0614, Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa , where the finding was that: “The Respondent registered the domain name because in all probability he knew of the Complainant and the type of services offered by the Complainant and tried to attract Internet users for commercial gain by “spoofing” and “phishing”. The Panel notes that these are practices which have become a serious problem in the financial services industry worldwide. This is a compelling indication both of bad faith registration and of use under paragraph 4(b)(iv)”. See also Finter Bank Zürich v. N/A, Charles Osabor, WIPO Case No. D2005-0871 and Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228, that directly involves the Complainant.

In the light of the above, the third and final element necessary for finding that the Respondent has engaged in abusive domain name registration and use has been established.

According to Registrar verification provided on February 14, 2023 the language of the Registration agreement is both English and German. The Complainant filed the Complaint in English. The Respondent never contacted the CAC and never requested the change of language. The Panels deems it appropriate to deliver this decision in English language.

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 domain name <INTESASANPAOLO-SERVIZI.COM> is confusingly similar to Complainant´s trademarks. It was registered and is used in bad faith as the webpage connected to the disputed domain is currently blocked by Google Safe Browsing because of a suspected phishing activity. Such use of a domain name is not deemed legitimate under the Policy.