Decision for dispute CAC-UDRP-105543

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 numerous trademarks worldwide, including but not limited to the following:

- International trademark registration no. 920896 “INTESA SANPAOLO”, registered on March 7, 2007;

- International trademark registration no. 793367 “INTESA”, registered on September 4, 2002;

- EU trademark registration no. 5301999 “INTESA SANPAOLO”, registered on June 18, 2007;

- EU trademark registration no. 12247979 “INTESA”, registered on March 5, 2014.

The Complainant owns the domain name <intesananpaolo.com>.

The Respondent registered the disputed domain name on December 24 2022. Currently, the disputed domain name does not resolve to an active website.

Intesa Sanpaolo is a leading Italian banking group, and a leader in its business areas of retail, corporate and wealth management. It has a network of 3500 branches throughout Italy and has around 13.6 million customers. It also has a present in Central-Eastern Europe with a network of 950 branches and over 7.1 million customers. Its international network specialised in supporting corporate customers has a presence in 25 countries, including the USA, Russia, China and India.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant contends that the disputed domain name is confusingly similar to the INTESA mark on the basis that the disputed domain name consists of the misspelled mark, the additional descriptive terms “clienti” and “assistenzia” and the top-level domain name suffix (“TLDs”) “.com” and are thus insufficient to avoid the finding that the disputed domain name is confusingly similar to its INTESA mark.

The Complainant also argues that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not acquired any rights in a trademark or trade name corresponding to the disputed domain name. In addition, the Respondent is not affiliated with the Complainant and the Complainant did not license or authorize the Respondent to use the INTESA mark.

The Complainant further asserts that the disputed domain name has been registered and is being used in bad faith as the Respondent should have known of the Complainant’s well-known INTESA mark at the time of registration of the disputed domain name. The Complainant also asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites, by creating a likelihood of confusion with the Complainant and its mark.

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.

 1. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns numerous trademark registrations of the INTESA mark.

It is well-established that a domain name which 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 (see WIPO Overview 3.0, section 1.9).  The disputed domain name which incorporates the Complainant’s marks in its entirety and adds the additional letter “s” to Complainant’s mark is a clear misspelling of the Complainant’s INTESA mark. It is therefore a typosquatting attempt by the Respondent which does not avoid confusingly similarity between the Complainant’s mark and the disputed domain name.

In addition, the disputed domain name comprises the Complainant’s INTESA mark in its entirety with the addition of the prefix “clienti” and the suffix “assistenzia” and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that where the 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.  See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.  The Complainant’s mark is clearly recognizable in the disputed domain name. 

Further, it is well established that the addition of a gTLD “.com” does not avoid confusing similarity between the Complainant’s trademark and the disputed domain name (see WIPO Overview 3.0, section 1.11.1).

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

2. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owns trademark registrations of the INTESA mark long before the date that the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3).

Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which would be sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

3. Registered and Used in Bad Faith

The complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)).  Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant provided evidence that the website available under the disputed domain name has been identified as a dangerous website by Google Safe Browsing and showed a warning to users when they attempted to navigate to the website and that the disputed domain name does not resolve to an active website. It has been held by prior panels that in circumstances such as the present case the passive holding of the disputed domain name is sufficient evidence of bad faith. (See Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Intesa Sanpaolo S.p.A. v. Kara Turner; WIPO Case No. D2018-0639; WIPO Overview 3.0, section 3.3).

Further, the disputed domain name incorporates a typosquatting variation of the Complainant’s INTESA mark which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant involving the addition of the letter “s” to the mark. Previous UDRP panels ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006‑1095).  To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to create a likelihood of confusion with a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy. Further, the Complainant has submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered the INTESA trademark. Given the evidence presented to the Panel, the Panel finds that it is highly likely that the Respondent was aware of the Complainant and its INTESA trademark at the time of registering the disputed domain name and specifically targeted the Complainant and its goodwill.

In addition, the Respondent did not submit a Response in this proceeding.  Under the circumstances of this case, this is an additional indication of the Respondent’s bad faith, which was considered by the Panel. 

Accordingly, given the particular circumstances of this case, the reputation of the Complainant’s trademark, and based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s trademark, the typosquatting nature of the disputed domain name and confusing similarity with the Complainant’s trademark, the Respondent’s passive holding and the failure of the Respondent to submit a response, and the fact that there is no plausible good faith use the Respondent can put the disputed domain name to, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.