Decision for dispute CAC-UDRP-105658

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 registered proprietor of the trademarks “INTESA SANPAOLO” and “GRUPPO INTESA SANPAOLO” and has the following registered marks:

- An International trademark no. 920896 for the word mark “INTESA SANPAOLO”, granted on 7 March 2007 in classes 9, 16, 35, 36, 38, 41 and 42;

- An EUTM no. 5301999 for the word mark “INTESA SANPAOLO”, filed on 8 September 2006 and granted on 18 June 2007 in classes 35, 36 and 38;

- An EUTM no. 5344544 for the word mark “GRUPPO INTESA SANPAOLO”, applied for on 28 September 2006 and granted on 6 July 2007 in classes 35, 36 and 38.

The Complainant is also the owner, among the others, of the following domain names: intesasanpaolo.com, .org, .eu, .info, .net, .biz, intesa-sanpaolo.com, .org, .eu, .info, .net, .biz, intesasanpaolo-it-login.com, intesasanpaolo-login.com, intesa-sanpaolo-secure-login.com, gruppointesasanpaolo.it, .com, gruppointesasanpaolo.eu, gruppointesasanpaolo.info, gruppointesasanpaolo.biz, gruppointesasanpaolo.net and gruppointesasanpaolo.org.

All of which are directed to the official website at http://www.intesasanpaolo.com.

The Complainant is a leading Italian banking group and among the top banking groups in the euro zone with a strong presence in Central-Eastern Europe. It has a market capitalisation of around 44 billion euro. It has a network of approximately 3,500 branches and a market share of more than 16% in Italy. It has approximately 13.6 million customers. It also has an international network specialised in supporting corporate customers 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 Respondent is a resident of China and registered the disputed domain name on 15 May 2023. 

The page from the disputed domain name in evidence shows it is currently blocked by Google Safe Browsing because of a suspected phishing activity.

COMPLAINANT:

The Complainant says the disputed domain name at issue is identical, or confusingly similar, to the Complainant’s trademarks and GROUPPO-LNTESASANPAOLO-LOGIN.COM represents a typosquatting version of the well-known trademark “GRUPPO INTESA SANPAOLO”, due to the mere addition of a letter “O” in the “GRUPPO”, and the substitution of the letter “I” in the word “INTESA” with an “L” and the addition of the term “LOGIN”. The Complainant cites WIPO decision Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc, Case n. D2001-1314.

The Complainant says the Respondent has no rights or legitimate interests to the disputed domain name. It has not been authorized or licensed by the Complainant to use the name and marks. The Respondent is not known by the disputed domain name not in the WHOIS or elsewhere. Nor is it making any fair or non-commercial use of the disputed domain name.

The Complainant says the disputed domain name was registered and is used in bad faith. The webpage connected to the disputed domain is currently blocked by Google Safe Browsing because of a suspected phishing activity. It was registered with knowledge of the Complainant and is not used for any bone fide offering. It cites Halifax Plc. v. Sontaja Sanduci, WIPO Case No. D2004-0237 and also CarrerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251, WIPO Case No. D2012-2093, The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado) and WIPO Case No. D2006-0614, Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa and 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.

RESPONDENT:

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.

The Complainant’s trademarks are registered and are well-known marks. There is no question that the Complainant has rights to the names and marks “INTESA SANPAOLO” and “GRUPPO INTESA SANPAOLO”,. There is also no question that the disputed domain name is confusingly similar to those marks.

This is classic typo squatting –only two characters differ in comparison to the marks, an extra O and L. Additional generic words such as login, either add nothing or compound the confusion and the impersonation.  The suffix is not relevant at this factor but impacts the second and third limbs and can add to the impersonation.

The Complainants’ burden under the second limb of the Policy is to make a prima facie case for the Respondent to rebut. See Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455. Past panels have held that a Respondent was not commonly known by a disputed domain name if the WHOIS information was not similar to the disputed domain name. See Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com>. The Respondent is not shown by the name and marks in the WHOIS. No right or legitimate purpose appears on the face of the matter. While passive holding is fact sensitive, here there are few relevant facts on the face of it and the Respondent has not come forward to explain his reasons for registration and holding. In such a case, the Panel is entitled to draw such inferences as are appropriate and they are that registration was not for a legitimate purpose or interest. The Respondent has therefore been granted an opportunity to come forward and answer or present compelling arguments that he has rights or legitimate interests in the disputed domain name but has failed to do so. The Complainant has discharged its burden.

It is clear that the only purpose of the registration and use can be for phishing as evidenced by the Complainant. As a calculated and deliberate activity with criminal intent it is clearly paradigm bad faith.