Decision for dispute CAC-UDRP-106370

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

The Complainant is the owner of various registered trade marks that include or comprise the terms “INTESA SANPAOLO” and “INTESA”.  These include: 

- International trade mark registration n. 920896 for the words “INTESA SANPAOLO”, filed on 7 March 2007 in classes 9, 16, 35, 36, 38, 41 and 42 and which has proceeded to registration in whole or in part in over 60 territories;

- International trade mark registration n. 793367 for “INTESA” as a word mark, filed on 4 September 2002 in class 36 2 and which has proceeded to registration in whole or in part in over 50 territories;

- EU trade mark registration n. 5301999 for “INTESA SANPAOLO” as a word mark, filed on 8 September 2006, granted on June 18, 2007 in classes 35, 36 and 38;

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

The Complainant's banking group has a market capitalisation exceeding 53.7 billion euros.  It has a network of approximately 3,300 branches through out Italy and the group provides services to approximately 13.6 million customers.  The Complainant also has a strong presence in Central-Eastern Europe with a network of approximately 900 branches and over 7.2 million customers.   It also operates an international network specialised in supporting corporate customers which 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 is also the owner, among the others, of the following domain names:  <CLIENTI-INTESASANPAOLO.COM>, <SERVIZICLIENTI-INTESASANPAOLO.COM>, <INTESASANPAOLO-CLIENTI.COM>,  <CLIENTE-INTESASANPAOLO.ONLINE>, <CLIENTE-INTESASANPAOLO.COM>, <ASSISTENZA-INTESASANPAOLO.COM> and <INTESA.COM>, <INTESA.INFO>, <INTESA.BIZ>,< INTESA.ORG>, <INTESA.US>, <INTESA.EU>, <INTESA.CN>, <INTESA.IN>, <INTESA.CO.UK>, <INTESA.TEL>, <INTESA.NAME>, <INTESA.XXX>, <INTESA.ME>.  All of these domain names are connected to the Complainant's official website operating form the URL http://www.intesasanpaolo.com.

On 28 December 2023, the Respondent registered the Domain Name. As at the time the Complaint was filed the webpage operating form the Domain Name was  blocked by Google Safe Browsing resulting in a notice being displayed asserting that this was a dangerous site which was engaged in suspected phishing activity.

The Complainant contends that the requirements of the Policy have been met and that the 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 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 Domain Name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the 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 Panel is satisfied that the Complainant is the owner of a number of registered trade marks that incorporate or include the term "INTESA" including a large number of trade marks that comprise the words “INTESA SANPAOLO”.

In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable within the disputed domain name”; see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0"). The Domain Name can only be sensibly understood as the term “INTESA SANPAOLO” in combination with the ".net “ generic Top-Level Domain. The mark relied upon by the Complainant is, therefore, clearly recognisable in the Domain Name.

The Complainant has, therefore, satisfied the Panel that the Domain Name is confusingly similar to trade marks in which it has rights and has thereby made out the requirements of paragraph 4(a)(i) of the Policy.

The Panel also accepts that it is clear from the form of the Domain Name alone that the Domain Name has been deliberately chosen as involving a reference to the Complainant's business and marks.   There is no other obvious explanation for the registration of a domain name that comprises little more than the Complainant's name and the Complainant's marks. 

Further, the Panel accepts the Complainant's contention evidenced by a Google Safe Browsing blocking page, that the Domain Name has more likely than not been registered and is being held for phishing purposes.   Essentially, it is therefore being alleged, and the Panel accepts, that the Domain Name was registered and held by the Respondent with the intention of impersonating the Complainant both through the Domain Name itself and on a webpage operating from the Domain Name, and that has been done in order to further some form of fraudulent activity. 

There are no rights or legitimate interests in holding a domain name for the purpose of engaging in such fraudulent impersonation.  Further, the registration and use of a domain name for such a purpose involves registration and use in bad faith (see, for example, Vestey Group Limited v. George Collins, WIPO Case No. D2008-1308).

Further and in any event the Panel accepts that the Domain Name has been registered and held with the intention of using it to take some form of unfair advantage of the Complainant's marks. It is difficult to conceive of any use of the Domain Name that would not do so. This is sufficient for the Panel to conclude that the Domain Name was registered and is being held in bad faith (see 3.1 of the "WIPO Overview 3.0"). There is also no right or legitimate interest in holding a Domain Name for the purpose of taking unfair advantage of the mark of another and such a finding, is also positive evidence that no right or legitimate interest exists (see section 2.15 of the WIPO Overview 3.0).

In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) and (iii) of the Policy