Decision for dispute CAC-UDRP-106618

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 leading Italian banking group 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.

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).

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.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)    the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2)    the Respondent has no rights or legitimate interests in respect of the domain name; and
(3)    the domain name has been registered and is being used in bad faith.

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at paragraph 4.3.

As to the first element, the Panel finds that the disputed domain name <intesanpaolo.com> is confusingly similar to the Complainant’s very well-known INTESA and INTESA SANPAOLO trademarks, since it includes the INTESA mark in its entirety and, in a clear example of typosquatting, merely omits the letters “sa” from the INTESA SANPAOLO mark, which is insufficient to distinguish the disputed domain name from the marks.  The inconsequential gTLD “.com” may be ignored.

As to the second element, paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i)     before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)     the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii)     the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Complainant asserts that the Respondent is not commonly known by the disputed domain name; has no rights or legitimate interests in respect of the disputed domain name and neither licence nor authorization has been granted by the Complainant to the Respondent to make any use of the Complainant’s INTESA and INTESA SANPAOLO trademarks nor to use the disputed domain name. The Respondent is making no fair or non-commercial use of the disputed domain name, which was registered on March 14, 2024, many years after the Complainant has shown that its INTESA and INTESA SANPAOLO trademarks had become very well-known. The webpages connected to the disputed domain name are currently blocked by Google Safe Browsing due to a suspected phishing activity.

These circumstances are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). The Respondent has made no attempt to do so. 

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

As to the third element, given the distinctiveness of the Complainant's trademarks and reputation, the Panel infers that the Respondent registered what is clearly the deliberately typosquatted <intesanpaolo.com> domain name in bad faith with full knowledge of the Complainant's trademarks and is using it in bad faith intentionally to operate a phishing scheme and/or otherwise to mislead Internet users into the erroneous belief that the disputed domain name is associated with the Complainant. 

Accordingly, the Panel concludes that the Respondent has registered the disputed domain name and is using it in bad faith.