Decision for dispute CAC-UDRP-106619

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 has evidenced to be the owner of numerous trademarks relating to its company name and brand INTESA, including, but not limited to the following:

- Word trademark INTESA, International Registration (WIPO), registration No.: 793367, registration date: September 4, 2002, status: active;

- Word trademark INTESA, European Union Registration (EUIPO), registration No.: 012247979, registration date: March 5, 2016, status: active.

Also, the Complainant has substantiated to own, inter alia, the domain name <intesa.com>, which resolves to the Complainant’s main website at “www.intesasanpaolo.com”, used to promote the Complainant’s products and services in the financial industry.

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.

The Panel finds that the disputed domain name <intesaid.com> is confusingly similar to the Complainant’s INTESA trademark, as it incorporates the latter in its entirety, simply added by the term “id” (as an abbreviation of the term “identification”). Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark. Moreover, it has also been held in many UDRP decisions and has meanwhile become a consensus view among UDRP panels that the mere addition of descriptive or other terms, such as e.g. the term “id”, is not capable to dispel the confusing similarity arising from such entire incorporation of the Complainant’s INTESA trademark in the disputed domain name.

Therefore, the Complainant has established the first element under the Policy as set forth by paragraph 4(a)(i).

Also, the Complainant contends, and the Respondent has not objected to these contentions, that the Respondent has neither made use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known under the disputed domain name, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. On the contrary, by the time of rendering this decision, the disputed domain name resolves to an Internet presence which has been technically blocked for reasons of suspected illegal activities thereunder, and Complainant has provided evidence that the same was true even before the filing of the Complaint, e.g. on June 20, 2024. Such making use of the disputed domain name, obviously in a fraudulent manner, neither qualifies as a bona fide nor as a legitimate noncommercial or fair use under the Policy and may, therefore, not of itself confer rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

Finally, the Panel holds that the disputed domain name was registered and is being used by the Respondent in bad faith. From the circumstances to this case, it is more likely than not that the Respondent was well-aware of the Complainant’s rights in the undisputedly well-known INTESA trademark when registering the disputed domain name, and that the latter is directly targeting such trademark. Moreover, carrying out some kind of unlawful activities under the disputed domain name, which is confusingly similar to the Complainant’s INTESA trademark, leaves no serious doubts that the Respondent, by registering and making use of this disputed domain name, had the intention to somehow unjustifiably profit from the undisputed reputation attached to the Complainant’s INTESA trademark, and, thus, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainant’s INTESA trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Therefore, the Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).