Decision for dispute CAC-UDRP-106620

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 relies on the following trademark registrations:

• International registration no. 920896 for the mark INTESA SANPAOLO granted on 7 March 2007 in classes 9, 16, 35, 36, 38, 41 and 42;
• EU registration no. 5301999 for the mark INTESA SANPAOLO filed on 8 September 2006 in classes 35, 36 and 38;
• International registration no. 793367 for the mark INTESA granted on 4 September 2002 in class 36;
• EU registration no. 12247979 for the mark INTESA filed on 23 October 2013 in classes 9, 16, 35, 36, 38, 41 and 42.

The Complainant is the leading banking group in Italy and one of the leading banking groups in Europe. It is the proprietor of the registered trademarks identified above. It is also the owner of numerous domain name registrations containing the name intesasanpaolo, including <intesasanpaolo.com>, <intesasanpaolo.org>, <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.net> and <intesasanpaolo.biz>.

The Respondent registered the disputed domain name <intesasanpaolo99.com> on 20 May 2024. It does not locate any web page.

The Complainant's attorneys sent a cease and desist letter to the Respondent on 29 May 2024, requesting the voluntary transfer of the disputed domain name. The Respondent did not reply or comply.

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 Panel finds that the Complainant has registered rights in the marks INTESASANPAOLO and INTESA. 

The Panel is also satisfied that the disputed domain name is confusingly similar to the mark INTESASANPAOLO, from which it differs only in the addition of "99" and the generic top level domain suffix, .com, which is generally discounted in making the assessment required by the first requirement of the UDRP.

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 notes that the disputed domain name does not resolve to any web page, which indicates that the Respondent has not used it or made preparations to use it for a bona fide offering of goods or services or for a legitimate non-commercial or fair use.

The Respondent does not appear to be commonly known by the disputed domain name or any corresponding name, and it is improbable that the Respondent is commonly known by such an unusual name.

The Complainant has confirmed that it has not authorised or licensed the Respondent to register or use the disputed domain name.

On the undisputed the evidence, 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.

Given the extent of the Complainant's business and the distinctive character of its primary mark, the Panel considers that on the balance of probabilities the Respondent knew of the Complainant's mark and registered the disputed domain name in bad faith. The Panel is also satisfied that the Respondent's retention of the disputed domain name since then, despite the Complainant's attorneys' cease and desist letter, has been a passive use in bad faith.

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.

Disputed domain name contains the principal mark of a leading banking group in its entirety, followed by "99" and the generic top level domain name suffix. No signs of any use of the disputed domain name by the Respondent or any right or legitimate interest possessed by the Respondent. Given the size of the Complainant's business and distinctiveness of the mark, the Panel finds it likely that the Respondent registered and has at least passively used the disputed domain name in bad faith.