Decision for dispute CAC-UDRP-107088

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 owner, among others, of the following registrations for the trademark “PBZ” and different trademarks made up of the combination of the word “PBZ” and other financial indications, such as “CARD”, “LEASING”, “INVEST” etc.:

- EU trademark registration n. 6661995 “PBZ”, applied on February 12, 2008, granted on July 31, 2009 and duly renewed in classes 9, 16, 35, 36, 41 and 42;

- Croatian trademark registration n. Z20080496 “PBZ”, applied on March 7, 2008, granted on March 19, 2009 and duly renewed, in classes 9, 16, 35, 36, 41 and 42;

- EU trademark registration n. 6771349 “PBZ CARD”, applied on March 21, 2008, granted on July 21, 2009 and duly renewed in classes 9, 16, 35, 36, 41 and 42;

- Croatian trademark registration n. Z20080735A “PBZ CARD”, applied on April 11, 2008, granted on March 18, 2009 and duly renewed, in classes 35 and 36;

- Croatian trademark registration n. Z20080738A “PBZ LEASING”, applied on April 11, 2008, granted on March 19, 2009 and duly renewed, in classes 35 and 36;

- Croatian trademark registration n. Z20080736 “PBZ INVEST”, applied on April 11, 2008, granted on March 18, 2009 and duly renewed, in classes 35 and 36;

- EU trademark registration n. 10528339 “PBZ GROUP”, applied on December 27, 2011, granted on May 9, 2012 and duly renewed in classes 9, 16, 35, 36, 41 and 42;

- Croatian trademark registration n. Z20120012 “PBZ GROUP”, applied on January 5, 2012, granted on October 23, 2012 and duly renewed, in classes 35, 36 and 38.

The Complainant is the leading Italian banking group and also one of the protagonists in the European financial area. Intesa Sanpaolo is the company 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. One of the Complainant’s most renown subsidiaries is Privredna banka Zagreb d. d. (widely known as “PBZ”) and it represents Croatia’s top bank, with a long and continuous history of banking operations. Established in 1966 as legal successor of Banka NRH, PBZ has been supporting major investment programs for the development of tourism, agriculture, industry, shipbuilding, electrification and road building, and has become a byword for the economic vitality, continuity and identity of Croatia. In January 2007 Privredna banka Zagreb became a member of the Intesa Sanpaolo Group. PBZ covers the entire territory of the Republic of Croatia through 190 branch offices and over 1.000 ATMs and it has received a number of prestigious international and Croatian awards for excellence.

On July 30, 2024, the Respondent registered the disputed domain name PBZLOAN.COM.

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 disputed domain name contains Complainant's trademark in full. The addition of the generic term loan does not preclude but rather enhance the risk of confusion / likelihood of association with the Complainant’s trademark and company name. Therefore, the disputed domain name is confusingly similar to Complainant's trademark.

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 Respondent has no rights on the disputed domain name, and any use of the trademark “PBZ” has to be authorized by the Complainant. Nobody has been authorized or licensed by the above-mentioned banking group to use the domain name at issue. The domain name at stake does not correspond to the name of the Respondent. The Respondent is not commonly known by the name “PBZ” or “PBZLOAN,” nor is there any evidence that the Respondent has been authorized to use the Complainant’s trademark.

• The trademark “PBZ” has achieved distinctiveness in connection with the Complainant's business, despite its brevity.  The Respondent’s use is not coincidental or generic but appears targeted to trade on the Complainant’s established goodwill and reputation. The Respondent’s domain name “PBZLOAN” incorporates the Complainant’s trademark “PBZ” in its entirety, combined with the word “loan,” which directly relates to the Complainant’s core financial services.This combination is unlikely to be coincidental and appears designed to create an impression of affiliation with the Complainant.

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 Complainant’s trademarks “PBZ” and “PBZ GROUP” are distinctive and well known all around the world. The fact that the Respondent has registered a domain name that is confusingly similar to them indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. In addition, if the Respondent had carried even a basic Google search in respect of the wordings “PBZ”, “PBZ GROUP” and “PBZ LOAN”, the same would have yielded obvious references to the Complainant. 

In addition, the disputed domain name is not used for any bone fide offerings. More particularly, there are present circumstances indicating that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site (par. 4(b)(iv) of the Policy). First of all, several services can be detected, but not in good faith: in fact, the disputed domain name is connected to a Russian language website using the trademarks “PBZ” to promote financial services, for which the Complainant’s trademarks have been registered and are used.

Consequently, Internet users, while searching for information on the Complainant’s services, are confusingly led to the website of the Respondent.

 Therefore, the Respondent has registered and is using the disputed domain name at issue in order to intentionally divert traffic away from the Complainant’s web site and to gain advantage from Complainant’s activity, investments and reputation.

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 current use of the disputed domain name, which allows accessing to the web site of the Respondent where the Complainant´s trademark is displayed, causes great damages to the latter, due to the misleading of their present clients and to the loss of potential new ones (see WIPO Decisions n. D2000-1500, Microsoft Corporation v. StepWeb, and D2001-1335, The Vanguard Group, Inc v. Venta).