Decision for dispute CAC-UDRP-107091

The Panel is unaware of any pending or decided legal proceedings relating to the disputed domain name.

The Complainant is the owner, among others, of the following registrations for the trademarks “IN BIZ” and “INTESA SANPAOLO”:

International trademark registration n. 1024681 “IN BIZ”, granted on November 5, 2009 and duly renewed;

International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007 and duly renewed;

EU trademark registration n. 8611287 “IN BIZ”, granted on March 8, 2010 and duly renewed;

EU trademark registration n. 5301999 “INTESA SANPAOLO”, granted on June 18, 2007 and duly renewed.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

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 Italian banking groups.

Intesa Sanpaolo is among the top banking groups in the euro zone, with a market capitalisation exceeding 70,1 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 3,300 branches capillary and well distributed throughout the Country, with market shares of more than 15% in most Italian regions, the Group offers its services to approximately 13,7 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 900 branches and over 7,5 million customers. Moreover, the international network specialized in supporting corporate customers 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. 

Moreover, the Complainant is also the owner, among the others, of the following domain names bearing the signs “IN BIZ” and “INTESA SANPAOLO”: <INBIZ.APP>, .SK, .ORG, <INBIZ-INTESA.COM>,         <INBIZINTESASANPAOLO.COM>, <INBIZSANPAOLO.COM>, .IT, <INTESASANPAOLO.COM>, .INFO, .BIZ, .ORG, .ONLINE, .EU, .IT.

On April 30, 2024, the Respondent registered the disputed domain name.

COMPLAINANT

1. THE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS

It is more than obvious that the disputed domain name is identical, or – at least – confusingly similar, to the Complainant’s trademarks “IN BIZ” and “INTESA SANPAOLO”. As a matter of fact, <LNBIZ-INTESASNAPAOLO.COM> exactly reproduces the well-known trademarks “IN BIZ” and “INTESA SANPAOLO”, with the mere substitution of the first letter “I” with an “L” in the term “IN BIZ” and the inversion of letters “A” and “N” in the mark’s verbal portion “SAN”, representing a clear example of typosquatting and creating confusion for Internet users and Complainant’s customers, who might think that the domain is connected to the Complainant, which is not true.

WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user – particularly when the mark is another language from that of the user’s mother tongue.” The same case lies before us in this matter.

2. THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME

The Respondent has no rights on the disputed domain name, and any use of the trademarks “IN BIZ” and “INTESA SANPAOLO” 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 and, to the best of our knowledge, the Respondent is not commonly known as “LNBIZ-INTESASNAPAOLO”.

Lastly, we do not find any fair or non-commercial uses of the disputed domain name.

3. THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH

The disputed domain name was registered and is used in bad faith.

The Complainant’s trademarks “IN BIZ” and “INTESA SANPAOLO” 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 “INBIZ”, “INTESA SANPAOLO” and “LNBIZ INTESASNAPAOLO”, the same would have yielded obvious references to the Complainant. This raises a clear inference of knowledge of the Complainant’s trademark on the part of the Respondent. Therefore, it is more than likely that the domain name at issue would not have been registered if it were not for Complainant’s trademark. This is a clear evidence of registration of the domain name in bad faith.

In addition, the disputed domain name is not used for any bona fide offerings. More particularly, there are circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (par. 4(b)(i) of the Policy).

The disputed domain name is not used for any bone fide offerings, even if it is not connected to any web site, by now. In fact, countless UDRP decisions confirmed that the passive holding of a domain name with knowledge that the domain name infringes another party’s trademark rights is evidence of bad faith registration and use.

In particular, the consensus view of WIPO UDRP panellists is that passive holding of a disputed domain name may, in appropriate circumstances, be consistent with a finding of bad faith. However, panels have tended to make such findings in circumstances in which, for example, a complainant’s mark is well-known, and there is no conceivable use that could be made of the domain name that would not amount to an infringement of the complainant’s trade mark rights.

As regards to the first aspect, the Complainant has already extensively proved the notoriety of its trademarks. For what concern the second circumstance, it must be underlined that it is objectively not possible to understand what kind of use the Respondent could make with a domain name which does exactly correspond to the Complainant’s trademarks and that results so similar to the Complainant’s domain names currently used by the latter to provide online banking services for enterprises.

In the light of the above, the present case completely matches to the above requirements and the passive holding of the contested domain name has to be considered a use in bad faith.

The risk of a wrongful use of the domain name at issue is even higher in the present case, since the Complainant has already been targeted by some cases of phishing in the past few years. Such a practice consists of attracting the customers of a bank to a web page which imitates the real page of the bank, with a view to having customers disclose confidential information like a credit card or bank account number, for the purpose of unlawfully charging such bank accounts or withdrawing money out of them. It happened that some clients of the Complainant have received e-mail messages asking, by the means of web pages which were very similar to the Complainant’s ones, the sensitive data of the Clients, like user ID, password etc. Then, some of the Clients have been cheated of their savings.

Also, in the present case, the Complainant believes that the current owner registered the disputed domain name with the “phishing” purpose, in order to induce and divert the Complainant’s legitimate customers to its website and steal their money and the above could be easily verified given the particular nature of the disputed domain name (typosquatting).

Even excluding any “phishing” purposes or other illicit use of the disputed domain name in the present case, anyway we could find no other possible legitimate use of <LNBIZ-INTESASNAPAOLO.COM>. The sole further aim of the owner of the disputed domain name might be to resell it to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, according to par. 4(b)(i).

In the light of the above, the third and final element necessary for finding that the Respondent has engaged in abusive domain name registration and use has been established.

RESPONDENT

No administratively compliant Response has been filed.

To the satisfaction of the Panel, the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

To the satisfaction of the Panel, the Complainant has 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).

To the satisfaction of the Panel, the Complainant has 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 have been met, and there is no other reason why it would be unsuitable to provide the Decision.

1. Identical or Confusingly Similar

This case relates to two trademarks owned by the Complainant, namely, “IN BIZ” and “INTESA SANPAOLO”. The Panel will include both of these in the analysis. In this case, the Panel is satisfied that the Complainant has shown it owns rights in the “INTESA SANPAOLO” trademark, with the earliest registration dating back to 2007, and “IN BIZ”, with the earliest registration dating back to 2009.

Turning now to the analysis of the confusing similarity between the disputed domain name and the Complainant’s trademarks, the Panel notes the following. Based on the record at hand, the Panel notes that the disputed domain name appears to reproduce both trademarks, namely “IN BIZ” and “INTESA SANPAOLO” in the disputed domain name, however, with a couple of differences worth noting. The first difference is a change in the first letter of the first element in the disputed domain name, namely "L" instead of "I". This is a textbook case of typosquatting. The second difference is that in the second element of disputed domain name, the letter “S” and “A” have been interchanged to spell “SNA” instead of “SAN”.

These changes are not substantive enough to dispel the confusing similarity between the first disputed domain name and the Complainant's trademarks. The appearance of use of two trademarks registered by the Complainant, notwithstanding the slight typosquatting differences, may enhance the confusing similarity with the Complainant's trademarks because it could capitalize on the confusion to lure unsuspecting e-banking clients. However, further analysis will be discussed under the subsequent elements below.

Based on this, the Panel finds the disputed domain name is confusingly similar to the Complainant's trademarks. As a result, the Panel determines that the Complaint has satisfied the first element set under paragraph 4(a)(i) of the Policy.

2. Rights or Legitimate Interests

Based on the evidence on record, and acknowledging that the Respondent failed to produce allegations or evidence necessary to demonstrate its rights or legitimate interests in the disputed domain name, the uncontested facts indicate that a) the Respondent is not authorized or licensed to carry out any activity for the Complainant; b) the Respondent is not affiliated with the Complainant and c) the Respondent is not commonly known by the disputed domain name.

In the Panel view, these assertions are enough to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name (see 2.1 of WIPO 3.0 Overview).

Based on the above and the probability balance, it is difficult to conceive the Respondent having rights or legitimate interest in the disputed domain name. This is closely linked to the potential of having fair or non-commercial uses of the disputed domain name; however, this analysis is better suited under the third element.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the Complainant has fulfilled the second requirement set under paragraph 4(a) of the Policy.

3. Registered and Used in Bad Faith

As per the record and evidence at hand, the Panel finds that the Respondent was likely aware of the Complainant and targeted the Complainant's trademark when registering the disputed domain name. This conclusion is reinforced on the balance of probabilities and by the fact that the Respondent most likely appears to evoke a connection to the Complainant's trademark by including two trademarks of the Complainant in its entirety, with a few changes as specified under the analysis of the first element above, which likely appears to capitalize on the confusion to lure unsuspecting e-banking clients to the disputed domain name.

These circumstances in conjunction more than likely indicate that the Respondent was aware of the Complainant and specifically targeted the Complainant to attract, "for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location" as clearly described under paragraph 4(b) of the Policy and 3.1 of WIPO 3.0 Overview.

In light of the case's circumstances, based on the available records, the Panel finds that the Complainant has proven that the disputed domain name was registered and is used in bad faith according to paragraph 4(a)(iii) of the Policy.

4. Decision

For the preceding reasons and as per the provisions contained under Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders the transfer of the disputed domain name to the Complainant.