Decision for dispute CAC-UDRP-107170

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 trademarks “INTESA SANPAOLO” and “INTESA”:

- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007 and duly renewed, in connection with classes 9, 16, 35, 36, 38, 41 and 42;

- International trademark registration n. 793367 “INTESA”, granted on September 4, 2002 and duly renewed, in connection with class 36;

- EU trademark registration n. 5301999 “INTESA SANPAOLO”, filed on September 8, 2006, granted on June 18, 2007 and duly renewed, in connection with the classes 35, 36 and 38;

- EU trademark registration n. 12247979 “INTESA”, filed on October 23, 2013 and granted on March 5, 2014, in connection with classes 9, 16, 35, 36, 38, 41 and 42.

On August 12, 2024, the Respondent registered the disputed domain name <INTESASANPAO-VERIFICAZIONE.NET>.  That domain has apparently not resolved to any website since it was registered.

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 is confusingly similar to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. Indeed, <INTESASANPAO-VERIFICAZIONE.NET> exactly reproduces the well-known trademark “INTESA SANPAOLO”, with the mere omission of letters “L” and “O” in the mark’s verbal portion “PAOLO” and the addition of the Italian term “VERIFICAZIONE” (meaning “VERIFICATION”), an expression used by the Complainant for the security of its clients’ bank accounts. It follows that it is confusing and misleading for Internet users, who might think that <INTESASANPAO-VERIFICAZIONE.NET> is somehow connected to Intesa Sanpaolo S.p.A., which is not true.

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 alleges that the Respondent has no rights to the disputed domain name, and that nobody has been authorized or licensed by the Complainant to use the disputed domain name. The disputed domain name does not correspond to the name of the Respondent. There also does not appear to be any legitimate use of the disputed domain name to date. The Respondent has failed to respond to the Complaint, and thus has failed to provide any justification for registering or using the disputed domain name. The Panel finds that the Complainant has established this element of the Policy by presenting evidence and argument sufficient to shift the burden of proof to the Respondent -- who has failed to appear.

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 asserts that its trademarks “INTESA SANPAOLO” and “INTESA” are distinctive and well known all around the world. The fact that the Respondent has registered the disputed domain name that is confusingly similar to the Complainant's marks indicates that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name.

While there is no evidence that the disputed domain name has been put to any actual use to date, the Complainant correctly asserts that the consensus view of UDRP panellists is that passive holding of a disputed domain name may, in appropriate circumstances, be consistent with a finding of bad faith. Under the Telstra precedent and progeny, Panels have tended to make such findings in circumstances in which 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. Here, the Complainant sufficiently alleges that its marks are well-known, at least in Europe where Respondent is purportedly located. Furthermore, given the nature of the disputed domain name which includes the Italian word for "verification" in connection with the trademarks of a well-known banking group, the Panel agrees that there is no conceivable good faith use of the disputed domain name. It is far more likely that the disputed domain has been registered and is being held with nefarious intention to commit fraud or crime. The Respondent has not appeared to offer any purported justification. Therefore, the Panel finds that Complainant has adequately established this element 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.

There is no conceivable good faith use of the disputed domain name. It is far more likely that the disputed domain name has been registered and is being held with nefarious intention to commit fraud or crime.