Decision for dispute CAC-UDRP-107166

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 owns a portfolio of trademarks for both INTESA and INTESA SANPAOLO in several jurisdictions. As such, and by way of example, INTESA trademark is registered before the European Union Intellectual Property Office with number 012247979, registered on March 5, 2014 or, INTESA SANPAOLO with registration number 5301999, registered on June 18, 2.007.

The Complainant is one of the leading Italian banking Group offering services to approximately 13.7 million customers through its 3.300 branches.

INTESA and INTESA SANPAOLO trademarks are to be considered as well-known for UDRP purposes.

The Complainant owns a portfolio of domain names. As such, <Intesa.com>, <Intesa.org> or <Intesa.info>.

The disputed domain name <intesainv.com> was registered on August 26, 2024 and redirects internet users to websites featuring links to third-party websites (pay-per-click) competing with the Complainant’s business.

THE COMPLAINANT 

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

In particular, the Complainant alleges that the disputed domain name is composed by the Complainant’s trademark INTESA in its entirety with the mere addition of the term “inv” which seems to be an abbreviation of “invest” or “investment”.

The Complainant also contends that none of the circumstances depicted in paragraph 4 (c) of the Policy applies in this case. Indeed, the Complainant alleges that the Respondent has not been authorized or licensed to use its marks in a corresponding domain name, there is no evidence that the Respondent is commonly kwon by “intesainv” or, the lack of fair or non-commercial use of the disputed domain name.

Furthermore, Complainant´s trademark is well-known and the pay-per-click page meets paragraph 4(b)(iv) of the Policy. Thus, registration and use are in bad faith.

THE RESPONDENT

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.

1. Identical or Confusingly Similar

The Complainant has shown rights in respect of INTESA trademark for the purposes of the Policy. It is apparent that the mark INTESA is reproduced in the disputed domain name <intesainv.com>.   

The Panel accepts that the term “inv” is related to “invest” or “investment” as alleged by the Complainant. The addition of a generic term, as “inv”, does not prevent confusing similarity.

The applicable Top Level Domain (‘TLD’) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element test.

The Panel finds the first element of the Policy has been established.

1. Rights or Legitimate Interest

Paragraph 4(c) of the Policy sets out non-exclusive examples in which the Respondent may establish rights or legitimate interests in the disputed domain name. However, while the burden of proof in UDRP proceedings rests on the complainant, panels have recognized that proving a respondent lack or rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”. Accordingly, panels have established, since the inception of the UDRP, that it is sufficient to raise a prima facie case against the respondent and then the evidential burden of production shifts to the respondent. See CAC-UDRP-106452.

The Panel finds that the circumstances referred in paragraph 4(c) do not apply for the Respondent or, even any other legitimate circumstance which may apply in favor to the Respondent. Indeed, the composition of the disputed domain name supports a finding of impersonation which cannot grant rights or legitimate interests.

The Panel also notes the well-known value of the INTESA OR INTESA SANPAOLO trademarks as well as the use of pay-per-click (“PPC”) links in the corresponding site to which the disputed domain name redirects. These circumstances prevent the Panel from recognizing rights or legitimate interest in favour of the Respondent.

Besides, the silence of the Respondent, once received the Complaint, has avoided the Panel to assess if any circumstances may oppose to the Complainant´s prima facie showing.

The Panel finds the second element of the Policy has been established.

3. Register and Used in Bad Faith

Noting that bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark, the Panel now looks at the third requirement of the test.

By registering the disputed domain name that reproduces Complainant’s well-known trademark, the Respondent targeted the Complainant. Accordingly, the Panel determines that the Respondent knew or should have known about the Complainant and its trademarks when registering the disputed domain name. This prior knowledge is strengthened by the subsequent redirection to a website featuring links of third parties’ which are competitors to the Complainant.

Besides, the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the websites linked to the disputed domain name. That is to say, the Respondent is trying to bait Internet users and redirect them to PPC websites where, purportedly, he is obtaining revenues. Such activity is considered to be in bad faith under paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant has established the third element of the Policy.