Decision for dispute CAC-UDRP-107314

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name <INTESAGROUPLLC.COM>.

The Complainant states and provides evidence to support that it is the owner, among others, of multiple trademark registrations for the trademarks “INTESA” and “GRUPPO INTESA”:

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

- 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;

- EU trademark registration n. 779827 “GRUPPO INTESA”, applied on September 28, 2006, granted on July 6, 2007 and duly renewed, in classes 9, 16, 36, 41 and 42.

Moreover, the Complainant is also the owner, among the others, of the following domain names bearing the signs “INTESA” and “GRUPPO INTESA”: INTESA.COM, INTESA.INFO, INTESA.BIZ, INTESA.ORG, INTESA.US, INTESA.EU, INTESA.CN, INTESA.IN, INTESA.CO.UK, INTESA.TEL, INTESA.NAME, INTESA.XXX, INTESA.ME, GRUPPOINTESA.IT, .COM, .NET, .ORG, .EU, .US, INTESAGROUP.COM, .EU, .INFO and .CLOUD. All of them are now connected to the official website http://www.intesasanpaolo.com.

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.

The Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 74,7 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 3,000 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 13,9 million customers.

The Complainant 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 specialised 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.

The disputed domain name <INTESAGROUPLLC.COM> was registered on November 20, 2024. 

COMPLAINANT:

1. The disputed domain name is confusingly similar to the protected mark

According to the Complainant, the Respondent’s registered disputed domain name is identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA” and “GRUPPO INTESA”. Essentially, <INTESAGROUPLLC.COM> exactly reproduces the Complainant's well-known trademark “INTESA”, with the mere addition of the term “GROUP” (meaning “GRUPPO” in Italian, with obvious references to Complainant’s trademark “GRUPPO INTESA” and to the well-known “Intesa Sanpaolo Group”) and letters “LLC” (representing a type of company structure, being misleading and creating confusion for Internet users). Furthermore, a basic Google search of the term “INTESA GROUP LLC” yields results that include or refer to the Complainant, further illustrating the likelihood of confusion among Internet users.

2. Respondent does not have any rights or legitimate interest in the disputed domain name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Any use of the trademarks “INTESA” and “GRUPPO INTESA” must be authorized or licensed by the Complainant. In this case, no such authorization or license has been granted by the Complainant for the use of the disputed domain name.

Moreover, the disputed domain name does not correspond to the name of the Respondent, and, to the best of the Complainant’s knowledge, the Respondent is not commonly known by the name “INTESAGROUPLLC”.

Finally, the Complainant has identified no evidence of fair use or non-commercial use of the disputed domain name by the Respondent. 

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Any use of the trademarks “INTESA” and “GRUPPO INTESA” must be expressly authorized or licensed by the Complainant. In this case, no such authorization or license has been granted by the Complainant or its affiliated banking group for the use of the disputed domain name.

3. The disputed domain name has been registered and is being used in bad faith

The Complainant claims that the disputed domain name was registered and used in bad faith. The Complainant’s trademarks “INTESA” and “GRUPPO INTESA” are distinctive and well-known worldwide. The fact that the Respondent has registered a domain name that is confusingly similar to them indicates that the Respondent knew of the Complainant’s trademark at the time of registration of the disputed domain name.

The Complainant contends it is evident from a basic Google search concerning the wordings “INTESA” and “GRUPPO INTESA” 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 disputed domain name would not have been registered if it were not for Complainant’s trademark. This is evidence of registration of the disputed domain name in bad faith.

Also, the disputed domain name is not used for any bona fide offerings. More particularly, the Complainant presents that the webpage connected to the disputed domain name is currently blocked by Google Safe Browsing because of suspected “phishing” activity. The Complainant argues that the main purpose of the Respondent was to use the above website for “phishing” financial information in an attempt to defraud the Complainant’s customers and that Google promptly stopped the illicit activity carried out by the Respondent.

Even excluding any “phishing” purposes or other illicit use of the disputed domain name in the present case (which however, has been confirmed by Google Safe Browsing with a warning page), the Complainant claims there is no other possible legitimate use of the disputed domain name. The sole further aim of the Respondent under consideration might be to resell it to the Complainant, which represents, in any case, evidence of the registration and use in bad faith, according to par. 4(b)(i).

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

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.

The UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY of the Internet Corporation for Assigned Names and Numbers (ICANN) (the “Policy”) provides that a complainant must prove each of the following to obtain transfer or cancellation of a domain name:

1. that respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

2. that respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

1) The disputed domain name is confusingly similar to a trademark in which the Complainant has rights (Para.4(a)(i) of the Policy).

The Complainant has submitted evidence establishing its ownership of several registered trademarks for “INTESA” and “GRUPPO INTESA” in multiple jurisdictions. The disputed domain name <INTESAGROUPLLC.COM> incorporates the Complainant’s well-known trademark “INTESA” in its entirety, with the mere addition of the term “GROUP” (which translates to “GRUPPO” in Italian and is clearly evocative of the Complainant’s trademark “GRUPPO INTESA”) and the corporate identifier “LLC”. These additions do not prevent a finding of confusing similarity. On the contrary, they increase the likelihood of confusion by suggesting a business entity affiliated with the Complainant.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks “INTESA” and “GRUPPO INTESA”. The term “GROUP” mirrors the Italian word “GRUPPO” and therefore reinforces the association with the Complainant’s trademark “GRUPPO INTESA”. The addition of the term “LLC” to the disputed domain name does not dispel the confusing similarity. “LLC” is a common corporate identifier, merely descriptive of a company’s legal structure, and lacks any distinguishing capacity.

According to WIPO Overview 3.0, Section 1.8, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, [...] or otherwise) would not prevent a finding of confusing similarity under the first element.” The Complainant’s mark “INTESA” remains clearly recognizable within the disputed domain name, and the inclusion of the generic term “LLC” does nothing to eliminate the impression of an association with the Complainant.

This is particularly relevant in cases where the trademark constitutes the dominant element of the domain name (see LEGO Juris A/S v. Domain Tech Enterprises, WIPO Case No. D2011-2286), or where the trademark represents “the most prominent part of the disputed domain name[] which will attract consumers’ attention” (Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI, WIPO Case No. D2006-0768).

In conclusion, the Panel finds that the disputed domain name <INTESAGROUPLLC.COM> shows a clear visual, phonetic and conceptual resemblance to the Complainant’s trademarks “INTESA” and “GRUPPO INTESA”, and  is likely to mislead Internet users into believing that it is associated with the Complainant or its trademarks. 

2) The Respondent lacks rights or legitimate interests in the disputed domain name (Para. 4(a)(ii) of the Policy).

Under the Policy, the Complainant is required to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a case is established, the burden of production shifts to the Respondent to submit evidence demonstrating rights or legitimate interests (see WIPO Overview 3.0, section 2.1).

In this case, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that any use of the trademarks “INTESA” and “GRUPPO INTESA” must be expressly authorized. The Respondent has not been licensed or otherwise authorized by the Complainant to use its trademarks or to register a domain name incorporating them.

Furthermore, the Respondent has failed to submit a Response and has therefore not provided any evidence or arguments to rebut the Complainant’s prima facie case. In the absence of such a response, and based on the case file, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

3) The disputed domain name has been registered and is being used in bad faith (Paragraph 4(a)(iii) of the Policy).

The Panel finds that the Complainant’s trademarks “INTESA” and “GRUPPO INTESA” are distinctive and widely known internationally, particularly in the banking and financial services sector. The disputed domain name <INTESAGROUPLLC.COM> incorporates the Complainant’s trademark “INTESA” in its entirety, together with the term “GROUP”, which corresponds to the Italian word “GRUPPO” as used in the Complainant’s trademark “GRUPPO INTESA”. Given the well-known nature of these trademarks, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s rights at the time of registration.

The Complainant has argued that a basic Google search of the terms “INTESA” and “GRUPPO INTESA” would yield obvious references to the Complainant, further supporting the inference that the Respondent had knowledge of the Complainant and its trademarks. The Panel considers this argument persuasive and concludes that the domain name was registered with awareness of the Complainant’s trademark rights.

In terms of use, the Complainant has provided evidence that the disputed domain name is currently blocked by Google Safe Browsing due to suspected phishing activity. The Respondent has not filed a Response and has provided no explanation or rebuttal. The Panel accepts the Complainant’s uncontested submission and finds that use of the domain name in connection with phishing, or the intent to deceive users by creating a false association with the Complainant, constitutes bad faith under the Policy.

Even in the absence of phishing or other illicit use, the disputed domain name is not being used for any bona fide offering of goods or services. The Complainant argues that there is no plausible legitimate use of the domain name by the Respondent, and the Panel agrees. The Complainant has also speculated that the Respondent may have registered the domain name with the aim of reselling it to the Complainant or a competitor, which, if established, would support a finding of bad faith under paragraph 4(b)(i) of the Policy. While direct evidence of this intent is lacking, the totality of the circumstances—including the notoriety of the Complainant’s trademarks, the nature of the domain name, and the Respondent’s silence—support a finding of registration and use in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.