Decision for dispute CAC-UDRP-107474

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 the following trademark registrations:

• International trademark registration number 920896 for INTESA SANPAOLO, registered 7 March 2007 in classes 9, 16, 35, 36, 38, 41 and 42;
• International trademark registration number 793367 for INTESA, registered 4 September 2002 in class 36;
• EU trademark registration number 5301999 for INTESA SANPAOLO, registered 18 June 2007 in classes 35, 36 and 38; and
• EU trademark registration number 12247979 for INTESA, registered 5 March 2014 in classes 9, 16, 35, 36, 38, 41 and 42.

The Complainant was formed in 2007 by the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. It is among the top banking groups in the eurozone. It has a market capitalisation of over 84.3 billion euro and an international network across 25 countries.

The Complainant owns trademark registrations for INTESA and INTESA SANPAOLO that predate the registration of the disputed domain name. The Complainant also owns numerous domain names that include the terms INTESA and INTESA SANPAOLO. These connect to the Complainant’s official website at http://www.intesasanpaolo.com.

The Respondent registered the disputed domain name on 22 January 2025 using a privacy service.

On 13 February 2025, the Complainant’s attorneys sent the Respondent a cease and desist letter asking for the voluntary transfer of the disputed domain name. The Respondent did not comply with that request.

The Complainant claims that the disputed domain name is confusingly similar to its trademarks. It reproduces its mark, INTESA, after the Italian term “accesso” meaning “login”, which refers to access to personal online banking services offered by the Complainant. This may confuse Internet users who might mistakenly think that the disputed domain name is somehow connected to the Complainant.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and says the Respondent has not been authorised to use the Complainant’s trademark in the disputed domain name. The Complainant asserts that the disputed domain name does not correspond to the name of the Respondent, nor is the Respondent commonly known as “ACCESSO-INTESA”.

The Complainant asserts that the disputed domain name was registered and used in bad faith and states:

1. its trademarks INTESA SANPAOLO and INTESA are distinctive and well known all around the world;
2. the fact that the Respondent registered a domain name that is confusingly similar to its trademarks, indicates that the Respondent knew of the Complainant’s trademark when he registered the disputed domain name;
3. if the Respondent had carried even a basic Google search for “INTESA SANPAOLO”, “INTESA” and “ACCESSO INTESA”, it would have yielded obvious references to the Complainant, which raises a clear inference of the Respondent’s knowledge of the Complainant’s trademark;
4. the disputed domain name is not used for any bona fide offerings;
5. there are circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; and.
6. it is not possible to understand what kind of use the Respondent could make of the disputed domain name given that it corresponds to the Complainant’s trademarks and domain names used to provide online banking services.

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 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.

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.

Identical or confusingly similar

The disputed domain name is made up of the Italian word “accesso” (meaning “login”), a hyphen, the Complainant’s trademark, INTESA plus the top-level domain “.com”.

 The Complainant owns trademark registrations for INTESA and INTESA SANPALO that predate the registration of the disputed domain name. The Complainant's trademark INTESA is clearly visible in the disputed domain. Linking the Complainant’s trademark INTESA by a hyphen to the Italian word “assessor”, meaning logon, does not avoid a finding of confusing similarity. The top-level domain “.com” is a standard registration requirement and can be disregarded when determining confusing similarity.

The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark, INTESA and the requirements of paragraph 4(a)(i) of the Policy have been proved.

No rights or legitimate interest

The Complainant has submitted evidence of its rights in the trademark INTESA that predate the registration of the disputed domain name. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of proof now shifts to the Respondent (see WIPO Case No. D2003-0455 Croatia Airlines d. d. v. Modern Empire Internet Ltd).

The Respondent has not filed a Response, nor disputed any of the Complainant's submissions. The Respondent is not authorised to use the Complainant's trademark in the disputed domain name. There is nothing to indicate that the Respondent is commonly known by the disputed domain name or has any relevant rights or legitimate interests in the disputed domain name.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been met.

Registered and is being used in bad faith

The Complainant’s trademark, INTESA was first registered in 2002 and predates the registration of the disputed domain name by over twenty years.

The Complainant is among the top banking groups in the eurozone and has an international network across 25 countries. The most plausible reason for the Respondent incorporating the Complainant’s distinctive trademark in the disputed domain name is that the Respondent knew of the Complainant and its trademark when he registered the disputed domain name.

The disputed domain name is held passively. This is not a bar to a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present case:

1. the Complainant’s trademarks are well established and have a strong reputation as evidenced by their use in Italy and other countries;
2. the Respondent has linked the Complainant’s INTESA trademark by a hyphen with the Italian word “accesso” meaning “login”, a word used in connection with the Complainant’s online banking services;
3. the Respondent has provided no evidence of any actual or contemplated good faith registration and use;
4. the Respondent has used a privacy service to conceal his identity; and
5. the Respondent not responded to the Complainant’s cease and desist letter.

Taking these factors into account, there appears to be no conceivable use of the disputed domain name by the Respondent that would not be an infringement of the Complainant’s rights.

The Panel concludes that the disputed domain name was registered and used in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy have been met.