Decision for dispute CAC-UDRP-107618

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 of the:

• International trademark registration no. 920896 "INTESA SANPAOLO" (granted March 7, 2007);
• International trademark registration no. 793367 "INTESA" (granted September 4, 2002);
• EU trademark registration no. 5301999 "INTESA SANPAOLO" (granted June 18, 2007);
• EU trademark registration no. 12247979 "INTESA" (granted March 5, 2014);

 The disputed domain name <intessasanpaolo.info> was registered on February 14, 2025.

The Complainant is a leading Italian banking group resulting from the merger of Banca INTESA S.p.A. and SANPAOLO IMI S.p.A., effective January 1, 2007. The Complainant operates as one of the top banking groups in the eurozone with significant market presence in Italy and Central-Eastern Europe.

 The disputed domain name INTESSASANPAOLO.INFO was registered by the Respondent on February 14, 2025. The Complainant holds multiple trademark registrations for "INTESA SANPAOLO" and "INTESA" dating from 2002 and 2007, covering various classes including financial services.

The Complainant argues that the disputed domain name is identical or confusingly similar to its registered trademarks "INTESA SANPAOLO" and "INTESA." The Complainant holds multiple trademark registrations including:

• International trademark registration no. 920896 "INTESA SANPAOLO" (granted March 7, 2007);
• International trademark registration no. 793367 "INTESA" (granted September 4, 2002);
• EU trademark registration no. 5301999 "INTESA SANPAOLO" (granted June 18, 2007);
• EU trademark registration no. 12247979 "INTESA" (granted March 5, 2014).

The Complainant contends that the disputed domain name <INTESSASANPAOLO.INFO> reproduces the well-known trademark "INTESA SANPAOLO" with mere doubling of the letter "S" in the "INTESA" portion, constituting typosquatting that creates confusion for Internet users.

 The Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name, asserting that:

• the Respondent has no rights to the disputed domain name
• no authorization or license has been granted to the Respondent to use the trademarks "INTESA SANPAOLO" and "INTESA"
• the disputed domain name does not correspond to the Respondent's name
• the Respondent is not commonly known as "INTESSASANPAOLO"
• no fair or non-commercial use of the disputed domain name exists

 The Complainant contends that the disputed domain name was registered and is used in bad faith, arguing that:

• the trademarks "INTESA SANPAOLO" and "INTESA" are distinctive and well-known worldwide
• the Respondent's registration of a confusingly similar domain indicates knowledge of the Complainant's trademark
• a basic Google search of "INTESA SANPAOLO" and "INTESA" would yield obvious references to the Complainant
• the disputed domain name would not have been registered but for the Complainant's trademark
• the disputed domain name is connected to a website promoting banking and financial services, including references to "INTESA SANPAOLO S.p.A."
• this use intentionally attempts to attract Internet users for commercial gain by creating confusion with the Complainant's mark
• the registration and use constitute intentional traffic diversion from the Complainant's website
• the respondent failed to respond to a cease-and-desist letter sent on March 12, 2025

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.

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.

I. Identical or Confusingly Similar 

The Complainant has established the fact that it has valid rights for the trademarks specified in paragraph “Identification of rights” above whereas the trademark “INTESA SANPAOLO” (n. 920896) has been granted on March 7, 2007, and trademark “INTESA” (n. 793367) on September 4, 2002.

The disputed domain name has been registered on February 14, 2025, i.e. more than 22 years after the “INTESA” trademark registration and 17 years after the “INTESA SANPAOLO” trademark registration. 

The disputed domain name consists of three parts: INTESSA and SANPAOLO. The second part of the disputed domain name is identical to the second part of the trademark “INTESA SANPAOLO”. The first part of the disputed domain name is almost identical with the first part of this trademark with only the addition of an extra "S" in the "INTESA" portion, creating "INTESSASANPAOLO." This constitutes a classic case of typosquatting, where the disputed domain name represents a slight alphabetical variation of a famous mark. The doubling of the letter "S" does not prevent a finding of confusing similarity, as established in numerous UDRP decisions.

 The addition of the generic top-level domain ".INFO" does not change the overall impression of the designation as being connected to the Complainant’s trademarks.

Therefore, the Complainant has, to the satisfaction of the Panel, shown the disputed domain name is confusingly similar to the Complainant’s trademarks “INTESA” and “INTESA SANPAOLO” in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

II. Rights or Legitimate Interests

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that (ii) the respondent has no rights or legitimate interests in respect of the domain name.

 The Complainant has established a prima facie case (not challenged by the Respondent who did not filed any response to the complaint) that the Respondent has no rights or legitimate interests in the disputed domain name, since the Respondent is not related in any way with the Complainant, has not been authorized or licensed to use the Complainant's trademarks,  there is no indication that the Respondent is commonly known by the term “INTESASANPAOLO” or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. There is also no evidence, that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Given the Respondent's failure to respond and the absence of any apparent legitimate use of the disputed domain name, the Panel considers that 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).

III. Registered and Used in Bad Faith

For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that (iii) the disputed domain name has been registered and is being used in bad faith.

The Respondent has registered the disputed domain name which consists of the Complainant’s trademarks “INTESA” and “INTESA SANPAOLO” (the doubling of the letter "S" does not prevent a finding of confusing similarity, as stated above). 

There are no doubts that the Complainant’s trademarks are distinctive and well-known, particularly in the financial services sector. It could be therefore, concluded that the disputed domain name has been registered in bad faith as the Respondent had or should have had the Complainant and its prior trademark rights in mind when registering the disputed domain name, and the Respondent's registration cannot be therefore considered coincidental.

Use of such disputed domain name could, therefore, attract the internet users to the corresponding web page by creating a likelihood of confusion with the Complainant’s trademarks (paragraph 4(b)(iv) of the Policy). The Complainant has demonstrated that the disputed domain name resolves to a website promoting banking and financial services, including references to "INTESA SANPAOLO S.p.A." This use falls squarely within Paragraph 4(b)(iv) of the Policy, as the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating confusion with the Complainant's trademark.

The Respondent's failure to respond to the cease-and-desist letter further supports the inference of bad faith.

Thus the Complainant has, to the satisfaction of the Panel, shown that 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 considers that the Complainant has shown that the disputed domain name <intessasanpaolo.info> is confusingly similar to trademarks in which the Complainant has rights, the Respondent has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name has been registered and is being used in bad faith. The Complainant has thus established all three elements of paragraph 4(a) of the Policy.