Decision for dispute CAC-UDRP-107692

1. that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

2.  that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
   
   
3.  that the disputed domain name has been registered and is being used in bad faith.
   
   

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name, as stipulated in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).

The Complainant has shown rights in respect of the INTESA SANPAOLO and INTESA trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.2.1). Although the Complainant has based its complaint on both INTESA SANPAOLO and INTESA trademarks, as both of these trademarks contain "intesa" portion which is comprised in its entirety within the disputed domain name, the Panel holds that for the purposes of analysis of the first UDRP element, it is sufficient to take into account only INTESA trademark. Having in mind that INTESA trademark consists of single verbal element that is contained within the disputed domain name (and entire second-level domain or "SLD" of the disputed domain name consists of this trademark), the Panel deems that analysis of both trademarks would be redundant and, as such, would not make any impact on the Panel's conclusions regarding the first UDRP element. The Panel will, where appropriate, also use the same approach in assessment of the second and the third UDRP element.

The entirety of the Complainant's trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical with the Complainant's trademark for the purposes of the Policy (WIPO Overview 3.0, section 1.7).

In addition, it is well established that “.group”, as a generic Top-Level Domain ("gTLD"), can be disregarded in the assessment of the confusing similarity between the disputed domain name and the Complainant’s trademark (WIPO Overview 3.0, section 1.11.1).

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

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

In particular, the Panel notes that there appears to be no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s INTESA trademark. There appears to be no element from which the Panel could infer the Respondent’s rights and legitimate interests in the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

The Panel also finds that the structure of the disputed domain name, which contains the Complainant’s INTESA trademark in combination with the gTLD ".group", carries a high risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). The word "group" closely corresponds to the Complainant’s corporate structure, having in mind that the Complainant is organized as a banking group, and as such is inherently connected to the Complainant and its trademark and may imply sponsorship or endorsement by the Complainant.

The Panel also finds that the use of the disputed domain name for a parking page with pay-per-click links does not represent a bona fide offering having in mind that links in this case are related to banking and finance and therefore they compete with and capitalize on the reputation and goodwill of the Complainant’s trademark and mislead Internet users (see section 2.9 of WIPO Overview 3.0).

Having in mind the above, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. 

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (WIPO Overview 3.0, section 3.2.1).

In the present case, the Panel notes that the Respondent must have been aware of the Complainant and its INTESA trademark, especially having in mind the reputation of the Complainant’s trademark. It is, therefore, highly unlikely that the Respondent decided to register a domain name containing this trademark in its entirety without having the Complainant in mind when doing so. It should be also borne in mind that that the first registration and use of INTESA trademark predates the registration of the disputed domain name for more than 20 years, making it unlikely that the Respondent was not aware of the Complainant’s trademark at the time of registration of the disputed domain name. Also, the choice of gTLD group does not seem to be a coincidence and further indicates that the Respondent was aware of the Complainant and its activities and had the Complainant and its INTESA trademark in mind when registering the disputed domain name. 

Due to the above, the Panel finds that the disputed domain name has been registered in bad faith.

The current use of the disputed domain name for parking page with PPC links in combination with other circumstances of this case would not prevent the finding of bad faith. As mentioned above, the disputed domain name resolves to a parking page with PPC links related to banking and finance, meaning that they compete with and capitalize on the reputation and goodwill of the Complainant’s trademark. Therefore, the Panel deems that by such use of the disputed domain name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy. This constitutes bad faith use of the disputed domain name.

The Panel finds that the disputed domain name has been both registered and is being used in bad faith, and consequently that the Complainant has established the third element of the Policy.