Decision for dispute CAC-UDRP-107756

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 following trademark registrations for the sign “INTESA SANPAOLO” (the “INTESA SANPAOLO trademark”):

- the International trademark INTESA SANPAOLO with registration No.920896, registered on 7 March 2007 for goods and services in International Classes 9, 16, 35, 36, 41 and 42; and

- the European Union trademark INTESA SANPAOLO with registration No.5301999, registered on 18 June 2007 for services in International Classes 35, 36 and 38.

The Complainant is the leading Italian banking group, formed as a result of the merger in 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. The market capitalisation of the Complainant exceeds EUR 87.1 billion, and it has a network of 3000 branches and 14 million customers in Italy. The Complainant has a strong presence in Central and Eastern Europe with a network of approximately 900 branches and over 7.5 million customers. The international network of the Complainant specialised in supporting corporate customers is present in 25 countries in the Mediterranean area, the United States, the Russian Federation, China and India.

The Complainant’s official website is located at the domain name <intesasanpaolo.com>.

The Respondent registered the disputed domain name on 7 April 2025. It is currently blocked by Internet browsers which display a warning message for potential malware distribution or phishing attacks.

COMPLAINANT:

The Complainant submits that the disputed domain name is confusingly similar to its INTESA SANPAOLO trademark, as it exactly reproduces this trademark with the addition of the element “webs”, which is either a typosquatted version of the term “web” or the abbreviation of the word “website”. According to the Complainant, this makes the disputed domain name confusing and misleading for Internet users, who might think that it is somehow connected to the Complainant.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that it has never authorized the Respondent to use the INTESA SANPAOLO trademark, that the Respondent is not commonly known by the disputed domain name, and that it is not making any fair or non-commercial use of it.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. It notes that the disputed domain is blocked by Google Safe Browsing because of a suspected phishing activity. The Complainant maintains that the INTESA SANPAOLO trademark is distinctive and well-known around the world, and the fact that the Respondent has registered the disputed domain name, which is confusingly similar to this trademark, indicates that it had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Complainant submits that the disputed domain name has not been used for any bona fide activity. Rather, the circumstances of the case indicate that the Respondent has registered or acquired the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s INTESA SANPAOLO trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

According to the Complainant, the Respondent intends to use the disputed domain name for phishing financial information from the Complainant’s customers, or to resell it to the Complainant.

RESPONDENT:

The Respondent did not submit a Response in this proceeding.

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.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent has registered and is using the domain name in bad faith.

In this case, the Provider has employed the required measures to achieve actual notice of the Complaint to the Respondent, and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.

Identical or confusingly similar

The Complainant has provided evidence and has thus established its rights in the INTESA SANPAOLO trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The disputed domain name reproduces the INTESA SANPAOLO trademark entirely with the addition of the element “webs”. The addition of this non-distinctive element has a low effect on the overall impression made by the disputed domain name, in which the INTESA SANPAOLO trademark is easily distinguishable and dominating. As discussed in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

Taking all the above into account, the Panel finds that the disputed domain name is confusingly similar to the INTESA SANPAOLO trademark in which the Complainant has rights.

Rights and legitimate interests

While 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 often-impossible 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.

If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent was not authorized to use the INTESA SANPAOLO trademark and is not commonly known under the disputed domain name. The Complainant also submits evidence that the disputed domain name is blocked by Internet browsers due to potential phishing activities. According to the Complainant, the Respondent has registered the disputed domain name to carry out phishing attacks against the Complainant’s customers or to resell it to the Complainant. Thus, 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 submitted a Response and has not provided an explanation of the reasons why it has registered the disputed domain name and of its plans how to use it.

In the Panel’s view, the evidence in this case supports the prima facie case made by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. It incorporates the popular INTESA SANPAOLO trademark, which is easily distinguishable and dominates in it. In the lack of any arguments or evidence to the contrary, all the above leads the Panel to the conclusion that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s INTESA SANPAOLO trademark, has registered the disputed domain name targeting this trademark in an attempt to exploit its goodwill by confusing and attracting Internet users who may believe that the disputed domain name and the content on the associated website are affiliated to or endorsed by the Complainant. Internet browsers block the disputed domain name and display warning messages of potential malware distribution or phishing attacks, which is an indication that it might have been used for illegitimate activities, which cannot give rise to rights or legitimate interests. See section 2.13.1 of the WIPO Overview 3.0.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Bad faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The registration of the distinctive INTESA SANPAOLO trademark predates the registration date of the disputed domain name by 18 years. It reproduces the INTESA SANPAOLO trademark entirely in combination with the non-distinctive element “webs”, which may lead Internet users to believe that it is affiliated to the Complainant. The Panel is of the view that the Respondent is more likely to have registered the disputed domain name with knowledge of the Complainant’s trademark and with the intention of taking advantage of its goodwill.

The Respondent has not provided any plausible explanation of its choice of the disputed domain name and of its plans for how to use it. As the evidence shows, Internet browsers block the disputed domain name due to potential malware or phishing attacks, which indicates that there have been attempts to carry out. Panels have held that the use of a domain name for phishing, identity theft, or malware distribution purposes may constitute bad faith. See section 3.4 of the WIPO Overview 3.0.

This satisfies the Panel that the disputed domain name has been registered and used in bad faith.