Decision for dispute CAC-UDRP-108000

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, based in Italy, is a provider of banking and financial services using the INTESA SANPAULO trademark for which it holds:

• International trademark registration INTESA, registration number 793367, registered on September 4, 2002 for services in class 36;
• International trademark registration INTESA SANPAOLO, registration number 920896, registered on March 7, 2007 for goods and services in classes, 9, 16, 35, 36, 38, 41, and 42;
• European Union Trade Mark (EUTM), INTESA SANPAOLO, registration number 5301999, registered on June 18, 2007 for services in classes 35, 36, and 38.

The Complainant is a large international banking group that uses the INTESA and INTESA SANPAOLO marks in providing its financial services.

It has an established Internet presence. Its main website is at www.intesasanpaolo.com; and additionally, it holds and uses the domain name registrations <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.biz>, <www.intesasanpaolo.net>, <intesasanpaolo.org> and <intesasanpaolo.in>.

The disputed domain name <intesasanpaolowebsit.com> was registered on April 23, 2025, and resolves to a website that generates a warning message indicating that it may be a dangerous site.

There is no information available about the Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the registrar in response to the request by the Centre for details of the registration of the disputed domain name for the purposes of this proceeding.

The Complainant

The Complainant claims rights in the INTESA and INTESA SANPAOLO trademarks and service marks established by its ownership of its international portfolio of trademark and service mark registrations and extensive use of the marks in its banking business.

The Complainant claims to be among the top banking groups in the Euro Zone, with a market capitalisation exceeding €99,22 billion, a network of approximately 2,800 branches capillary which are well distributed throughout Italy, with market shares of more than 13% in most Italian regions.

Furthermore, as shown in its published report, which is exhibited in an annex to the Complaint, the Complainant’s offers its services to approximately 13.9 million customers. Primarily based in Italy has a strong presence in Central-Eastern Europe with a network of approximately 900 branches and over 7,6 million customers, including corporate customers in 25 countries, in particular in the Mediterranean area, the United States, Russia, China and India.

The Complainant asserts that it has an established Internet presence with its main website at www. intesasanpaolo.com; and it holds and uses a large portfolio of domain name registrations including <intesasanpaolo.eu>, <intesasanpaolo.info>, <intesasanpaolo.biz>, <www.intesasanpaolo.net>, <intesasanpaolo.org> and <intesasanpaolo.in>.

Firstly, the Complainant alleges that the disputed domain name is identical, or confusingly similar, to the Complainant’s INTESA, and INTESA SANPAOLO trademarks and service marks.

The Complainant submits that the disputed domain name incorporates the trademarks INTESA, and INTESA SANPAOLO, with the mere addition of the term “websit”, which is a typosquatting version of the term “website”. It is argued that the additional term is highly confusing and misleading for Internet users, who might think that the disputed domain name is somehow connected to the Complainant and its official website or the various services offered by the Complainant to its customers on the web.

The Complainant secondly alleges that the Respondent has no rights or legitimate interests in the disputed domain name arguing that:

• the Respondent has not been authorized or licensed by the Complainant to use the INTESA and INTESA SANPAOLO marks in the disputed domain name or otherwise;
• 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 as “INTESASANPAOLOWEBSIT”;
• the main purpose of the Respondent in registering the disputed domain name was to use it to create a website for the purposes of “phishing” financial information in an attempt to defraud the Complainant’s customers; and Google promptly stopped the illicit activity carried out by the Respondent as shown in a screen capture exhibited in an annex to the Complaint; and
• the website to which the disputed domain name resolves, a copy of which is exhibited in an annex to the Complaint does not show any fair or non-commercial uses of the disputed domain name by the Respondent.

Thirdly the Complainant submits that the disputed domain name was registered and is being used in bad faith.

The Complainant adds that its trademarks INTESA and INTESA SANPAOLO are distinctive and well known all around the world; and the Complainant contends that the fact that the Respondent has registered the disputed domain name that is confusingly similar to the Complainant’s marks indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name.

Furthermore, the Complainant argues that if the Respondent had carried even a basic Google search in respect of the wordings “INTESA SANPAOLO”, “INTESA” and “INTESA SANPAOLO WEBSIT”, the same would have yielded obvious references to the Complainant.

The Complainant adds that this argument is supported by an extract of a Google search, a screen capture of such search, which is exhibited in an annex to the Complaint; and that the use of the Complainant’s marks within the disputed domain name raises a clear inference of knowledge of the Complainant’s trademark on the part of the Respondent.

Therefore, the Complainant argues that it is more than likely that the disputed domain name would not have been registered if it did not incorporate the Complainant’s trademarks.

It is clear that the main purpose of the Respondent in registering the disputed domain name was to use it to create a website for “phishing” financial information in an attempt to defraud the Complainant’s customers.

The Complainant refers to a screen capture of the message generated when an attempt is made to reach the website to which the disputed domain name resolves. The screen capture, has been exhibited in an annex to the Complaint, shows that a warning message is generated. The Complainant submits that the website is currently blocked by Google Safe Browsing because of a suspected phishing activity.

The Complainant concludes, referring to4(b)(iv) of the Policy that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site.

The Complainant repeats that the disputed domain name is not used for any bone fide offerings, considering that the same is connected to a website which has been blocked by Google Safe Browsing through a warning page.

Furthermore, the Complainant submits that on May 26, 2025, its attorneys sent to the Respondent a cease-and-desist letter, a copy of which is exhibited in an annex to the Complainant, asking for the voluntary transfer of the domain name at issue. Despite such communication, the Respondent did not comply with the above request.

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

The 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 the UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The Complainant has provided uncontested convincing evidence of its rights in the INTESA and INTESA SANPAOLO trademarks and service marks established by its ownership of the abovementioned trademark and service mark registrations and by extensive use of the marks in the substantial international of its banking group with capitalisation exceeding €99,22 billion.

The disputed domain name <intesasanpaolowebsit.com> contains both of Complainant’s registered trademarks and service marks in their entirety, in combination with the word “websit”.

The element “websit” is a misspelling of the word “website”. So taken together, the elements of the disputed domain name mean the website of Complainant’s group.

The generic Top-Level Domain (“gTLD”) extension <.com> may be ignored for the purposes of comparing the disputed domain name with the Complainant’s marks mark and because the gTLD extension would be considered by Internet users to be a necessary technical element for a domain name.

This Panel finds therefore that the disputed domain name is identical to the INTESA and INTESA SANPAOLO trademarks in which the Complainant has rights and the Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).

The Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as set out in the Complainant’s detailed submissions above.

The Complainant through its predecessors in title, has a long-established international reputation in the INTESA and INTESA SANPAOLO marks which dominate the elements of the disputed domain name. On the balance of probabilities therefore the Respondent has no rights whatsoever in either trademark.

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

The Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore succeeded in the second element of the test in Policy 4(a)(ii).

The Complainant’s registered trademarks and service marks INTESA and INTESA SANPAOLO are clearly recognizable as the dominant and distinctive elements within the disputed domain name.

The element “websit” is also clearly a misspelling of the word “website” being used in combination with the Complainant’s marks.

The Complainant’s registered service mark rights in the INTESA and INTESA SANPAOLO marks predate the registration of the disputed domain name. The earliest trademark registration relied upon by Complainant dates back to September 4, 2002, whereas the disputed domain name <intesasanpaolowebsit.com> was not registered until April 23, 2025.

Because of the well-known and distinctive nature of the Complainant’s marks, the fact that the disputed domain name purports to be a reference to the Complainant’s website, it is most improbable that the registrant of the disputed domain name was unaware of the Complainant and its marks when the disputed domain name was chosen and registered.

There appears to be no plausible reason for registering the disputed domain name other than to create an association with Complainant.

On the balance of probabilities, therefore, this Panel finds that the disputed domain name was in fact chosen and registered with Complainant’s mark in mind with the intention of taking predatory advantage of Complainant’s rights and goodwill in the INTESA and INTESA SANPAOLO trademarks and service marks.

The Complainant has failed to provide sufficient evidence that the disputed domain name has been used for the purposes of phishing. All that has been produced in evidence is a screen capture that shows that the disputed domain name generates an automatically generated warning that the resolving website may be used for phishing. There is no screen capture of the website itself, or any further evidence of phishing exhibited.

Nonetheless, the Complainant has provided sufficient evidence to show that the Respondent is using the disputed domain name to resolve to a website, and on the balance of probabilities the Respondent’s intention in using the disputed domain name in this manner was to attract and misdirect Internet traffic seeking the Complainant’s website to the Respondent’s website.

Such use of the Complainant’s trademark within the disputed domain name as the address of the resolving website is, on the balance of probabilities, intentionally intended to attract and confuse Internet users, cause them to divert their Internet traffic intended for the Complainant, and misdirect it to the Respondent’s website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site, which constitutes bad faith for the purposes of the Policy.

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).