Decision for dispute CAC-UDRP-108420

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 holds a portfolio of trade mark registrations for the FIDEURAM mark including:

EU Trade Mark (EUTM) FIDEURAM, registration number. 14404958 registered on December 9, 2015, for goods and services in classes 9, 16, 35, 36, 41 and 42;

EU Trade Mark (EUTM) FIDEURAM (figurative), registration number 14003685 registered on September 17, 2015, for goods and services in classes 9, 16, 35, 36, 41 and 42;

EU Trade Mark (EUTM) FIDEURAM INTESA SANPAOLO PRIVATE BANKING, registration number 14001499 registered on September 17, 2015, for goods and services in classes 9, 16, 35, 36, 41 and 42; and

International Trade Mark FIDURAM, registration number 1220255, registered on May 15, 2014, in class 36, for jurisdictions including China.

The Complainant claims rights in the FIDEURAM and FIDEURAM INTESA SANPAOLO PRIVATE BANKING established by its ownership of the trademark and service mark registrations described above and extensive use of the mark in its private banking business.

The Complainant also owns and uses a large portfolio of Internet domain names incorporating the FIDEURAM mark such as <fideurambanca.it>, <fideurambank.org>, <fideuramdirect.it>, <fideuramdirect.com>, <fideuramireland.com>, <fideuramluxprivate.lu>, financierefideuram.com, and <fideuramintesasanpaoloprivatebanking.com>.

The disputed domain name was registered on July 04, 2025 and resolves to a web page with links to third party websites.

There is no information available about the Respondent, who availed of a privacy service to conceal its identity, except for what is provided in the Complaint, as amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by the CAC for details of the registration of the disputed domain name for the purposes of this Complaint.

The Complainant claims rights in the FIDEURAM trademark and service mark established by its ownership of the portfolio of registrations described above and extensive use of the mark providing its private banking services.

The Complainant submits that it is a member of a leading Italian banking group Intesa Sanpaolo established as of January 1, 2007, in a merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.

The Complainant submits that its corporate group is among the top banking groups in the euro zone, with a market capitalisation exceeding 101,36 billion euro, and is the undisputed leader in Italy, in all business areas including retail, corporate and wealth management.

In Italy it has network of approximately 2,600 branches capillary and is well distributed throughout the country, with market shares of more than 13% in most Italian regions.

In all, the group offers its services to approximately 13,9 million customers, with also a strong presence in Central-Eastern Europe where it has a network of approximately 900 branches and over 7,4 million customers; and it has a presence in 24 countries, with a focus in particular in the Mediterranean area and those regions where Italian companies are most active, such as the United States, Russia, China and India.

The Complainant submits, that Fideuram – Intesa Sanpaolo Private Banking, is the name of the Complainant’s private banking division which serves the customer segment consisting of private clients and high net worth individual with the offering of products and services tailored for this segment, serving 120.000 customers through 270 branches staffed with more than 6600 private bankers.

The Complainant adds that the division is frequently referred to as FIDEURAM, and that the FIDEURAM mark is only used by the Complainant within and in relation to its Fideuram – Intesa Sanpaolo Private Banking division.

Moreover, the Complainant argues that it maintains an Internet presence with a large portfolio of Internet domain name incorporating the FIDEURAM mark which are described above.

The Complainant firstly alleges that the disputed domain name <fideuram.online> is identical, or confusingly similar, to Complainant’s FIDEURAM trademark as it reproduces the mark entirely.

Secondly the Complainant submits that the Respondent has no rights on the disputed domain name, arguing that:

- the disputed domain name does not correspond to the name of the Respondent;

- to the best of the Complainant’s knowledge, the Respondent is not commonly known as “FIDEURAM”;

- as shown in the screen capture exhibited in an annex to the Complaint, the website to which the disputed domain name resolves do not show that Respondent is putting the disputed domain name to any fair or non-commercial use.

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

The Complainant asserts that it trademarks “FIDEURAM” and “FIDEURAM INTESA SANPAOLO PRIVATE BANKING” are distinctive and well known all around the world, and argues that the fact that the Respondent has registered a domain name that is confusingly similar to them indicates that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name.

Furthermore, because the disputed domain name <fideuram.online> was registered on July 04, 2025, Complainant alleges that if the Respondent had carried even a basic Google search in respect of the wordings “FIDEURAM” and “FIDEURAM INTESA SANPAOLO PRIVATE BANKING” on that date it would have yielded obvious references to the Complainant. In support of this assertion, the Complainant has exhibited a screen capture of an extract of the results of a Google search which it carried out.

The Complainant contends that raises a clear inference of knowledge of the Complainant’s trademark on the part of the Respondent. Therefore, it is more than likely that the disputed domain name at issue would not have been registered if it were not for Complainant’s trademark, which is clear evidence of registration of the disputed domain name in bad faith.

In addition, it is argued that the disputed domain name is not used for any bone fide offerings. More particularly, the circumstances show 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 (par. 4(b)(iv) of the Policy).

First of all, the Complainant argues that several services can be detected, but not in good faith: in fact, the domain name is connected to a website sponsoring, banking and financial services, for whom the Complainant’s trademarks are registered and used, as illustrated by the screen capture of the home page of the Complainant’s official site at www.intesasanpaolo.com.

Consequently, Internet users, while searching for information on the Complainant’s services, are confusingly led to the websites of the Complainant’s competitors, sponsored on the websites connected to the domain name at issue.

The Complainant adds that several decisions of panelists appointed under the Policy have held that the registration and use of a domain name at issue to re-direct internet users to websites of competing organizations constitute bad faith registration and use under the Policy. See for example Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319 (“Registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Registration and continued use of the contested domain name for re-directing Internet users, i.e. particularly customers and potential customers of the Complainant, from the Complainant’s website to the website of…a company which directly competes with the Complainant, constitutes bad faith registration and use”).

Referring to the screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint and argues that it illustrates that the Respondent is using the disputed domain name, to resolve to a website with links to third party websites some of which include the websites of the Complainant’s competitors. The Complainant argues that Respondent’s use of the disputed domain name in this manner is misleading of the Complainant’s present clients and leading to the loss of potential new ones.

The Complainant adds that it is no coincidence that the Respondent has targeted a big financial institution such as the Complainant; and submits that such diversion is frequently practiced in the banking realm due to the high number of online banking users. 

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.

Similarity

The Complainant has provided convincing evidence that rights in the FIDEURAM mark established by its ownership of the portfolio of registered trademarks described above, and use of the mark providing its private banking services.

The disputed domain name the disputed domain name <fideuram.online> consists of Complainant’s mark in its entirety in combination with the generic Top-Level Domain (“gTLD”) extension <.online>.

It is well established that a panel may find that a domain name at issue is identical or confusingly similar to the trademark relied upon where it contains the complainant’s mark in its entirety.

The disputed domain name contains the FIDEURAM mark in its entirety with no other element except for the gTLD extension.

In the circumstances of this case the generic Top-Level Domain (“gTLD”) extension <.online> may be ignored for the purposes of comparison as it would be considered by Internet users to be a technical necessity for a domain name.

This Panel finds therefore that the disputed domain name <fideuram.online> is confusingly similar to the NPR mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i).

Rights and Legitimate Interests

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 Complainant’s detailed submissions above.

In particular the screen capture of which is exhibited in an annex to the Complaint shows that that the Respondent is using the dispute domain to host a website which only contains links to third party websites. There is no evidence that the Respondent is using the disputed domain name to carry on any bona fide or legitimate business, but instead is using the disputed domain name as bait to attract and divert Internet users seeking the Complainant’s website.

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 paragraph 4(a)(ii).

Registration and Use on Bad Faith

FIDEURAM is a distinctive trademark and service mark. The Complainant’s trademark registrations incorporating FIDEURAM as a distinctive element date back to 2014, and the Complainant registered the word FIDEURAM as a trademark and service mark with no other elements in 2015.

The disputed domain name which consists only of the FIDEURAM mark together with the gTLD extension, was registered on July 04, 2025, long after the Complainant commenced use of the mark to distinguish the services offered by its private banking division.

The Complainant has given uncontested evidence that it has established a very strong international goodwill and reputation for its private banking division using the FIDEURAM mark. The private banking division serves the customer segment consisting of private clients and high net worth individuals offering of products and services tailored for this segment, serving 120.000 customers through 270 branches staffed with more than 6600 private bankers.

Given that the disputed domain name is identical to the Complainant’s mark and the claimed extent of the Complainant’s reputation and goodwill using the FIDEURAM mark, which remains unchallenged, it improbable that the registrant of the disputed domain name was unaware of the Complainant and its FIDEURAM mark when the disputed domain name was chosen and registered on July 04, 2025.

There appears to be no plausible reason for registering the disputed domain name other than to create an association with the Complainant and the goodwill established by its use of the mark in its private banking business.

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

The uncontested evidence in the form of screen capture which are exhibited in an annex to the Complaint shows that the Complainant is using the disputed domain name, to resolve to a webpage with links to third party websites.

On the balance of probabilities, the Respondent is gaining pay-per-click revenue from misdirected Internet visitors to the website who click through the links.

The Panel finds therefore that on the balance of probabilities such use of the FIDEURAM mark is intended to create an initial interest confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such use of the Complainant’s trademark within the address of the Respondent’s website constitutes use in bad faith for the purposes of the Policy.

Additionally, the Panel finds that such use of the disputed domain name by the Complainant is intended to attract and confuse Internet users who are seeking the Complainant’s website and cause them to divert their Internet traffic and misdirect it to the Respondent’s websites, which also constitutes use of the Complainant’s mark and the disputed domain name in bad faith.

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