Decision for dispute CAC-UDRP-108720

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 several trademarks consisting of the term “INTESA SANPAOLO®” and “INTESA®”, such as:

• the International trademark registration “INTESA SANPAOLO®” n° 920896 registered since March 7, 2007 at classes 9, 16, 35, 38, 41 & 42;

• the International trademark registration “INTESA®” n° 793367 registered since September 4, 2002 at class 36;

• the EU trademark registration n. 5301999 “INTESA SANPAOLO®” registered since June 18, 2007 at classes 35, 36 & 38 and;

• the EU trademark registration n. 12247979 “INTESA®” registered since March 5, 2014 at classes 9, 16, 35,36, 38, 41 & 42.

Different copies of the trademark certificates were included within the Complaint. 

In addition, the Complainant claims to own domain names with the term ““INTESA SANPAOLO” and “INTESA” such as: <INTESASANPAOLO.COM>, <INTESA-SANPAOLO.COM>, <INTESA.COM>, among many others. All of them are now connected to the official website http://www.intesasanpaolo.com.  

Even though the Complainant did not include copies of the registration of the domains, the Panel was able to conduct a search and confirmed the validity of the registration of the domains <INTESASANPAOLO.COM>, <INTESA-SANPAOLO.COM> & <INTESA.COM>. The three of domain are indeed connected to the official website http://www.intesasanpaolo.com.  

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is the leading Italian banking group and also one of the protagonists in the European financial arena. Intesa Sanpaolo is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. 

The Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 98,15 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 2,600 branches capillary and well distributed throughout the Country, with market shares of more than 12% in most Italian regions, the Group offers its services to approximately 14 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 900 branches and over 740 million customers. Moreover, the international network specialised in supporting corporate customers is present in 24countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States, Russia, China and India. 

The Complainant is the owner of different trademarks registrations for the terms “INTESA SANPAOLO” and “INTESA”. On March 11, 2026, the Respondent registered the disputed domain name <APP-INTESASANPAOLO.COM> (hereinafter, the “Disputed Domain Name”). 

According to Complainant’s non-contested allegations, the Respondent has no rights or legitimate interest in respect of the Disputed Domain Name and Complainant has not granted any authorization or license to use the trademarks “INTESA SANPAOLO” & “INTESA” within the Disputed Domain Name.

For the purpose of this case, the Registrar confirmed that the Respondent is the current registrant of the Disputed Domain Name and that the language of the registration agreement is English.

The facts asserted by the Complainant are not contested by the Respondent

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

COMPLAINANT:

First element: Similarity

The Complainant states that the Disputed Domain Name is identical or at least, confusingly similar to its trademarks “INTESA SANPAOLO” and “INTESA”.

The Complainant asserts that the trademark “INTESA SANPAOLO®” is included in its entirety within the Disputed Domain Name with the mere addition of the term “APP” which it has obvious references to a service offered by Intesa Sanpaolo S.p.A. to its customers. It follows that it is confusing and misleading for Internet users, who might think that APP-INTESASANPAOLO.COM is somehow connected to Intesa Sanpaolo S.p.A., which is not true.  

Second element: Rights or legitimate interest

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and any use of the trademarks “INTESA SANPAOLO” and “INTESA” has to be authorized by the Complainant. The Complainant also confirms that nobody has been authorized or licensed by Complainant to use the Disputed Domain Name at issue. The Complainant confirmed that the Disputed Domain Name at stake does not correspond to the name of the Respondent and, to the best of its knowledge, the Respondent is not commonly known as “APP-INTESASANPAOLO”.

The Complainant also claims that they did not find any fair or non-commercial use of the Disputed Domain Name at stake. 

Third element: Bad faith

The Complainant states that the Disputed Domain Name APP-INTESASANPAOLO.COM was registered and is used in bad faith. It shall be underlined that the webpage connected to the Disputed Domain Name is currently reported for potential phishing.

In accordance with the Complainant, the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA” are distinctive and well known all around the world. 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 trademark at the time of registration of the Disputed Domain Name. In addition, if the Respondent had carried even a basic Google search in respect of the wordings “INTESA SANPAOLO”, “INTESA” and “APP INTESA SANPAOLO”, the same would have yielded obvious references to the Complainant. The Complainant submitted an extract of a Google search in support of its allegation. This 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. This is clear evidence of registration of the Disputed Domain Name in bad faith in accordance with the Complainant.

The Complainant contends that the Disputed Domain Name is not used for any bona fide offerings and therefore, there are circumstances indicating that the Respondent has registered or acquired the Disputed 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (par. 4(b)(i) of the Policy).

The Complainant indicates that the Disputed Domain Name is not used for any bona fide offerings, even if it is not connected to any web site, by now. In fact, countless UDRP decisions confirmed that the passive holding of a domain name with knowledge that the domain name infringes another party’s trademark rights is evidence of bad faith registration and use. In particular, the consensus view of WIPO UDRP panellists is that passive holding of a disputed domain name may, in appropriate circumstances, be consistent with a finding of bad faith. However, panels have tended to make such findings in circumstances in which, for example, a complainant’s mark is well-known, and there is no conceivable use that could be made of the domain name that would not amount to an infringement of the complainant’s trade mark rights.

As regards to the first aspect, the Complainant contents that it has already extensively proved the notoriety of its trademarks. For what concern the second circumstance, it must be underlined that it is objectively not possible to understand what kind of use the Respondent could make with a domain name which does exactly correspond to the Complainant’s trademarks and that results so similar to the Complainant’s domain names currently used by the latter to provide online banking services for enterprises. In the light of the above, the present case completely matches to the above requirements and the passive holding of the contested domain name has to be considered a use in bad faith.

The Complainant continues by saying that the risk of a wrongful use of the Disputed Domain Name at issue is even higher in the present case, since the Complainant has already been targeted by some cases of phishing in the past few years. Such a practice consists of attracting the customers of a bank to a web page which imitates the real page of the bank, with a view to having customers disclose confidential information like a credit card or bank account number, for the purpose of unlawfully charging such bank accounts or withdrawing money out of them. It happened that some clients of the Complainant have received e-mail messages asking, by the means of web pages which were very similar to the Complainant’s ones, the sensitive data of the Clients, like user ID, password etc. Then, some of the Clients have been cheated of their savings.

Finally, the Complainant believes that the current owner registered the Disputed Domain Name with the “phishing” purpose, in order to induce and divert the Complainant’s legitimate customers to its website and steal their money and the above could be easily verified given the particular nature of the Disputed Domain Name (typosquatting). 

The Complainant indicates that even excluding any “phishing” purposes or other illicit use of the Disputed Domain Name in the present case, anyway the Complainant could find no other possible legitimate use of <APP-INTESASANPAOLO.COM>. The sole further aim of the owner of the Disputed Domain Name under consideration might be to resell it to the Complainant, which represents, in any case, evidence of the registration and use in bad faith, according to par. 4(b)(i).

In the light of the above, the Complainant believes that the third and final element necessary for finding that the Respondent has engaged in abusive domain name registration and use has been established.

RESPONDENT

Respondent did not reply to the Complaint. 

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.

According to Paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements to obtain an order that a Disputed Domain Name should be transferred or cancelled:

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and are being used in bad faith.

The Panel has reviewed in detail the evidence available to it and has come to the following conclusions concerning the satisfaction of the three elements of paragraph 4(a) of the Policy in these proceedings:

(A) THE COMPLAINANT’S RIGHTS AND CONFUSING SIMILARITY OF THE DISPUTED DOMAIN NAME TO THE COMPLAINANT’S RIGHTS.

Paragraph 4(a)(i) of the Policy establishes the obligation of Complainant to demonstrate that the Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submitted copies of different trademarks registrations pertaining the terms "INTESA SANPAOLO” & “INTESA” for insurance; financial affairs; monetary affairs and real estate affairs, among many others.

The Complainant’s trademarks were registered prior to 2026, the year of the creation date of the Disputed Domain Name.

In the current case, the Disputed Domain Name is composed of the term “APP” together with a hyphen and the inclusion of the whole trademark “INTESA SANPAOLO®”. The term “APP” is a shortened term for an application or an application program.

In assessing confusing similarity, the Panel finds the Disputed Domain Name is confusingly similar to the Complainant’s trademark, as it incorporates the term “APP” and a hyphen together with the entirety of the "INTESA SANPAOLO®” and “INTESA®” trademarks. In this regard, UDRP panels agree that 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. See paragraph 1.8. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition 3.1 (“WIPO Jurisprudential Overview 3.1.).

UDRP panels agree that the TLD may usually be ignored for the purpose of determination of identity or confusing similarity between a domain name and the Complainant’s trademark as it is technical requirement of registration. See paragraph 1.11.1 of WIPO Jurisprudential Overview 3.1.

Therefore, the Panel concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy and the Disputed Domain Name is confusingly similar to Complainant’s “INTESA SANPAOLO®” & “INTESA®” trademarks.

(B) RESPONDENT’S LACK OF RIGHTS OR LEGITIMATE INTERESTS IN THE DISPUTED DOMAIN NAME.

The second element of the Policy requires that the Complainant establishes that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The generally adopted approach, when considering the second element, is that if a complainant makes out a prima facie case, the burden of proof shifts to the respondent to rebut it with relevant evidence demonstrating rights or legitimate interests in the domain name; see, for example, CAC Case No. 102333, Amedei S.r.l. v sun xin. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see e.g. WIPO case no. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd).

In this regard, Paragraph 4 (c) provides with circumstances which could prove rights or legitimate interest in the Disputed Domain Name on behalf of the Respondent such as:

(i) before any notice to Respondent of the dispute, Respondent is using or provides with demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) 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.

For the present case, the Complainant has confirmed in the Complaint that the Disputed Domain Name is not connected with or authorized by the Complainant in any way. From the information provided by the Complainant, there is no evidence or reason to believe that the Respondent (as individual, business or other organization) has been commonly known by the Disputed Domain Name.  

The Respondent’s name “Adam Loki” is all what it links the Disputed Domain Name with the Respondent. Absent of any other evidence such as a personal name, nickname or corporate identifier, the Panel is of the opinion that the Respondent is not commonly known by the Disputed Domain Name.

The Complainant indicates that they have not granted authorization to the Respondent to use their “INTESA SANPAOLO®” & “INTESA®” trademarks. The website associated with the Disputed Domain Name resolves to an inactive website. Different panels have confirmed that the lack of content at the Disputed Domain Name can be considered as a finding that Respondent does not have bona fide offering of goods and services (see, for example, Forum Case No. FA 1773444, Ashley Furniture Industries, Inc v. Joannet Macket/JM Consultants).

The fact that Respondent did not reply to the Complaint gives an additional indication that the Respondent lacks rights or legitimate interest since the Respondent did not provide with evidence of the types specified in paragraph 4 (c) of the Policy, or of any circumstances, giving rise to rights or legitimate interests in the disputed domain name.

Therefore, the Panel concludes that neither the Respondent nor the evidence establishes that the Respondent has any right or legitimate interest to the Disputed Domain Name. The Complainant has therefore also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

(C) BAD FAITH REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME.

Paragraph 4(a)(iii) of the Policy indicates that the Complainant must assert that the Respondent registered and is using the Disputed Domain Name in bad faith. In this sense, Paragraph 4(b) of the Policy sets out four circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 

(i) circumstances indicating that the Respondent has registered or 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or; 

(ii) The Respondent has 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 Respondent has engaged in a pattern of such conduct; or 

(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or 

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

In accordance with the evidence, the Disputed Domain Name is currently not in use. It is well established at different UDRP panel resolutions that the lack of use of a domain name does not prevent from finding bad faith (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. 2000-0003). 

In this vein, WIPO Jurisprudential Overview, version 3.1. at paragraph 3.3. provides some factors that have been considered relevant in applying the passive holding doctrine such as: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. 

For the current case, the evidence at hand confirms that Complainant’s “INTESA SANPAOLO®” & “INTESA®” trademarks are distinctive and the Complainant has a strong reputation in the financial industry, at least in Europe. Furthermore, the Complainant has provided evidence that the Respondent should have found information over the internet about Complainant’s trademarks rights over “INTESA SANPAOLO®” & “INTESA®” before registering the Disputed Domain Name. 

In addition to the above described and from the Panel perspective, the following circumstances also confirm Respondent’s bad faith in the registration of the Disputed Domain Name: 

(a) By conducting a search over the Internet, the Respondent should have been made aware of Complainant’s trademarks “INTESA SANPAOLO®” & “INTESA®” trademarks as well as their reputation in the financial industry in Europe; 

(b) The Disputed Domain Name is composed with the term APP. Absent of Respondent’s reply, this combination is only a confirmation of Respondent’s knowledge of Complainant’s trademark “INTESA SANPAOLO®” prior to the registration of the Disputed Domain Name; 

(c) Complainant’s trademark rights over “INTESA SANPAOLO®” & “INTESA®” predate the date of registration of the Disputed Domain Name;

(d) The website associated with the Disputed Domain Name is inactive. 

These factors make the Panel believe that the Disputed Domain Name was registered with the intention to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product. 

At his Complaint, the Complainant claims that the current owner registered the Disputed Domain Name with “phishing” purposes, to induce and divert the Complainant’s legitimate customers to its website and steal their money and the above could be easily verified given the particular nature of the Disputed Domain Name. For this purpose, the Complainant provided some evidence showing a warning issued by the Hosting Registrar for a suspected phishing connected with the website followed by a report. Absent of a reply by the Respondent, the Panel tends to agree that the website connected with the Disputed Domain Name might have been only registered for phishing purposes which it is a clear confirmation of bad faith - see paragraph 3.1.4. of WIPO Jurisprudential Overview 3.1.

One additional argument presented by the Complaint relates to the possibility that the Respondent registered the Disputed Domain Name with the purpose to resell it but did not provide with any evidence in this regard, however, this point does not affect the overall impression connected with the findings for these elements.

In light of the evidence presented to the Panel, including: a) the likelihood of confusion between the Disputed Domain Name and the Complainant’s “INTESA SANPAOLO®” & “INTESA®” trademarks, b) the lack of reply to this Complaint by Respondent, c) the fact that the Disputed Domain Name is being passively held and iv) the fact that the Disputed Domain Name might be used for phishing purposes, the Panel draws the inference that the Disputed Domain Name was registered is being used in bad faith. 

Therefore, the Panel concludes that Respondent registered and is using the Disputed Domain Name in bad faith and thus has satisfied the requirement under paragraph 4(a)(iii) of the Policy.