{ "case_number": "CAC-UDRP-101899", "time_of_filling": "2018-03-01 09:41:23", "domain_names": [ "INTESASANPAOLOCRYPTOCURRENCIES.COM", "INTESASANPAOLOCRYPTOCURRENCY.COM" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Perani Pozzi Associati", "respondent": [ "Kleos srl" ], "respondent_representative": null, "factual_background": "The Complainant is an Italian banking consortium called Intesa Sanpaolo S.p.A, which arose from a merger in 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two Italian banking groups. Intesa Sanpaolo has a market capitalisation of over €46.4 billion, and is a market leader in Italy, in business banking (including retail, corporate and wealth management). It has a network of approximately 4,800 branches in Italy and approximately 12.6 million customers. Intesa Sanpaolo also has a strong presence in Central-Eastern Europe with a network of approximately 1.100 branches and over 7.6 million customers. Its international network is focused on corporate customers and is established in 26 countries worldwide but with a presence in the Mediterranean rim. \r\n\r\nOn November 9, 2017, the Respondent registered the disputed domain names and .\r\n", "other_legal_proceedings": "There are no other proceedings the Panel is aware of. ", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nTHE DISPUTED DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS\r\n\r\nThe disputed domain names are identical, or – at least – confusingly similar, to the Complainant’s name and mark “INTESA SANPAOLO”. In fact, and exactly reproduce the word trade mark with the addition of the generic words “cryptocurrency” and “cryptocurrencies”, both of which are merely descriptive but may allude to the online banking services offered by the Complainant. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first UDRP element (see, among other, M\/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384, , Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434, and Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923, ).\r\n\r\n\r\nTHE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAMES\r\n\r\nThe Respondent has no rights in the disputed domain names, since KLEOS SRL has nothing to do with the Complainant. No-one has been authorized or licensed by the Complainant to use the disputed domain names. The disputed domain names do not correspond to the name of the Respondent and it is not commonly known as the disputed domain names. Lastly, there are no fair or non-commercial uses of the disputed domain names based on their home-pages or otherwise.\r\n\r\n\r\nTHE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE USED IN BAD FAITH\r\n\r\nThe disputed domain names were registered and are used in bad faith. The Complainant’s name and marks are distinctive and well-known all around the world. The fact the Respondent has registered two domain names confusingly similar to them, indicates the Respondent had knowledge of the Complainant’s name and marks at the time of registration of the disputed domain names. In addition, if the Respondent had carried even a basic Google search in respect of the word mark “INTESA SANPAOLO”, the results would have yielded references to the Complainant. 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 names would not have been registered if it were not for Complainant’s trade mark. This is a clear evidence of registration of the disputed domain names in bad faith. \r\n\r\nIn addition, the disputed domain names are not used for any bona fide offerings. More particularly, the circumstances indicate the Respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names (para. 4(b)(i) of the Policy). The disputed domain names are not used for any bona fide offerings, even if they are not connected to any websites. In fact, countless UDRP decisions confirm 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. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and the consensus view on this point, as reflected in the “WIPO Overview of WIPO Views on Selected UDRP Questions” at paragraph 3.2 (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 the first factor, the Complainant has already proved the renown of its trademarks. As to the second factor, it must be noted that it is not possible to understand what kind of use the Respondent could legitimately make with a domain name which exactly corresponds to the Complainant’s trademarks and to offer or provide online banking services for enterprise. In the light of the above, the present case meets the requirements and the passive holding of the contested domain name has to be considered a use in bad faith. See Comerica Inc. v. Horoshiy, Inc., D2004-0615 (The very act of having acquired [the domain name] raises the probability of Respondent using [it] in a manner that is contrary to Complainant’s legal rights and legitimate interests. [...] To argue that Complainant should have to wait for some future use of the disputed domain names to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would likely be the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant’s goodwill and business. The fact that this misappropriation may occur in a manner as yet undetermined at an uncertain future date, does not negate the Respondent’s bad faith. On the contrary, it raises the spectre of continuing bad faith abuse by Respondent of Complainant’s name and mark and related rights and legitimate business interests). \r\n\r\nThere is a greater risk of a wrongful use of the disputed domain names in the present case, due to phishing. 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 accounts or withdrawing from them. 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. Some clients have been cheated of their savings. In the present case, the Complainant believes that the current owner may have registered the disputed domain names with a “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 names (Complainant’s trademark + descriptive terms alluding of the online currencies). \r\n\r\nEven excluding any “phishing” purposes or other illicit use of the disputed domain names in the present case, we can see no other possible legitimate use of the disputed domain names. The sole further aim of the owner of the disputed domain names might be to resell them to the Complainant, which represents, evidence of the registration and use in bad faith, according to par. 4(b)(i). In the light of the above, the third and final element necessary for finding that the Respondent has engaged in abusive domain name registration and use has been established.\r\n\r\nRESPONDENT:\r\n\r\nThe Respondent says it has registered and acquired many various domain names since 1996\/1997, and continues to register domains aimed at new technological sectors, both productive and virtual. As the technology of blockchain is currently the newest and most innovative technology and is in continuous and constant evolution, it decided to register various domains with extension .com. In the crypto and coin sector it has registered, for example, all the words that match the letters of the Greek alphabet, English words combined with bits, coins, numbers, adjectives and so on. \r\n\r\nThe Respondent says that what must be emphasized in the present dispute is that there can be no danger of confusion or deception in an area which is not within the competence of the Complainant and the Complainant does not offer blockchain or cryptocurrency.\r\n\r\nThe Respondent says the Complainant cannot claim exclusive ownership of domains bearing words in common use, for example INTESA means agreement, SANPAOLO is the name of a saint, combined together CRYPTOCURRENCIES or CRYPTOCURRENCY. \r\n\r\nIt says Blockchain technology is only the technology that underlies cryptocurrencies, but it does not mean wanting to operate in decentralized currencies that have nothing to do with centralized entities such as banks, which due to their institutional appearance have been kept far from the sector in question. \r\n\r\nThe Respondent says that only after 12 months has the Complainant sought to claim the legitimate ownership of domains that they had not even remotely thought of or imagined before. It therefore claims the full legitimacy of the registration of the two disputed domain names the subject of this dispute. \r\n", "rights": "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).", "no_rights_or_legitimate_interests": "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).", "bad_faith": "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).", "procedural_factors": "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.", "decision": "Accepted", "panelists": [ "Victoria McEvedy" ], "date_of_panel_decision": "2018-04-17 00:00:00", "informal_english_translation": "The Complainant relies on its name and mark INTESA SANPAOLO and in particular, its many national, regional and international registered marks. Its primary International Mark, is No. 920896, the word mark “INTESA SANPAOLO”, granted on 7 March 2007 in classes 9, 16, 35, 36, 38, 41 and 42 and registered in over 60 countries. \r\n\r\nIt also has many registered EUTMs (formerly CTMs) and relies on, by way of example, its trade mark No. 5301999, the word mark INTESA SANPAOLO, applied for on 8 September 2006 and granted on 18 June 2007 in classes 35, 36 and 38 as well as trade mark No. 5421177, INTESA SANPAOLO, the word and device mark, applied for on 27 October 2006 and granted on 5 November 2007 in classes 9, 16, 35, 36, 38, 41 and 42. \r\n\r\nIt has a substantial portfolio of national registered marks, often with the word mark followed by country and service designations. \r\n\r\nIt is also the owner of an extensive portfolio of domain names including the mark and with the gTLDs: .COM, .ORG, .EU, .INFO, .NET, .BIZ and also in hyphenated form as INTESA-SANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ. All of which resolve to the official website http:\/\/www.intesasanpaolo.com.\r\n", "decision_domains": { "INTESASANPAOLOCRYPTOCURRENCIES.COM": "TRANSFERRED", "INTESASANPAOLOCRYPTOCURRENCY.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }