{
    "case_number": "CAC-UDRP-102516",
    "time_of_filling": "2019-06-06 09:32:32",
    "domain_names": [
        "BINTESASANPAOLO.COM"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Intesa Sanpaolo S.p.A."
    ],
    "complainant_representative": "Perani Pozzi Associati",
    "respondent": [
        "Lidia  Galbiati"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is the leading Italian banking group and one of the protagonists in the European financial arena. The Complainant is the result of a merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. The Complainant has a market capitalisation exceeding 40,9 billion euro. \r\n\r\nIn Italy, the Complainant acts through a network of approximately 4,100 branches distributed throughout the country, with market shares of more than 16 % in most Italian regions. The Complainant offers its services to approximately 11,8 million Italian customers. The Complainant has a strong presence also in Central-Eastern Europe with a network of approximately 1,100 branches and over 7,3 million customers. Moreover, the international network specialised in supporting corporate customers is present in 25 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States, the Russian Federation, China and India.\r\n\r\nThe disputed domain name was registered on 19 March 2019.\r\n\r\n",
    "other_legal_proceedings": "To the best of her knowledge, the Panel is not aware of any other pending or decided legal proceedings relating to the disputed domain name.",
    "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nAccording to the Complainant, the disputed domain name is identical, or at least confusingly similar, to the Complainant's trademarks INTESA SANPAOLO and INTESA, since it exactly reproduces the well-known trademark INTESA SANPAOLO, with the mere addition of the initial letter \"b\". Hence, the Complainant maintains that the disputed domain name is a clear example of typosquatting.\r\n\r\nThe Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant did not authorize the Respondent to reflect its trademarks in the disputed domain name, nor the Complainant's trademarks were ever licensed to the Respondent. Moreover, the disputed domain name is passively held and therefore there is no evidence of a fair or non-commercial use of it.\r\n\r\nThe Complainant points out that the disputed domain name has been registered and is being used in bad faith. The Complainant's trademarks are distinctive and well-known internationally. The fact that the Respondent registered a confusingly similar domain name is a clear indication that at the time of the registration of the disputed domain name the Respondent was aware of the Complainant's trademark. Accordingly, there is a strong presumption that the disputed domain name would not have been registered if it did not coincide with the Complainant's trademark.\r\n\r\nAs far as use in bad faith is concerned, the Complainant maintains that the disputed domain name is not used in connection with a bona fide offering of goods and services. The fact that the disputed domain name is currently not actively used cannot exclude bad faith. Under certain circumstances, which the Complainant affirms to be present in this case, passive holding amounts to use in bad faith.\r\n\r\nFurthermore the fact that the disputed domain name coincides with a well-known third party's trademark makes any possible use of the domain name inconceivable. The risk of a wrongful use of the disputed domain name is even higher in the present case, since the Complainant is a bank and the use of the disputed domain name could have dramatic impacts on the Complainant's costumers and on their savings. \r\n\r\nLastly, the Complainant points out that the Respondent could use the disputed domain name for the purpose of transferring it to the Complainant for valuable consideration in excess of the documented out-of pocket costs, which would also be evidence of use in bad faith.\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 the UDRP were met and there is no other reason why it would be inappropriate to provide a decision.\r\n\r\nIn particular, the Panel notes that in the present case the Complaint was filed in English rather than in Italian, which is the language of the Registration Agreement. When the CAC received the Registrar Verification answers, it notified the Complainant of the language of the Registration Agreement and requested the Complainant to either request a change of language from Italian to English, or to re-file the Complaint with another UDRP provider, as the CAC did not provide for the necessary technical support in Italian. The Complainant submitted an amended Complaint, requesting to conduct the proceedings in English for the following reasons:\r\n\r\n- English is an international language comprehensible to a wide range of Internet users worldwide. Since the spirit of Paragraph 11 of the Rules seems to be to ensure fairness in the selection of language by giving full considerations to the parties’ level of comfort with each language, English seemed to be the fair language in the present proceeding.\r\n\r\n- the UDRP proceedings have been started because the Respondent deliberately registered a domain name incorporating a well-known registered trademark, legitimately owned and used worldwide by the Complainant since many years.\r\n\r\nIn any event, the Complainant mentioned that it would accept as a fair way of proceeding, the fact that:\r\n\r\n- the Complaint is filed in English;\r\n- a possible Response is filed either in English or in Italian;\r\n- a Panel familiar with both languages is appointed to decide this case.\r\n\r\nAccording to Paragraph 11 of the Rules, the Panel has the power to determine that the language of the UDRP proceedings is a language different from that of the Registration Agreement, having regard to the specific circumstances of the case.  \r\n\r\nIn this case, being the Respondent an Italian individual, and being the Registration Agreement in Italian, Italian was certainly the most appropriate language to deal with. \r\n\r\nIt is however worth mentioning that pursuant to Paragraph 10(b) and (c) of the Rules, the Panel shall ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective cases. Therefore, Paragraph 10(b) and (c) of the Rules refers to two equally important requirements, fairness in the treatment of the parties and expeditiousness.\r\n\r\nAs to fairness towards the Respondent, the Panel is of the opinion that fairness is ensured even if the current UDRP proceedings are conducted in English. As a matter of fact, the Panel has found one recent case precedent, between the same parties and referring to a domain name very similar to the one at stake, where the Panel requested the CAC to notify the Complainant's request of language change to the Respondent in Italian. Notwithstanding this, the Respondent failed to submit a reply, or to object to the language change (see Decision of 15 May 2019 on CAC Case No. 102425, Intesa San Paolo S.p.A. vs. Lidia Galbiati, for the domain name <intesasanpaolobanking.com>). In that case, the domain name contained one English term \"banking\", which denotes at least some knowledge of English by the Respondent. In that case, likewise in the current one, the domain names were registered under the gTLD \".com\", which, by definition, is gTLD used for domain names addressed to the international public that usually knows English.\r\n\r\nSince the Respondent was already involved in a very similar UDRP case, with the same issues regarding the language change, that were notified to her also in Italian, it is evident that the Respondent is now familiar with the procedure and with the rights conferred to the Respondent to object to the language change and to the merits of the Complainant's contentions within a specific deadline. In view of this familiarity, when the Respondent received the Complaint, she could have filed a reply, even in Italian (the Complainant itself stated that it had no objections to accept a Response in Italian, and the CAC appointed a Panel who is familiar with both languages). However, the Respondent decided not to file a Response, nor to object to the request of language change. \r\n\r\nAs to expeditiousness, in view of the circumstances explained above, it is highly likely that a notification in Italian of the request of change of the language of the proceeding from Italian to English, would only have had, this time, the sole effect to further extend the deadline to file a Response, without any significant impact on the proceedings. The same would apply if the Panel were to deny the language change, as the Complainant would have to translate its Complaint in Italian, not considering the fact that the UDRP should be re-filed with another provider, as indicated by the CAC in its Notification of Deficiencies in Complaint. \r\n\r\nFor all the reasons explained above, the Panel is of the opinion that no further notification to the Respondent of the change of language should be made, and that the proceedings may continue in English, as requested by the Complainant. This decision is based on the fact that, according to the Panel, the Respondent was given a fair opportunity to present her case, which she deliberately decided not to take, and that any other different Panel's decision would have a significant negative impact on the expeditiousness of the proceedings.",
    "decision": "Accepted",
    "panelists": [
        "Angelica Lodigiani"
    ],
    "date_of_panel_decision": "2019-07-13 00:00:00",
    "informal_english_translation": "For the purpose of this Complaint, the Complainant relies on the following earlier trademarks:\r\n\r\n- INTESA SANPAOLO, International registration No. 920896, of March 7, 2007, duly renewed, in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n- INTESA SANPAOLO, EU registration No. 5301999 filed on September 8, 2006 and granted on June 18, 2007, duly renewed, in classes 35, 36 and 38;\r\n\r\n- INTESA SANPAOLO (figurative), EU registration No. 5421177, filed on October 27, 2006 and granted on November 5, 2007, duly renewed, in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n- INTESA, International trademark registration No. 793367, of September 4, 2002, duly renewed, in class 36;\r\n\r\n- INTESA, EU trademark registration No. 12247979, filed on October 23, 2013 and granted on March 5, 2014, in classes 9, 16, 35, 36 38, 41 and 42;\r\n\r\n- BANCA INTESA SANPAOLO, EU trademark registration No. 5302377, filed on September 8, 2006, granted on July 6, 2007, duly renewed, in classes 35, 36 and 38;\r\n\r\n- BANCA INTESA, Italian trademark registration No. 362017000132887, filed on December 18, 1997, granted on June 20, 2000, duly renewed, in classes 9, 16, 36, 41 and 42;\r\n\r\n- INTESA SANPAOLO, Italian trademark registration No. 1042140, filed on February 2, 2007, granted on March 7, 2007, duly renewed, in classes 9, 16, 35, 36, 38, 41 and 42.\r\n\r\nMoreover, the Complainant is also the owner of several domain names comprising its marks, which all redirect to the Complainant’s official website at www.intesasanpaolo.com.\r\n",
    "decision_domains": {
        "BINTESASANPAOLO.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}