{ "case_number": "CAC-UDRP-103026", "time_of_filling": "2020-04-27 09:52:15", "domain_names": [ "VERIFICA-INTESANPAOLO.COM" ], "case_administrator": "Šárka Glasslová (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Perani Pozzi Associati", "respondent": [ "salvatore sanzone" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe 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 1 January 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.\r\n\r\nIntesa Sanpaolo is among the top banking groups in the euro zone, with a market capitalisation exceeding 26.1 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 3,800 branches capillary and well distributed throughout the Country, with market shares of more than 15% in most Italian regions, the Group offers its services to approximately 11.8 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1,000 branches and over 7.2 million customers. \r\n\r\nMoreover, 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, Russia, China and India.\r\n\r\nMoreover, the Complainant is also the owner, among the others, of the following domain names bearing the signs \"INTESA SANPAOLO\" and \"INTESA\": , and , , , , , , , , , , , , . All of them are now connected to the official website .\r\n\r\nThe disputed domain name was registered on 9 September 2019.\r\n\r\nThe Complainant’s representatives sent a cease and desist letter to the Respondent on 23 October 2019 asking for the voluntary transfer of the disputed domain name, but the Respondent did not comply with such request.\r\n\r\nThe Registrar confirmed that the Respondent is the current registrant of the disputed domain name and that the language of the registration agreement is English.\r\n\r\nThe Respondent has not filed a Response.", "other_legal_proceedings": "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\nThe Complainant made the following contentions: \r\n\r\nThe Complainant argues that it is more than obvious that the disputed domain name is identical or – at least – confusingly similar to the Complainant’s trademarks \"INTESA SANPAOLO\" and \"INTESA\". As a matter of fact, VERIFICA-INTESANPAOLO.COM exactly reproduces the Complainant’s well-known trademark \"INTESA SANPAOLO\", with the mere omission of letters \"S\" and \"A\" in the mark’s verbal portion \"INTESA\" and the addition of the Italian descriptive term \"VERIFICA\", meaning \"VERIFICATION\".\r\n\r\nThe Complainant further contends that the Respondent has no right or legitimate interest in respect of the disputed domain name. In particular, the Complainant states that the Respondent has no rights on the disputed domain name, and any use of the trademark \"INTESA SANPAOLO\" and \"INTESA\" has to be authorized by the Complainant, whereas nobody has been authorized or licensed by the Complainant to use the disputed domain name.\r\n\r\nThe 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 \"VERIFICA-INTESANPAOLO\".\r\n\r\nLastly, the Complainant does not find any fair or non-commercial uses of the disputed domain name.\r\n\r\nTurning to the bad faith argument, the Complainant asserts that its trademarks \"INTESA\" and \"INTESA SANPAOLO\" 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\" and \"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 would not have been registered if it were not for the Complainant’s trademark. The Complainant argues that this is a clear evidence of registration of the domain name in bad faith.\r\n\r\nIn addition, the Complainant submits that the disputed domain name is not used for any bona fide offerings. More particularly, there are present circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy).\r\n\r\nThe disputed domain name is not used for any bona fide offerings, even if it is not connected to any web site, at the time of filing the Complaint. The Complaint refers to numerous UDRP decisions which 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 (e.g. WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows, and also paragraph 3.2 of the WIPO Jurisprudential Overview 3.0). In particular, the Complainant infers that the consensus view of the WIPO UDRP panels 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.\r\n\r\nAs regards the first aspect, the Complainant argues it has extensively proved the renown of its trademarks. For what concern the second circumstance, the Complainant states that it is objectively not possible to understand what kind of use the Respondent could make with the disputed domain name which does exactly correspond to the Complainant’s trademarks and that is so similar to the Complainant’s domain names currently used by the Complainant to provide online banking services for enterprises.\r\n\r\nThe Complainant then quotes the reasoning from the WIPO Case No. D2004-0615, Comerica Inc. v. Horoshiy, Inc., and concludes that the present case completely matches the above requirements and that the passive holding of the disputed domain name has to be considered a use in bad faith. \r\n\r\nPursuant to the Complainant, the risk of a wrongful use of the disputed domain name 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.\r\n\r\nEven excluding any \"phishing\" purposes or other illicit use of the disputed domain name, the Complainant could find any other possible legitimate use of VERIFICA-INTESANPAOLO.COM anyway. The sole further aim of the owner of the disputed domain name might be to resell it to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, according to paragraph 4(b)(i) of the Policy.\r\n\r\nOn these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.", "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": [ "Mgr. Vojtěch Chloupek" ], "date_of_panel_decision": "2020-06-08 00:00:00", "informal_english_translation": "The Complainant submitted evidence that it is the registered owner of the following registrations for the trademarks \"INTESA\" and \"INTESA SANPAOLO\":\r\n\r\n-\tthe international trademark registration No. 793367 for \"INTESA\", registered since 4 September 2002 for the class 36;\r\n\r\n-\tthe international trademark registration No. 920896 for \"INTESA SANPAOLO\", registered since 7 March 2007 for the classes 9, 16, 35, 36, 41 and 42;\r\n\r\n-\tthe EU trademark registration No. 12247979 for \"INTESA\", applied on 23 October 2013 and granted on 5 March 2014, for the classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n-\tthe EU trademark registration No. 5301999 for \"INTESA SANPAOLO\", applied on 8 September 2006, granted on 18 June 2007, for the classes 35, 36 and 38; and\r\n\r\n-\tthe Italian trademark registration No. 1042140 for \"INTESA SANPAOLO\", applied on 2 February 2007, granted on 7 March 2007, for the classes 9, 16, 35, 36, 38, 41 and 42.\r\n", "decision_domains": { "VERIFICA-INTESANPAOLO.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }