{ "case_number": "CAC-UDRP-103315", "time_of_filling": "2020-09-30 12:09:50", "domain_names": [ "INTESASANMILAN.COM", "INTESASANPAOLOMILANBA.COM", "INTESASANPAOLOMILAN.COM" ], "case_administrator": "Olga Dvořáková (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Perani Pozzi Associati", "respondent": [ "Alighiero Calabrese" ], "respondent_representative": null, "factual_background": "The Complainant is the leading Italian banking group 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.\r\n\r\nIt is among the top banking groups in the euro zone, with a network of approximately 3,700 branches, a prominent presence and approximately 11,8 million customers. It is therefore very well known, as are its trademarks.\r\n\r\nThe Complainant is the owner of the prominent INTESA and INTESA SANPAOLO trademarks defined above.\r\n\r\nIt also owns many domain names incorporating its trademarks and which resolve to its official website at .\r\n\r\nThe Complainant has become aware that on March 12, 2020, the Respondent registered the disputed domain names. It has become very concerned at this development not only because of the transgression on its intellectual property rights, but because banks and other prominent companies and their clients have become targets for phishing and other disreputable activities and the Complainant wishes to guard against that eventuality happening with respect to itself and its clients in the light of the improper registration of the disputed domain names. The Complainant therefore wants to obtain the disputed domain names before they also are put to this improper and illegal use and it has brought this proceeding to that end.\r\n\r\n", "other_legal_proceedings": "None of which the Panel is aware.", "no_response_filed": "PARTIES' CONTENTIONS:\r\nCOMPLAINANT\r\n\r\nThe Complainant made the following contentions.\r\n\r\n\r\nA. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.\r\n\r\nOn March 12, 2020, the Respondent registered the domain names , and (\"the disputed domain names\") . That has been established by evidence that has been tendered by the Complainant and which the Panel accepts.\r\n\r\n The disputed domain names incorporate the well-known INTESA and INTESA SANPAOLO trademarks with various slight additions and variation of terms and letters, namely adding the geographic indicator “Milan”, the deletion of “Paolo” and the addition of some letters, all of which make them typical cases of typosquatting. That view is supported by many prior UDRP decisions that are analogous to the present case.\r\n\r\nIt is apparent from a comparison between the domain names and the trademarks that the domain names are confusingly similar to the trademarks.\r\n\r\n\r\nB. The Respondent has no rights or legitimate interests in the disputed domain names.\r\n\r\nThe Respondent has not been authorized by the Complainant to use its trademarks in domain names or in any other manner. \r\n\r\nThe Respondent is not commonly known by the disputed domain names. \r\n\r\nThe Respondent has not used any of the disputed domain names for a fair or legitimate purpose.\r\n\r\nIt is not possible to conceive of any legitimate reason for the Respondent having registered the disputed domain names or any legitimate use to which they could be put.\r\n\r\n\r\nC. The disputed domain names were registered and are used in bad faith.\r\n\r\nThat is so because the Complainant’s INTESA and INTESA SANPAOLO trademarks are distinctive and well known all around the world. The fact that the Respondent has registered three domain names that are confusingly similar to them shows that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain names. In addition, the Respondent could easily have found obvious references to the Complainant on Google. Therefore, it is more than likely that the domain names at issue would not have been registered if it were not for the existence of the Complainant’s well known trademarks. This is a clear evidence of registration of the domain names in bad faith.\r\n\r\nThe disputed domain names are not used for a bona fide purpose. It is more likely than not that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of the trademarks 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 names (paragraph. 4(b)(i) of the Policy).\r\n\r\nThe disputed domain names are not used for a bona fide purpose even if they are not connected to a web site. In fact, many UDRP decisions have decided 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, for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.\r\n\r\nMoreover, it is objectively not possible to understand what kind of use the Respondent could make with 3 domain names which correspond exactly with the Complainant’s trademarks other than an improper use.\r\n\r\nThis is therefore a case of passive holding which is considered to be use in bad faith.\r\n\r\nThe risk of a wrongful use of the domain names 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 has 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, for sensitive data of clients, such as user ID, password etc. Then, some clients have been cheated of their savings. \r\n\r\nAlso in the present case, the Complainant believes that the current owner registered the disputed domain names for “phishing”, in order to induce and divert the Complainant’s legitimate customers to its website and steal their money.\r\n\r\nEven excluding any “phishing” purposes or other illicit use of the domain names in the present case, there is no conceivable legitimate use of the disputed domain names. The sole further aim of the owner of the domain names under consideration might be to resell them to the Complainant, which represents, in any case, evidence of the registration and use of the domain names in bad faith, according to paragraph.4(b)(i) of the Policy, i.e., in circumstances indicating that the Respondent registered the domain names primarily for the purpose of selling, renting, or otherwise transferring them 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 registrant's documented out-of-pocket costs directly related to the domain names.\r\n\r\nIn the light of the above, the third and final element necessary for finding that the Respondent has engaged in abusive domain names registration and use has been established.\r\n\r\nRESPONDENT\r\n\r\nThe Respondent did not submit a Response in this proceeding.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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 names (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 names have been registered and are 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": [ "The Hon. Neil Brown, QC" ], "date_of_panel_decision": "2020-10-27 00:00:00", "informal_english_translation": "The Complainant is the owner of the following registrations, among others, for the trademarks INTESA and INTESA SANPAOLO:\r\n\r\n-\tInternational trademark registration n. 793367 “INTESA”, granted on September 04, 2002 and duly renewed, in class 36; \r\n\r\n-\tInternational trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 07, 2007 and duly renewed, in classes 9, 16, 35, 36, 41, 42;\r\n\r\n-\tEU trademark registration n. 12247979 “INTESA”, applied on October 23, 2013 and granted on March 05, 2014, in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n-\tEU trademark registration n. 5301999 “INTESA SANPAOLO”, applied on September 08, 2006, granted on June 18, 2007 and duly renewed, in classes 35, 36 and 38.\r\n\r\n(\" the INTESA and INTESA SANPAOLO trademarks\".)", "decision_domains": { "INTESASANMILAN.COM": "TRANSFERRED", "INTESASANPAOLOMILANBA.COM": "TRANSFERRED", "INTESASANPAOLOMILAN.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }