{ "case_number": "CAC-UDRP-103538", "time_of_filling": "2021-02-02 10:24:09", "domain_names": [ "INTESASANPOLOA.COM" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "lisa brgr" ], "respondent_representative": null, "factual_background": "The Complainant’s contentions can be summarised as follows:\r\n\r\nI. The disputed domain name is confusingly similar to trade marks in which the Complainant has rights\r\n\r\nThe Complainant states that it is the leading Italian banking group and one of the protagonists in the European financial arena. The Complainant informs that Intesa SaoPaolo resulted from the merger of the Italian banking groups Banca Intesa S.p.A. and SaoPaolo IMI S.p.A. in 2007. \r\n\r\nThe Complainant further states that it is amongst the top banking groups in the euro zone, with a market capitalisation exceeding EUR 37.4 billion, being the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). The Complainant has a strong presence in Central-Eastern Europe. It maintains an international network specialised in supporting corporate customers in 26 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\nIn addition to the trade marks mentioned above, the Complainant informs that it is also the owner of numerous domain names which contain the words “INTESA SAOPAOLO” and “INTESA”, including . \r\n\r\nThe disputed domain name was registered on 29 May 2020. The website is currently inactive. \r\n\r\nThe Complainant avers that the disputed domain name is confusingly similar to the Complainant’s trade marks INTESA SAOPAOLO and INTESA, and that the disputed domain name is a mere typosquatting version of the Complainant’s well-known trade mark INTESA SANPAOLO. \r\n\r\nIn order to substantiate its claim, the Complainant relies on a previous WIPO UDRP decision (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314), where the panel found the domain names and as being confusingly similar and a clear example of a “case of typosquatting” where the domain name is a slight alphabetical variation from a famous mark. WIPO jurisprudence offers many examples of confusing similarity brought about through easily made typing errors by an Internet user - particularly when the mark is another language from that of the user’s mother tongue”.\r\n\r\nII. The Respondent has no rights or legitimate interests in respect of the disputed domain name\r\n\r\nThe Complainant asserts that the Respondent has no rights in the disputed domain name, and that any use of the trade marks INTESA SAOPAOLO and INTESA has to be authorised by the Complainant. The Respondent has not been authorised or licensed by the Complainant to use the disputed domain name. \r\n\r\nThe Complainant also asserts that the Respondent is not known by the disputed domain name, nor is the dispute domain name being used for any fair or non-commercial use. \r\n\r\nIII. The Respondent registered and is using the disputed domain name in bad faith\r\n\r\nThe Complainant asserts that its trade marks INTESA and INTESA SAOPAOLO are distinctive and well known around the world, and that the fact that the Respondent registered a domain name which is confusingly similar to the Complainant’s trade marks indicates that the Respondent had knowledge of the Complainant’s trade marks at the time of registering the disputed domain name. In this connection, the Complainant avers that, had the Respondent undertaken a basic Google search, it would have come across the Complainant’s trade marks INTESA and INTESA SANPAOLO. This is a clear indication of registration of the disputed domain name in bad faith. \r\n\r\nMoreover, the disputed domain name is not being used for any bona fide offerings, nor does it connect to any website. 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 it to the Complainant, who is the owner of the trade marks to which the disputed domain name relate, or to a competitor of the Complainant, in either case for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy). \r\n\r\nThe Complainant further alludes to the doctrine of passive holding to support its claim for a finding of bad faith. In doing so, the Complainant relies upon previous WIPO UDRP panels (most notably, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-003; and Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615), as well as to paragraph 3.2 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0).\r\n\r\nFinally, the Complainant argues that the risk of a wrongful use of the disputed domain name is even higher in these proceedings given that the Complainant has already been targeted by some cases of phishing in the past few years. Furthermore, excluding any phishing purposes or other illicit use of the disputed domain name, the Complainant cannot find a possible legitimate use of the disputed domain name. The Respondent might have registered the disputed domain name in order to resell it to the Complainant, which evidences registration and use of the disputed domain name in bad faith.\r\n\r\nIn view of the above, the Complainant claims that the third and final element of the Policy has been established. \r\n", "other_legal_proceedings": "The Panel is unaware of any other pending or decided legal proceedings in respect of the disputed domain name.", "no_response_filed": "No administratively compliant Response has been filed.\r\n", "rights": "The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is identical or confusingly similar to trade marks 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": [ "Dr Gustavo Moser" ], "date_of_panel_decision": "2021-03-01 00:00:00", "informal_english_translation": "The Complainant relies upon the following registered trade marks, amongst others:\r\n\r\n• International trade mark registration no. 793367, dated 4 September 2002, for the word mark INTESA, in class 36 of the Nice Classification;\r\n\r\n• International trade mark registration no. 920896, dated 7 March 2007, for the word mark INTESA SAOPAOLO, in classes 9, 16, 35, 36, 41 and 42 of the Nice Classification; \r\n\r\n• EU trade mark registration no. 12247979, dated 5 March 2014, for the word mark INTESA, in classes 9, 16, 35, 36, 38, 41 and 42 of the Nice Classification; and \r\n\r\n• EU trade mark registration no. 5301999, dated 18 June 2007, for the word mark INTESA SAOPAOLO, in classes 35, 36 and 38 of the Nice Classification.\r\n", "decision_domains": { "INTESASANPOLOA.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }