{ "case_number": "CAC-UDRP-103542", "time_of_filling": "2021-02-02 14:50:41", "domain_names": [ "ASSISTENZA-INTESASANPAOLO.COM" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "Jones Andrew" ], "respondent_representative": null, "factual_background": "The Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 37,4billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). The Complainant operates under a network of approximately 5,360 branches spread throughout Italy, with a market share exceeding 21% in most Italian regions. As such, the Complainant’s group offers its services to approximately 14,6million customers. The Complainant also operates in Central-Eastern Europe with a network of approximately 1,000 branches and over 7,2 million customers. Moreover, the Complainant supports corporate customers in 26 countries, in particular in the Mediterranean area and in those areas where Italian companies are most active, such as the United States, Russia, China and India.\r\n\r\nThe disputed domain name was registered on 8 June 2020. On 11 August 2020 the Complainant’s attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the disputed domain name. The Respondent did not comply with the Complainant’s request.", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nThe Complainant maintains that the disputed domain name is identical or at least confusingly similar to its INTESA SANPAOLO and INTESA trademarks as the disputed domain name exactly reproduces the well-known trademark INTESA SANPAOLO, with the mere addition of the term “assistenza”, whose meaning is “assistance”.\r\n\r\nThe Complainant further argues that the Respondent lacks any rights and legitimate interests in the disputed domain name, as it never authorised the Respondent to use the trademarks INTESA and INTESA SANPAOLO. Moreover, the 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 by the disputed domain name. Lastly, according to the Complainant, the Respondent is not making any fair or non-commercial use of the disputed domain name.\r\n\r\nWith respect to the registration of the disputed domain name in bad faith, the Complainant points out that its trademarks INTESA and INTESA SANPAOLO are distinctive and well known. The fact that the Respondent registered a domain name confusingly similar to them indicates that the Respondent was aware of their existence at the time it registered the disputed domain name. Furthermore, a simple Google search against the wordings INTESA and INTESA SANPAOLO would have revealed several findings unequivocally associated with the Complainant. Therefore, it is more than likely that the disputed domain name would not have been registered if it were not for the Complainant’s trademarks.\r\n\r\nLastly, in connection with use in bad faith, the Complainant points out that even if there is no current use of the disputed domain name, passive holding of a domain name cannot prevent a finding of bad faith. This is so, especially in circumstances, like those at issue, where the disputed domain name corresponds to a well-known trademark and there is no conceivable use of the disputed domain name that the Respondent could possibly make without infringing the Complainant’s trademarks.\r\n\r\nIn the instant case, the risk of a wrongful use of the disputed domain name is even higher, since the Complainant operates in the banking field and has already been the victim of phishing activities in the past. Anyhow, even excluding phishing activities, as there is no conceivable legitimate use of the disputed domain name, the only other possibility is that the Respondent acquired the disputed domain name for selling, renting or otherwise transferring it to the Complainant, or to a Complainant’s competitor for a valuable consideration in excess of the documented out-of-pocket costs. \r\n\r\nThe fact that the Respondent failed to voluntary transfer the disputed domain name to the Complainant upon its request, is further indication of the Respondent’s 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 UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "Angelica Lodigiani" ], "date_of_panel_decision": "2021-03-07 00:00:00", "informal_english_translation": "The Complainant is the owner of the following trademarks:\r\n\r\n- INTESA, International registration No. 793367, of 4 September 2002, duly renewed, for services in class 36;\r\n\r\n- INTESA SANPAOLO, International registration No. 920896, of 7 March 2007, duly renewed, for goods and services in classes 9, 16, 35, 36, 41 and 42;\r\n\r\n- INTESA, EU registration No. 12247979, filed on 23 October 2013 and registered on 5 March 2014, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42; and\r\n\r\n- INTESA SANPAOLO, EU registration No. 5301999, filed on 8September 2006 and registered on 18 June 2007, duly renewed, for services in classes 35, 36 and 38.\r\n\r\nThe Complainant is also the owner of various domain names including the trademark INTESA SANPAOLO and INTESA, such as , < intesa-sanpaolo.com>, < intesa.com> and corresponding others under different gTLDs and ccTLDs. All these domain names redirect to the Complainant's official website at \"www.intesasanpaolo.com\".\r\n", "decision_domains": { "ASSISTENZA-INTESASANPAOLO.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }