{ "case_number": "CAC-UDRP-103534", "time_of_filling": "2021-02-01 09:19:22", "domain_names": [ "INTESA-SANPAOLO-SICUREZZA-ONLINE-OTP.COM" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "Giovanni Iovino" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is Intesa Sanpaolo S.p.A., a 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 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\nIntesa Sanpaolo is among the top banking groups in the euro zone, with a market capitalisation exceeding 37,4 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 5,360 branches capillary and well distributed throughout Italy, with market shares of more than 21% in most Italian regions, the Group offers its services to approximately 14.6 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. Moreover, the international network specialised in supporting corporate customers is present 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\nThe Complainant owns several trademarks “INTESA” and “INTESA SANPAOLO” such as:\r\n\r\n- International trademark registration “INTESA”, no. 793367, registered on 04.09.2002, for services in class 36, designating several countries for protection;\r\n\r\n- International trademark registration “INTESA SANPAOLO”, no. 920896, registered on 07.03.2007, for goods and services in classes 9, 16, 35, 36, 41, 42, designating several countries for protection;\r\n\r\n- EU trademark registration “INTESA”, no. 12247979, filed on 23.10.2013, registered on 05.03.2014, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n- EU trademark registration “INTESA SANPAOLO”, no. 5301999, filed on 08.09.2006, registered on 18.06.2007, for services in classes 35, 36 and 38.\r\n\r\nThe Complainant is also the owner, among the others, of the following domain names bearing the signs “INTESA SANPAOLO” and “INTESA”: . All of them are now connected to the official website http:\/\/www.intesasanpaolo.com.\r\n\r\nThe disputed domain name < INTESA-SANPAOLO-SICUREZZA-ONLINE-OTP.COM> was registered on 21.02.2020.", "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\nPARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant's contentions are the following:\r\n\r\nThe disputed domain name is identical, or – at least – confusingly similar to the Complainant's earlier trademarks “INTESA SANPAOLO” and “INTESA” since it reproduces exactly the Complainant's well-known trademark “INTESA SANPAOLO”, with the mere addition of the terms “SICUREZZA” (meaning “security”) and “ONLINE” and the addition of letters “O”, “T” and “P”.\r\n\r\nThe Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name for a number of reasons.\r\n\r\nFirst, the Complainant asserts that the Respondent has no rights on the disputed domain name, and any use of the trademarks “INTESA SANPAOLO” and “INTESA” has not been authorized or licensed by the Complainant.\r\n\r\nFurther, the Complainant asserts that the domain name at stake does not correspond to the name of the Respondent and, to the best of its knowledge, the Respondent is not commonly known as “INTESA-SANPAOLO-SICUREZZA-ONLINE-OTP”.\r\n\r\nLastly, the Complainant asserts that it does not find any fair or non-commercial uses of the domain name at stake.\r\n\r\nThe Complainant further argues that the disputed domain name has been registered and is used in bad faith.\r\n\r\nThe Complainant’s asserts that that its “INTESA” and “INTESA SANPAOLO” trademarks are distinctive and well known and therefore, that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks.\r\nIn addition, the Complainant further asserts 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.\r\n\r\nFurthermore, the disputed domain name is not used for any bona fide offerings as the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.\r\n\r\nThe Complainant further asserts that the disputed domain name is not used for any bona fide offerings, even if it is not connected to any web site, by now, thus, being passively held, which is also an evidence of bad faith. The Complainant asserts that countless UDRP decisions 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 (see, in this regard, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and also the panels’ consensus view on this point, as reflected in the “WIPO Overview of WIPO Views on Selected UDRP Questions” at paragraph 3.2.).\r\n\r\nIn particular, the consensus view of WIPO UDRP panellists 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 to the first aspect, the Complainant asserts that it has already extensively proved the renown of its trademarks. For what concern the second circumstance, the Complainant asserts that it is objectively not possible to understand what kind of use the Respondent could make with a domain name which does exactly correspond to the Complainant’s trademarks and that results so similar to the Complainant’s domain names currently used by the latter to provide online banking services for enterprises.\r\n\r\nIn the light of the above, in the Complainant’s view, the present case completely matches to the above requirements and the passive holding of the contested domain name has to be considered a use in bad faith: «The very act of having acquired [the domain name] raises the probability of Respondent using [it] in a manner that is contrary to Complainant’s legal rights and legitimate interests. [...] To argue that Complainant should have to wait for some future use of the disputed domain names to occur in order to demonstrate Respondent’s bad faith use is to render intellectual property law into an instrument of abuse by the Respondent. The result would be the likelihood of the accumulation and use of disputed domain names for the implicit, if not explicit, purpose of misappropriating or otherwise unlawfully undermining Complainant’s goodwill and business. The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests» (Decision No. D2004-0615, Comerica Inc. v. Horoshiy, Inc., concerning just the case of a bank).\r\n\r\nThe Complainant also asserts that the Respondent has engaged in abusive domain name registration and use.\r\n\r\nThus, in the Complainant’s view, the risk of a wrongful use of the domain name at issue is even higher in the present case, since the Complainant apparently 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. The Complainant asserts 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, the Complainant asserts that some of the Clients have been cheated of their savings.\r\n\r\nThe Complainant further asserts that, even excluding any “phishing” purposes or other illicit use of the domain name in the present case, it could not find other possible legitimate use of . The sole further aim of the owner of the domain name under consideration might be, as per the Complainant’s assertions to resell it to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, according to par. 4(b)(i) («circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name»).\r\n\r\nAlso, the Complainant underlined that, on July 6, 2020 the Complainant’s attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the domain names in dispute. Despite such communication, according to the Complainant’s assertions, the Respondent did not comply with the above request.", "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": [ "Delia-Mihaela Belciu" ], "date_of_panel_decision": "2021-03-07 00:00:00", "informal_english_translation": "The Complainant bases its Complaint on the:\r\n\r\n-\tInternational trademark registration “INTESA”, no. 793367, registered on 04.09.2002, for services in class 36, designating several countries for protection;\r\n\r\n-\tInternational trademark registration “INTESA SANPAOLO”, no. 920896, registered on 07.03.2007, for goods and services in classes 9, 16, 35, 36, 41, 42, designating several countries for protection;\r\n\r\n-\tEU trademark registration “INTESA”, no. 12247979, filed on 23.10.2013, registered on 05.03.2014, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n-\tEU trademark registration “INTESA SANPAOLO”, no. 5301999, filed on 08.09.2006, registered on 18.06.2007, for services in classes 35, 36 and 38.\r\n\r\n", "decision_domains": { "INTESA-SANPAOLO-SICUREZZA-ONLINE-OTP.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }