{ "case_number": "CAC-UDRP-103767", "time_of_filling": "2021-05-03 09:34:07", "domain_names": [ "LNTESASANPAOLO-CARTE.COM", "LNTESASANPAOLO-SICUREZZA.COM", "LNTESASANPAOLO-ASSISTENZA.COM" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "ANDREA BENAZZO" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nPRELIMINARY REQUEST FOR CONSOLIDATION\r\n\r\nAccording to the Registrar verification, the three disputed domain names would be owned by two different people, namely:\r\nFirst Name: ANDREA\r\nLast Name: BENAZZO\r\nAND\r\n\r\nFirst Name: CARMELLO\r\nLast Name: GIANLUCCI\r\nThe Complainant request consolidation in this proceeding under following facts:\r\nAccording to paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, WIPO panels have articulated principles governing the question of whether a single complaint filed with WIPO may be brought against multiple respondents. In particular, “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”.\r\n\r\nIn this regard, “Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., or ), (vii) the relevant language\/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and\/or disclosures by the respondent(s)”.\r\n\r\nMost of the above factors are included in the present case.\r\n\r\nFirst of all, it shall be considered that all the disputed domain names have common DNS, common Registrar and common service of privacy protection.\r\n\r\nIn addition, it shall be underlined that some of the new Registrants’ contact details provided by the concerned Registrar are fake. In particular, the address \" viatorini 33 - Ariccia\" does not exist.\r\n\r\nFurthermore, it shall be noted that both of the domain names at issue are passively held and such circumstance is a clear evidence of a common pattern of conduct which is aimed to damage Intesa Sanpaolo and its trademark rights on the signs “INTESA” and “INTESA SANPAOLO” (see the Complaint filed for further details in this concern).\r\n\r\nIt is clear that there is also a naming pattern in the disputed domain names, as all of them exactly reproduces the trademark “INTESA SANPAOLO” in the same typoquatted manner (namely the word LNTESASANPAOLO) with the addition of Italian generic\/descriptive words like “carte”, “sicurezza” and “assistenza” (meaning “cards”, “security” and “assistance”), that are typical of internet banking, a business sector in which the Complainant is fully involved.\r\nHence the Complainant requests the Panel to treat all Domain Names in a single proceeding. As a matter of fact, it would be quite cumbersome and inequitable for the Complainant to start three separate proceedings in this matter, while the consolidation would be fair and equitable to all parties, in view of the aforesaid common ownership or control.\r\n\r\nConsolidation would permit to deal in a single proceeding multiple domain name disputes arising from a common nucleus of facts and involving common legal issues. Doing so promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expenses, and generally fulfils the fundamental goals of the Policy”.\r\n\r\n***\r\n\r\nTHE DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS\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 January 01, 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 44,9 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 5,300 branches capillary and well distributed throughout the Country, with market shares of more than 21% in most Italian regions, the Group offers its services to approximately 14,7 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1.000 branches and over 7,1 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\nMoreover, the 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\nOn August 20 and 24, 2020 the Respondent registered the domain names .\r\n\r\nIt is more than obvious that the domain names at issue are identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. In particular exactly reproduce my Client’s trademark “INTESA SANPAOLO”, with the mere substitution of the letter “I” in the mark’s verbal portion “INTESA” with the letter “L” and the addition of Italian descriptive terms “CARTE”, “SICUREZZA” and “ASSISTENZA”.\r\n\r\nTHE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DOMAIN NAMES\r\n\r\nThe Respondent has no rights on the disputed domain names, and any use of the trademarks “INTESA SANPAOLO” and “INTESA” has to be authorized by the Complainant. Nobody has been authorized or licensed by the above-mentioned banking group to use the domain names at issue.\r\n\r\nThe domain names at stake do not correspond to the name of the Respondent and, to the best of our knowledge, the Respondent is not commonly known as “LNTESASANPAOLO-CARTE” and\/or “LNTESASANPAOLO-SICUREZZA” and\/or “LNTESASANPAOLO-ASSISTENZA”.\r\n\r\nLastly, the Complainant did not find any fair or non-commercial uses of the domain names at stake (see https:\/\/www.lntesasanpaolo-carte.com\/ https:\/\/www.lntesasanpaolo-sicurezza.com\/ and https:\/\/www.lntesasanpaolo-assistenza.com\/).\r\n\r\nTHE DOMAIN NAMES WERE REGISTERED AND ARE USED IN BAD FAITH\r\n\r\nThe domain names were registered and are used in bad faith.\r\n\r\nThe Complainant’s trademarks “INTESA SANPAOLO” and “INTESA” are distinctive and well known all around the world. The fact that the Respondent has registered three domain names that are confusingly similar to it indicates that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain names. In addition, if the Respondent had carried even a basic Google search in respect of the wordings “INTESA SANPAOLO” and “INTESA”, the same would have yielded obvious references to the Complainant. The Complainant submits an extract of a Google search in support of its allegation. According to Complainant 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 domain names at issue would not have been registered if it were not for Complainant’s trademark. \r\n\r\nIn addition, the disputed domain names are not used for any bona fide offerings. More particularly, there are present circumstances indicating that, by using the domain names, the Respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration 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 names (par. 4(b)(i) of the Policy).\r\n\r\nThe contested domain names are not used for any bona fide offerings, even if they are not connected to any web site, by now. In fact, 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\nIn the light of the above, the present case completely matches to the above requirements and the passive holding of the contested domain names 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 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 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\nAlso in the present case, the Complainant believes that the current owner registered the disputed domain names with the “phishing” purpose, in order to induce and divert the Complainant’s legitimate customers to its website and steal their money and the above could be easily verified given the particular nature of the disputed domain names (typosquatting).\r\n\r\nEven excluding any “phishing” purposes or other illicit use of the domain names in the present case, anyway we could find no other possible legitimate use of . 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, 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”).", "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 names.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.", "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": [ "Mr. Etienne Wéry" ], "date_of_panel_decision": "2021-05-28 00:00:00", "informal_english_translation": "Complainant's trademarks, including:\r\n\r\n- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 07, 2007;\r\n- EU trademark registration n. 5301999 “INTESA SANPAOLO”, applied on September 08, 2006 and granted on June 18, 2007; and\r\n- EU trademark registration n. 12247979 “INTESA”, filed on October 23, 2013 and granted on March 5, 2014.", "decision_domains": { "LNTESASANPAOLO-CARTE.COM": "TRANSFERRED", "LNTESASANPAOLO-SICUREZZA.COM": "TRANSFERRED", "LNTESASANPAOLO-ASSISTENZA.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }