{ "case_number": "CAC-UDRP-103766", "time_of_filling": "2021-05-03 09:33:38", "domain_names": [ "intesạsanpaolo.com" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "james right" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is the leading Italian banking group.\r\n\r\nThe Complainant is the company resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.\r\n\r\nThe Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 44,9 billion euro.\r\n\r\nThe Complainant has a network of approximately 5.300 branches throughout Italy and has approximately 14,7 million customers.\r\n\r\nThe Complainant has a strong presence in Central-Eastern Europe with a network of approximately 1.000 branches and over 7,1 million customers.\r\n\r\nMoreover, the Complainant's 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 is the owner of several registrations for the trademarks “INTESA SANPAOLO\" and \"INTESA\".\r\n\r\nMoreover, the Complainant is also the owner, among others, of the following domain names bearing the signs “INTESA SANPAOLO” and “INTESA”: . All of them are pointing to the main Complainant’s website.\r\n\r\nOn January 18, 2021, the Respondent registered the disputed domain name.\r\n\r\nThe disputed domain name is identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. As a matter of fact, exactly reproduces the well-known trademark “INTESA SANPAOLO”, with the mere the substitution of the letter “A” with an “Ạ” (with a dot under the letter) in the term “INTESA”.\r\n\r\nThe Respondent has no rights on the disputed domain name, 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 Complainant to use the disputed domain name.\r\n\r\nThe 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 as “INTESẠSANPAOLO”.\r\n\r\nThe Complainant does not find any fair or non-commercial uses of the disputed domain name.\r\n\r\nThe domain name was registered and is 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 a domain name that is confusingly similar to them indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. 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. 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 disputed domain name would not have been registered if it were not for the Complainant’s trademark. This is a clear evidence of registration of the disputed domain name in bad faith.\r\n\r\nIn addition, the disputed domain name is not used for any bona fide offering of goods or services. More particularly, 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 the domain name registration 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 Respondent’s documented out-of-pocket costs directly related to the domain name.\r\n\r\nThe disputed domain name is not used for any bona fide offering of goods or services, even if it is 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.\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 trademark rights.\r\n\r\nAs regards to the first aspect, the Complainant has already extensively proved the renown of its trademarks. As regards the second circumstance, it must be underlined 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.\r\n\r\nIn the light of the above, 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.\r\n\r\nThe risk of a wrongful use of the disputed domain name 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 to a web page which imitates the Complainant's web page, 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.\r\n\r\nAlso in the present case, the Complainant believes that the current owner registered the disputed domain name 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 easily occur given the particular nature of the disputed domain name (typosquatting).\r\n\r\nEven excluding any “phishing” purposes or other illicit use of the domain name in the present case, the Complainant could find no other possible legitimate use of the disputed domain name. The sole further aim of the owner of the disputed domain name might be to resell it to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, according to paragraph 4(b)(i) of the Policy.\r\n\r\nOn March 2, 2021 the Complainant’s attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the disputed domain name. Despite such communication, the Respondent did not comply with the above 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. ", "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": [ "Michele Antonini" ], "date_of_panel_decision": "2021-06-06 00:00:00", "informal_english_translation": "The Complainant is the registrant, among others, of the following trademarks:\r\n\r\n- International trademark registration No. 920896 “INTESA SANPAOLO”, registered on March 7, 2007, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n- International trademark registration No. 793367 “INTESA”, registered on September 4, 2002, for goods and services in class 36; and\r\n\r\n- EU trademark registration No. 5301999 “INTESA SANPAOLO”, registered on June 18, 2007, for goods and services in classes 35, 36 and 38.\r\n\r\nThe disputed domain name was registered by the Respondent on January 18, 2021.", "decision_domains": { "INTESạSANPAOLO.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }