{ "case_number": "CAC-UDRP-103943", "time_of_filling": "2021-07-30 10:02:30", "domain_names": [ "SICUREZZA-LNTESASANPAOLO.COM" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "saad ali" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nTHE DISPUTED DOMAIN NAME IS 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 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 45,3 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 4,700 branches capillary and well distributed throughout the Country, with market shares of more than 19% in most Italian regions, the Group offers its services to approximately 13,5 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 25 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\nOn February 5, 2021 the Respondent registered the domain name .\r\n\r\nIt is more than obvious that the domain name at issue is identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. As a matter of fact, SICUREZZA-LNTESASANPAOLO.COM exactly reproduces the well-known trademark “INTESA SANPAOLO”, with the mere substitution of the letter “I” with the letter “L” in the word “INTESA” (LNTESA) – a clear example of typosquatting – and the addition of the term “SICUREZZA”, that is merely descriptive.\r\n\r\nIn support of the above, the Complainant draws the Panel’s attention to WIPO decision Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc, Case n. D2001-1314 – regarding the domain names and ”. The panel considered such domain names 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\n\r\nTHE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME\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 above-mentioned banking group to use the domain name at issue.\r\n\r\nThe domain name at stake does not correspond to the name of the Respondent and, to the best of our knowledge, the Respondent is not commonly known as “SICUREZZA-LNTESASANPAOLO”.\r\n\r\nLastly, the Complainant did not find any fair or non-commercial uses of the domain name at stake.\r\n\r\n\r\nTHE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH\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. The Complainant submits an extract of a Google search in support of its allegation. 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 name at issue would not have been registered if it were not for Complainant’s trademark. \r\n\r\nIn addition, the disputed domain name is not used for any bona fide offerings. More particularly, there are present circumstances indicating that 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 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 name (par. 4(b)(i) of the Policy).\r\n\r\nThe disputed domain name is not used for any bona fide offerings, 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 (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 has already extensively proved the renowned of its trademarks. For what concern 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 for enterprises.\r\n\r\nIn the light of the above, the present case completely matches to the above requirements and the passive holding of the disputed 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.).\r\n\r\nThe risk of a wrongful use of the domain name 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 oess interests» (Decision No. D2004-0615, Comerica Inc. v. Horoshiy, Inc.).\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 be easily verified 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, anyway we could find no other possible legitimate use of . The sole further aim of the owner of the domain name under consideration 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 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\nLastly, it shall be noted that on April 13, 2021 the Complainant’s attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the domain name at issue. Despite such communication, the Respondent did not comply with the above request.\r\n\r\nIn the light of the above, the third and final element necessary for finding that the Respondent has engaged in abusive domain name registration and use has been established.", "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\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).\r\n\r\nThis is a case of \"typosquatting“, i.e. the disputed domain name contains the Complainant’s trademark INTESA SANPAOLO in it's entirety only with the addition of the generic term \"sicurezza\" and replacing the \"i\" in INTESA with an \"l\". It is well established that the specific top level of a domain name such as “.com”, “.org” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.", "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).\r\n\r\nThe Complainant contends that the Respondent is not affiliated with him nor authorized by him in any way to use his trademarks in a domain name or on a website. The Complainant does not carry out any activity for, nor has any business with the Respondent.", "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).\r\n\r\nGiven the circumstances of the case, including the provided information of the use and reputation of the Complainant’s trademark INTESA SANPAOLO and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. The Panel therefore finds that the disputed domain name was registered in bad faith.\r\n\r\nThe disputed domain name does not currently resolve to a website. The disputed domain name enables the Respondent to send e-mails using an e-mail address that contains the disputed domain name.\r\n\r\nIt is inconceivable that the Respondent can use the e-mails connected to the disputed domain name for good faith use of the disputed domain name as part of an e-mail address.\r\n\r\nThe Panel agrees with the Complainant that presently the disputed domain name is not used for any bona fide offering of goods and that it is entirely inconceivable that the disputed domain name might be used by the Respondent for such purpose. The Panel finds it more conceivable as also argued by the Complainant, and not disputed by the Respondent, that the disputed domain name is registered and used by the Respondent for phishing purposes or alternatively with the intention of selling, renting, or otherwise transferring the disputed domain name for valuable consideration in excess of the Respondent documented costs related to the disputed domain name. Even if the registration of the disputed domain name by the Respondent is with the sole purpose of continued passive holding the Panel in conclusion finds that the disputed domain name has been registered and is being used in bad faith.", "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": [ "Lars Karnoe" ], "date_of_panel_decision": "2021-09-01 00:00:00", "informal_english_translation": "The Complainant is the owner, among others, of the following registrations for the trademarks “INTESA SANPAOLO” and “INTESA”:\r\n\r\n\r\n- International trademark registration n. 793367 “INTESA”, granted on September 4, 2002 and duly renewed, in class 36;\r\n\r\n- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007 and duly renewed, in classes 9, 16, 35, 36, 41, 42;\r\n\r\n- EU trademark registration n. 12247979 “INTESA”, applied on October 23, 2013 and granted on March 5, 2014, in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n- EU trademark registration n. 5301999 “INTESA SANPAOLO”, applied on September 8, 2006, granted on June 18, 2007 and duly renewed, in classes 35, 36 and 38.\r\n\r\n\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”: INTESASANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ, INTESA-SANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ and INTESA.COM, INTESA.INFO, INTESA.BIZ, INTESA.ORG, INTESA.US, INTESA.EU, INTESA.CN, INTESA.IN, INTESA.CO.UK, INTESA.TEL, INTESA.NAME, INTESA.XXX, INTESA.ME. All of them are now connected to the official website http:\/\/www.intesasanpaolo.com.", "decision_domains": { "SICUREZZA-LNTESASANPAOLO.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }