{ "case_number": "CAC-UDRP-104000", "time_of_filling": "2021-09-02 09:55:22", "domain_names": [ "MYINTESASANPAOLO.COM" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "CHENG LIN" ], "respondent_representative": null, "factual_background": "The Complainant has an established Internet presence and is also the owner of a large portfolio of Internet domain names including , , , , , , , , , , , and , , , , , , , , , , , , , all of which are now connected to the official website at .\r\n\r\nThe disputed domain name was registered on February 21, 2021.\r\n\r\nIn the absence of a response to the Complaint, the only information available about the Respondent is that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Center for verification of the registration details of the disputed 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 name.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant claims rights in the INTESA and INTESA SANPAOLO trademarks established by its ownership of the portfolio of trademark and service mark registrations described herein and its extensive use of the marks in its banking business since January 1, 2007 following a 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 asserts that it is among the top banking groups in the Euro zone, with a market capitalisation exceeding €45,3 billion, It has a presence in 25 countries, including Eastern Europe, the Mediterranean area, the United States, Russia, China, and India.\r\n\r\nIt has a network of approximately 4,300 branches capillary and well distributed throughout Italy where it is an undisputed leader in all business areas including retail, corporate and wealth management. With market shares of more than 19% in most Italian regions. The Complainant’s banking group offers its services to approximately 13,5 million customers. In Central-Eastern Europe it has a network of approximately 1.000 branches and over 7,2 million customers. \r\n\r\nThe Complainant submits that the disputed domain name is identical, or at least confusingly similar, to the Complainant’s trademarks INTESA and INTESA SANPAOLO because it exactly reproduces the INTESA SANPAOLO mark with the mere addition of the word “my”.\r\n\r\nThe Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name, because to the best of the Complainant’s knowledge the Respondent is not known by the disputed domain name and the Complainant, as owner of the INTESA and INTESA SANPAOLO marks, has not licensed the Respondent or anybody to use the disputed domain name. \r\n\r\nThe Complainant refers to a screen capture of the homepage of the website to which the disputed domain name resolves which has been annexed as an exhibit to the Complaint, and argues that the Respondent is not making any fair, non-commercial, or bona fide use of the disputed domain name. The Complainant argues that the screen capture shows that the Respondent’s website contains content sponsoring, among others, banking and financial services, for whom the Complainant’s trademarks are registered and used. This Panel notes however, that this statement is not correct because the screen capture merely shows a page with no content except for the words “home”, “MY BANK” and the url < https:\/\/www.myintesasanpaolo.com>.\r\n\r\nThe Complainant further alleges that the disputed domain name was registered and is being used in bad faith arguing that the Complainant’s trademarks INTESA and INTESA SANPAOLO are distinctive and well known all around the world. The fact that the Respondent has registered the disputed domain name that is confusingly similar to them indicates that the registrant had knowledge of the Complainant’s trademarks at the time of registration. \r\n\r\nIn addition, the Complainant contends that if the Respondent had carried out even a basic Google search in respect of the words INTESA SANPAOLO and INTESA, the same would have yielded obvious references to the Complainant. In support of this argument, in an annex to the Complaint, the Complainant has submitted the results of a Google search that it carried out. It contends that 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 Complainant’s trademark which is clear evidence of registration of the domain name in bad faith.\r\n\r\nThe Complainant adds that because of the similarity between the disputed domain name and the Complainant’s trademarks, Internet users, while searching for information on the Complainant’s services, are confusingly led to the websites of Complainant’s competitors, sponsored on the websites connected to the domain name at issue. Therefore, the Complainant deems that the Respondent has registered and is using the domain name at issue in order to intentionally divert traffic away from the Complainant’s web site.\r\n\r\nFurthermore, the contested domain name is not used for any bona fide offerings, but instead, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site (par. 4(b)(iv) of the Policy. Several WIPO decisions stated that the registration and use of a domain name to re-direct internet users to websites of competing organizations constitute bad faith registration and use under the Policy. See, e.g., Encyclopaedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753 (“Respondent’s Ownership of a site which is a misspelling of Complainant’s britannica.com site and which Respondent used to hyperlink to a gambling site demonstrates Respondent’s bad faith registration and use of the britannnica.com domain name”).\r\n\r\nIt is further contended that the current use of the disputed domain name is misleading to the Complainant’s clients and is likely to result in the loss of potential new ones, adding that the Respondent’s commercial gain is evident, since it is obvious that the Respondent’s sponsoring activity is being remunerated.\r\n\r\nFurthermore, the Complainant alleges that it is no coincidence that the Respondent has targeted the Complainant which is a big financial institution, and such diversionary practice is commonplace in the banking realm due to the high number of online banking users. The Complainant has previously brought a number of successful cases under the Policy where the Panellists ordered the transfer or the cancellation of the disputed domain names, detecting bad faith in the registrations. A list of the cases is provided in an annex to the Complaint.\r\n\r\nLastly, it shall be noted that on March 30, 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\n\r\nRESPONDENT:\r\n\r\nNo 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": "Language of Proceeding\r\n\r\nAlthough the language of the registration agreement is Italian, the Complainant requests this Panel to accept the Complaint in the English language and direct that English is the language of the proceeding, \r\n\r\nThis Complainant submits that, while the Complainant is an Italian entity, the Respondent appears to be based in the U.S.A. and that the English language is comprehensible to a wide range of Internet users worldwide.\r\n\r\nAdditionally, the Complainant argues that the spirit of Paragraph 11 of the Rules requires fairness in the selection of language by giving full considerations to the parties’ level of comfort with each language, therefore use of the English language is both fair and appropriate in the present proceeding.\r\n\r\nFurthermore, as the Respondent, who has provided an address in in the U.S.A, is likely to be an English-speaking subject and the Complainant bases its claim on its registered trademark legitimately owned and used in Italy and at an international level by the Complainant from several years all around the world. \r\n\r\nAs an alternative the Complainant requests that the Complaint is accepted as filed in English and a Response may be filed in either English, or Italian or the preferable language of the Respondent, if any. In such circumstances a Panel familiar with such languages should be appointed.\r\n\r\nRule 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the \"Rules\") Language of Proceedings confers on the Panel authority to determine the language of the language of this administrative proceeding having regard to the relevant circumstances\r\n\r\n(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.\r\n\r\nHaving considered the application of the Complainant, which is an Italian company, based in Italy, and considering that the registration agreement is in the Italian language, and therefore Italian would be the default language, and noting that the Respondent has registered the disputed domain name providing an address in the State of New Hampshire, U.S.A., he is likely to be familiar with the English language, and that the evidence adduced is in the English language, requiring no translations and the physical address of the Registrar chosen by the Respondent is in the State of California, U.S.A., this Panel is satisfied that there would be no prejudice to the Respondent if the Complainant’s application is granted. Having regard to the circumstances of this administrative proceedings, this Panel allows the Complainant’s application and directs that the language of this proceeding shall be English.\r\n\r\nThe 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 James Jude Bridgeman" ], "date_of_panel_decision": "2021-10-01 00:00:00", "informal_english_translation": "The Complainant claims rights in the INTESA and INTESA SANPAOLO trademarks and service marks and has adduced evidence of its ownership of the following registrations:\r\n\r\n• International trademark INTESA SANPAOLO, registration number 920896, registered on March 7, 2007, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n• EU trademark INTESA SANPAOLO, registration number 5301999, registered on June 18, 2007, for services in classes 35, 36 and 38;\r\n\r\n• International trademark INTESA, registration number 793367 registered on September 4, 2002 for services in class 36; and\r\n\r\n• EU trademark INTESA, registration number 12247979, registered on March 5, 2014, for goods and services in classes 9, 16, 35, 36 38, 41 and 42.\r\n\r\n", "decision_domains": { "MYINTESASANPAOLO.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }