{ "case_number": "CAC-UDRP-104207", "time_of_filling": "2021-12-02 09:36:59", "domain_names": [ "INTESASPAONLINE.COM" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "Gabriella Campora" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is a leading Italian banking group, created by a merger in 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banks. It is also among the top banking groups in the euro zone, with a market capitalisation exceeding EURO 47 billion. It is the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). It has a network of approximately 4,200 branches throughout Italy and a market share of over 17% in most Italian regions. It has approximately 13.5 million customers. It also has a strong presence in Central-Eastern Europe with a network of approximately 1.000 branches and over 7 million customers. It also has a corporate business 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 29 July 2021 the Respondent registered 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\n1.IDENTICAL OR CONFUSINGLY SIMILAR \r\nIt is obvious that the disputed domain name is identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. In fact, INTESASPAONLINE.COM exactly reproduces the well-known trademark “INTESA”, with the addition of generic letters “SPA”, for “Società per Azioni”, meaning “company limited” in Italian with the addition of the term “ONLINE”. The SPA represents Complainant’s legal form. These generic words do not alter the fact the whole mark is used. This impersonation is classic typosquatting.\r\n\r\n2. THE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DOMAIN NAME\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 disputed domain name at issue. The disputed domain name does not correspond to the name of the Respondent and, to the best of our knowledge, the Respondent is not commonly known as “INTESASPAONLINE” based on the WHOIS data. Finally, there are no fair or non-commercial uses of the disputed domain name on the face of it and based on the home page to which it resolves [DESCRIBE]. \r\n\r\n3.THE DISPUTED DOMAIN NAME WAS REGISTERED AND IS USED IN BAD FAITH\r\nThe disputed domain name INTESASPAONLINE.COM was registered and is used in bad faith. The Complainant’s trademarks “INTESA SANPAOLO” and “INTESA” are distinctive and are well known marks all over 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 out 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 relies on an extract of a Google search in support of its submissions. 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. This is a clear evidence of registration of the domain name in bad faith.\r\n\r\nIn addition, the disputed domain name is not used for any bona fide offering. In particular, there are 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 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). The disputed domain name is not used for any bona fide offering, even though it is no longer connected to any web site. 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. In 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. As regards to the first aspect, the Complainant has proved the fame and renown of its trademarks. As to the second circumstance, it is objectively not possible to understand what kind of use the Respondent could make with a domain name which exactly corresponds to the Complainant’s trademarks and the Complainant’s domain names –all currently used by the latter to provide online banking services. In the light of the above, the passive holding of the disputed domain name must be considered 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” from Decision No. D2004-0615, Comerica Inc. v. Horoshiy, Inc. \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. 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. In the present case, the Complainant believes that the current owner registered the disputed domain name with “phishing” as its purpose, in order to induce and\/or 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, here classic typosquatting. Even 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 INTESASPAONLINE.COM. 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.” In 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.\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": "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": [ "Victoria McEvedy" ], "date_of_panel_decision": "2022-01-11 00:00:00", "informal_english_translation": "The Complainant owns a portfolio of registered marks including:\r\n-EUTM registration no. 5301999 “INTESA SANPAOLO,” filed on 8 September 2006, and granted on 18 June 2007 and duly renewed, in classes 35, 36 and 38; and\r\n- EUTM registration n. 12247979 “INTESA”, filed on 23 October 2013 and granted on 5 March 2014, in classes 9, 16, 35, 36 38, 41 and 42.\r\nIt also owns various national and international marks including\r\n- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on 7 March 2007 and duly renewed, in classes 9, 16, 35, 36, 41 and 42; and\r\n- International trademark registration n. 793367 “INTESA”, granted on 4 September 2002 and duly renewed, in class 36.\r\nFurther, the Complainant is also the owner, among the others, of many domain names including and comprising the signs, including for example: “INTESA SANPAOLO” and “INTESA”: . All of which resolve to the official website http:\/\/www.intesasanpaolo.com.", "decision_domains": { "INTESASPAONLINE.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }