{ "case_number": "CAC-UDRP-104386", "time_of_filling": "2022-03-02 09:46:36", "domain_names": [ "INTESASPAONLINE.ORG" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "Gabriella Campora" ], "respondent_representative": null, "factual_background": "The Complainant is a relevant Italian banking group with strong presence 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 has a market capitalization exceeding 44,2 billion euro, with presence in different business areas as retail, corporate and wealth management. The Complainant has a network of approximately 4,200 branches capillary, distributed throughout Italy, with market shares of more than 17% in most Italian regions, the Complainant offers its services to approximately 13,5 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. The Complainant supports international corporate customers in 25 countries, including in the United States, Russia, China and India.\r\n\r\nThe Complainant owns the International Trademarks INTESA since September 4, 2002 and INTESA SANPAOLO since March 7, 2007; and European’s Trademark rights over INTESA SANPAOLO, at least since September 8, 2006 and INTESA at least since October 23, 2013. \r\n\r\nThe Complainant also owns a domain names portfolio, based on the Trademarks: INTESA SANPAOLO and INTESA: , .org, .eu, .info, .net, .biz; , .org, .eu, .info, .net, .biz and , , , , , , , , , , , , , which are connected to the official website http:\/\/www.intesasanpaolo.com, registered on August 24, 2006.\r\n\r\nAccording to the evidence presented before the Panel, the disputed domain name was registered on July 19, 2021 and resolves to an inactive website.\r\n\r\nBy the time of this Decision, the disputed domain name and the website have remained inactive. ", "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\nPARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nComplainant Contentions: \r\n\r\n1) The Complainant assets 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, INTESASPAONLINE.ORG exactly reproduces the well-known trademark “INTESA”, with the mere addition of letters “SPA”, that represent Complainant’s legal form (“Società per Azioni”) and the addition of term “ONLINE” that is merely descriptive.\r\n\r\n2) The 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 the Complainant´s knowledge, the Respondent is not commonly known as “INTESASPAONLINE”.\r\n\r\nThe Complainant does not find any fair or non-commercial uses of the domain name at stake.\r\n\r\n\r\n3) The 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; 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. \r\n\r\nThe 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, enclosed as Annex E, 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\nThe consensus view of WIPO UDRP panelists 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\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 of the Clients have been cheated of their savings.\r\n\r\nOn November 4, 2021, the Complainant sent to the Respondent a Cease-and-Desist Letter, asking to forward the document to the domain name owner in order to require the voluntary transfer of the domain name at issue. The Respondent’s never replied to such communication.\r\n\r\n\r\nRESPONDENT:\r\n\r\nThe Respondent did not reply to any of the Complainant's contentions.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is 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": [ "Ms. MARÍA ALEJANDRA LÓPEZ GARCÍA" ], "date_of_panel_decision": "2022-03-28 00:00:00", "informal_english_translation": "The Complainant is a relevant Italian banking group with strong presence 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\n\r\nThe Complainant owns the following Trademarks: \r\n\r\n- International trademark registration No. 920896 INTESA SANPAOLO, granted on March 7, 2007 and duly renewed, in connection with classes 9, 16, 35, 36, 41 and 42;\r\n\r\n- EU trademark registration No.5301999 INTESA SANPAOLO, filed on September 8, 2006, granted on June 18, 2007 and duly renewed, in connection with the classes 35, 36 and 38;\r\n\r\n- International trademark registration No. 793367 INTESA, granted on September 4, 2002 and duly renewed, in connection with class 36;\r\n\r\n- EU trademark registration No. 12247979 INTESA, filed on October 23, 2013 and granted on March 5, 2014, in connection with classes 9, 16, 35, 36 38, 41 and 42.\r\n\r\n\r\nThe disputed domain name was registered on July 19, 2021 and resolves to an inactive website. ", "decision_domains": { "INTESASPAONLINE.ORG": "TRANSFERRED" }, "panelist": null, "panellists_text": null }