{ "case_number": "CAC-UDRP-104622", "time_of_filling": "2022-06-02 09:14:30", "domain_names": [ "INTESASANPAOLO.CREDIT" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "Alexander Alberht" ], "respondent_representative": null, "factual_background": "The Complainant is the leading Italian banking group and also one of the protagonists in the European financial area. 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\nIntesa Sanpaolo is among the top banking groups in the euro zone, with a market capitalization exceeding 38,0 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 3,700 branches capillary and well distributed throughout the Country, with market shares of more than 16% 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 7,0 million customers. Moreover, the international network specialized 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 (provided in the Annex to the complaint).\r\nMoreover, the Complainant is also the owner, among the others, of the following domain names bearing the signs “INTESA SANPAOLO” and “INTESA”:\r\n. All of them are connected to the official Complainant´s website http:\/\/www.intesasanpaolo.com.\r\nThe disputed domain name (hereinafter referred to as “disputed domain name”) was registered on June 2, 2021 and redirect to the parking page.\r\nAccording to the Registrar verification, the Respondent is ‘Porkbun LLC’. The Respondent’s provided address as being at Sherwood, United States.", "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": "COMPLAINANT:\r\nA. The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks.\r\nThe Complainant contends that the disputed domain name is identical or at least confusingly similar to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA” because the disputed domain name reproduces the well-known trademark “INTESA SANPAOLO”.\r\nB. The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name.\r\nThe Complainant asserts that the Respondent has no rights on the disputed domain name and any use of the Complainant’s trademarks has to be authorized by the Complainant. The Complainant adds that anyone has been authorized or licensed by the Complainant to the disputed domain name.\r\nThe Complainant contends that the Respondent is not known as the disputed domain name . In addition, there is no any fair or non-commercial use of the disputed domain which redirects to the parking page.\r\nC. The Complainant contends that the domain name has been registered and is being used in bad faith.\r\nThe Complainant asserts that the disputed domain was registered and used in bad faith. First, the Complainant contends that its trademarks are distinctive and well-known all around the world and so the Respondent must have been aware of the Complainant’s trademarks at the time of registration of the disputed domain name. In accordance with this contention, the Complainant submitted Annex which reflects the internet search of the terms “INTESA SANPAOLO”.\r\n\r\nThe Complainant adds that the disputed domain is not used for any bona fide purposes and there are present circumstances indicating that the Respondent has registered the disputed domain primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name (Paragraph 4(b)(i) of the Policy).\r\nMoreover, the disputed domain redirects to a parking page in which the same domain name is offered for sale (provided in the Annex to the complaint).\r\nThe Complainant adds that several WIPO Panel decisions stated that “[a]lthough Respondent’s offer of the disputed Domain Name for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy” (see the WIPO Case No. D2002-0005, United Artists Theatre Circuit Inc. v. Domains for Sale Inc.).\r\nIn this regard, the Complainant contends that “[o]ffers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith […] This is based on the non-exhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others”: [see United Feature Syndicate, Inc. v. All Business Matters, Inc. (aka All Business Matters.com) and Dave Evans (WIPO Case No. D2000-1199); Alloy Rods Global, Inc. v. Nancy Williams (WIPO Case No. D2000-1392); Dell Computer Corporation v. Alex and Birgitta Ewaldsson (WIPO Case No. D2000-1087); eBay Inc. v. G L Liadis Computing, Ltd. and John L. Liadis d\/b\/a G L Liadis Computing Ltd. (WIPO Case No. D2000-1463)].\r\nMoreover, “[t]he sole fact that the disputed domain names have been registered by a person that does not use them but publicly offers them for rent or sale is the most perfect evidence of a bad faith activity in prejudice of Internet community and of the owner of the trademarks used as domain names” (the WIPO Case No. D2000-0245, TV Globo Ltda. v. Radio Morena).\r\nIn addition, the Complainant points out the Paragraph 4(b) of the Policy which provides a non-exhaustive list of circumstances that can constitute evidence of a Respondent’s bad faith in registering and using a domain name. In particular, the consensus view of WIPO UDRP panelists is that bad faith may in, some cases, be found in other conducts carried out by a domain name holder. 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\nThe Complainant asserts that the present case completely matches to the above requirements: “[t]he Panel accepts the Complainant’s submissions that […] it is not possible for the Respondent to have been unaware of the Complainant’s […] brand and associated trademarks prior to registering the Domain Name. As a consequence, the Panelist finds that in registering the Domain Name, the Respondent was aware of the Complainant’s […] brand and associated trademarks. Given the above information […] the Panelist can find no plausible circumstances in which the Respondent could legitimately use the Domain Name” (see the WIPO Case No. D2004-0071, Microsoft Corporation v. Superkay Worldwide, Inc.).\r\nThe Complainant contends that it is not possible for the Panelist to “conceive a plausible situation in which the Respondent would have been unaware of this fact at the time of registration” (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). On the contrary, the contested domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith” (see the WIPO Case No. D2000-0163, Veuve Clicquot Pnsardin, Maison Fondée en 1772 v. The Polygenix Group Co.). Besides, “It is not likely that any trader would choose a name including the trademark […] if not to create an impression of association with the Complainant” (the WIPO Case No. D2002-0810, Benetton Group S.p.A. v. Azra Khan).\r\nLastly, the Complainant contends that it is no coincidence that this Respondent’s speculation involved a big financial institution such as Intesa Sanpaolo. In fact, the diversion practice in banking realm is very frequent due to the high number of online banking users. In fact, it has also to be pointed out that the Complainant has already been part of other WIPO Cases where the Panelists ordered the transfer or the cancellation of the disputed domain names, detecting bad faith in the registrations. A list of the WIPO Cases in which Intesa Sanpaolo has been part as the Complainant is enclosed as Annex.\r\n\r\nRESPONDENT:\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": [ "JUDr. Radim Charvát, Ph.D., LL.M." ], "date_of_panel_decision": "2022-07-04 00:00:00", "informal_english_translation": "The Complainant is the owner of numerous trademark registrations, such as:\r\n-\tInternational trademark registration No. 920896 “INTESA SANPAOLO”, registered on March 7, 2007 and duly renewed, in connection with classes 9, 16, 35, 36, 41 and 42;\r\n-\tInternational trademark registration No. 793367 “INTESA”, registered on September 4, 2002 and duly renewed, in connection with class 36;\r\n-\tEU trademark registration No. 5301999 “INTESA SANPAOLO”, registered on June 18, 2007 and duly renewed, in connection with the classes 35, 36 and 38;\r\n-\tEU trademark registration No. 12247979 “INTESA”, registered on March 5, 2014, in connection with classes 9, 16, 35, 36 38, 41 and 42.\r\nThe Complainant proved its ownership of listed trademark registrations by the submitted extract from the Registers.", "decision_domains": { "INTESASANPAOLO.CREDIT": "TRANSFERRED" }, "panelist": null, "panellists_text": null }