{ "case_number": "CAC-UDRP-104775", "time_of_filling": "2022-08-10 09:37:22", "domain_names": [ "INTESSASANPAOLO.TOP" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "Vito Aloisio" ], "respondent_representative": null, "factual_background": "The Complainant is the Italian banking group resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. The market capitalization of the Complainant exceeds 35,6 billion euro. The Complainant has a network of 3,700 branches with market shares of more than 16% in most Italian regions and offers its services to approximately 13,5 million customers. The Complainant 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 specialised in supporting corporate customers is present in 25 countries, in particular in the Mediterranean area, United States, Russia, China and India.\r\n\r\nThe Complainant is the owner of the registrations for the trademarks “INTESA SANPAOLO” and “INTESA”:\r\n- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007 and duly renewed, in connection with classes 9, 16, 35, 36, 38, 41 and 42;\r\n- International trademark registration n. 793367 “INTESA”, granted on September 4, 2002 and duly renewed, in connection with class 36;\r\n- EU trademark registration n. 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; and\r\n- EU trademark registration n. 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\nMoreover, the Complainant is also the owner, among the others, of the following domain names bearing the signs “INTESA SANPAOLO” and “INTESA”: , .ORG, .EU, .INFO, .NET, .BIZ, , .ORG, .EU, .INFO, .NET, .BIZ and , , , , , , , , , , , , . All of them are now connected to the official website http:\/\/www.intesasanpaolo.com.\r\n\r\nThe disputed domain name registered on January 27, 2022, is identical, or at least confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. The disputed domain name exactly reproduces the well-known trademark “INTESA SANPAOLO”, with the mere doubling of the letter “S” in the mark’s verbal portion “INTESA”, representing a clear example of typosquatting.\r\n\r\nAccording to the WIPO decision Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc, Case n. D2001-1314, the domain name is 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.\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 disputed domain name.\r\n\r\nThe disputed domain name at stake does not correspond to the name of the Respondent and the Respondent is not commonly known as “INTESSASANPAOLO”. The disputed domain name is not fair or non-commercially used.\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. 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\nThe disputed domain name is not used for any bona fide offerings. 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 registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the 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.\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\nAccording to the Complainant 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\nThe risk of a wrongful use of the disputed domain name 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\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 disputed domain name in the present case, anyway we could find no other possible legitimate use of the disputed domain name. The sole further aim of the owner of the disputed domain name 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).", "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.", "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. Petr Hostaš" ], "date_of_panel_decision": "2022-09-15 00:00:00", "informal_english_translation": "The Complainant (Intesa Sanpaolo S.p.A.) is the owner of the (i) international trademark registration n. 920896 “INTESA SANPAOLO”; (ii) international trademark registration n. 793367 “INTESA”; (iii) EU trademark registration n. 5301999 “INTESA SANPAOLO”; (iv) EU trademark registration n. 12247979 “INTESA”. Moreover, the Complainant is also the owner of the several domain names bearing the signs “INTESA” and “BANCA INTESA”.\r\n\r\nThe disputed domain name was registered on January 27, 2022.", "decision_domains": { "INTESSASANPAOLO.TOP": "TRANSFERRED" }, "panelist": null, "panellists_text": null }