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.<\/p>\n
Intesa Sanpaolo is among the top banking groups in the euro zone, with a market capitalisation exceeding 39,4 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 3,500 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 13,6 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 950 branches and over 7,1 million customers. Moreover, the international network specialised 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.<\/p>\n
On December 8, 2022, the Respondent registered the disputed domain name INTESASANPAOLO-SICUREZZA-ONLINE.COM.<\/p>\n
The website behind the disputed domain name contained a contact formular, to which the notification about the UDRP proceeding in case 105566 was sent. The CAC has received a response from the disputed site in which they stated: w<\/span>e are merely a domain name platform and do not account for the domain name owner. <\/span><\/p>\n In the view of Complainant, it is more than obvious that the disputed 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, INTESASANPAOLO-SICUREZZA-ONLINE.COM exactly reproduces the well-known trademark “INTESA SANPAOLO”, with the mere addition of the terms “SICUREZZA” (the Italian translation of “security”) and “ONLINE”, that are merely descriptive. <\/p>\n The Complainant states that 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 disputed domain name at issue.<\/p>\n The disputed domain name does not correspond to the name of the Respondent and, to the best of Complainant's knowledge, the Respondent is not commonly known as “INTESASANPAOLO-SICUREZZA-ONLINE”.<\/p>\n The disputed domain name was furthermore in the view of the Complainant registered and is used in bad faith.<\/p>\n The Complainant states that’s its trademarks “INTESA SANPAOLO” and “INTESA” are distinctive and well-known around the world.<\/p>\n 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. The Complainant submits an extract of a Google search in support of its allegation. In the view of Complainant, it is more than likely that the domain name at issue would not have been registered if it were not for Complainant’s trademark. This is a clear evidence of registration of the disputed domain name in bad faith.<\/p>\n In addition, the contested domain name is in the view of the Complainant not used for any <\/em>bone fide offerings. More particularly, there are present circumstances indicating that the Respondent has registered or acquired the disputed 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).<\/p>\n The Complainant states that the disputed domain name redirects to a parking page in which the same is offered for sale.<\/p>\n In the view of Complainant it is no coincidence that this speculation has 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. <\/p>\n On February 7, 2023, the Complainant’s attorneys sent to the Respondent a cease and desist letter, asking for the voluntary transfer of the disputed domain name at issue. Despite such communication, the Respondent did not comply with the above request. <\/p>\n <\/p>",
"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.<\/p>",
"no_response_filed": " NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. <\/p>",
"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).<\/p>",
"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).<\/p>",
"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).<\/p>",
"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.<\/p>",
"decision": "Accepted",
"panelists": [
"Jan Schnedler"
],
"date_of_panel_decision": "2023-07-20 00:00:00",
"informal_english_translation": " The Complainant is the owner, among others, of the following registrations for the trademarks “INTESA SANPAOLO” and “INTESA”: - International trademark registration n. 793367 “INTESA”, granted on September 4, 2002 and duly renewed, in connection with class 36; - 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; - 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.