{ "case_number": "CAC-UDRP-106532", "time_of_filling": "2024-05-17 09:51:55", "domain_names": [ "IT-INTESA-SANPAOLO.COM" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Intesa Sanpaolo S.p.A.", "respondent": [ "Denis Emasin" ], "respondent_representative": null, "factual_background": "

Intesa Sanpaolo is among the top banking groups in the eurozone, with a market capitalization exceeding 64,5 billion euros, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 3 300 branches capillary and well distributed throughout the Country, with market shares of more than 15% 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 900 branches and over 7,3 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 (submitted Report about Intesa Sanpaolo).<\/span><\/p>\n

The Complainant is the owner of numerous trademark registrations for “INTESA SANPOLO” or “INTESA” (see above). Moreover, the Complainant owns, among the others, the following domain names containing the “INTESA SANPAOLO” and “INTESA” signs: <INTESASANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ>, <INTESA-SANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ> and <INTESA.COM, .INFO, .BIZ, .ORG, .US, .EU, .CN, .IN, .CO.UK, .TEL, .NAME, .XXX, .ME>. All of them are connected to the Complainant’s official website under <INTESANPAOLO.COM> domain name.<\/span><\/p>\n

The disputed domain name < IT-INTESA-SANPAOLO.COM> (hereinafter “disputed domain name”) was registered on 18 December 2023. According to the Registrar, the Respondent is ‘Denis Emasin’. The Respondent’s provided address as being at Nice, France.<\/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": "

COMPLAINANT:<\/span><\/u><\/p>\n

A. The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks.<\/p>\n

The Complainant claims that it is more than obvious that the disputed domain name is identical, or – at least – confusingly similar, to the Complainant’s “INTESA SANPAOLO” and “INTESA” trademarks. The disputed domain name exactly reproduces the “INTESA SANPAOLO” well-known trademark, with the mere addition of the “IT” acronym (which represents the abbreviation of the geographical term \"ITALY\", the country in which Complainant’s headquarters is located).<\/p>\n

B. The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name.<\/p>\n

The Complainant claims that the Respondent has no rights to the disputed domain name and that nobody has been authorized or licensed by the above-mentioned banking group to use the disputed domain name.<\/p>\n

The Complainant states that the disputed domain name does not correspond to the name of the Respondent and the Respondent is not commonly known as “IT-INTESA-SANPAOLO”.<\/p>\n

Lastly, the Complainant does not find any fair or non-commercial uses of the disputed domain name (furnished screenshot of the website under the disputed domain name).<\/p>\n

C. The Complainant contends that the disputed domain name has been registered and is being used in bad faith.<\/p>\n

According to the Complainant, the disputed domain name was registered and is used in bad faith.<\/p>\n

The Complainant claims that its “INTESA SANPAOLO” and “INTESA” trademarks 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 “INTESA SANPAOLO” and “INTESA” verbal elements, the same would have yielded obvious references to the Complainant. The Complainant submits an extract of a Google search in support of its allegation. 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 the Complainant’s trademark. This is a clear evidence of registration of the domain name in bad faith.<\/p>\n

The Complainant adds that the disputed domain name is not used for any bone fide<\/em> offerings. More particularly, there are circumstances indicating that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his website.<\/p>\n

First of all, several services can be detected, but not in good faith: in fact, the domain name is connected to a website promoting banking and financial services for which the Complainant’s trademarks are registered and used (submitted screenshots of the Complainant’s official website).<\/p>\n

Consequently, Internet users, while searching for information on the Complainant’s services, are confusingly led to the website of the Respondent.<\/p>\n

Therefore, the Complainant deems that the Respondent has registered and is using the disputed domain name to intentionally divert traffic away from the Complainant’s website.<\/p>\n

Past panels have stated that the registration and use of a domain name to re-direct Internet users to websites of competing organizations constitute bad faith registration and use under the UDRP.<\/p>\n

The current use of the disputed domain name, which allows accessing to the website of the Respondent, also through the Complainant’s trademark, causes, as well, great damages to the latter, due to the misleading of their present clients and to the loss of potential new ones. So, the Respondent’s conduct is even worse.<\/p>\n

The Complainant claims that the Respondent’s commercial gain is evident since it is obvious that the Respondent’s sponsoring activity is being remunerated. The Complainant adds that it is no coincidence that this speculation has involved a big financial institution such as Intesa Sanpaolo. In fact, the diversion practice in the 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

Lastly, on 5 January 2024, the Complainant’s attorneys sent to the Respondent’s Registrar a cease-and-desist letter, asking to forward the document to the domain name owner in order to require the voluntary transfer of the disputed domain name. Despite such communication, the Respondent did not comply with the above request.<\/p>\n

<\/p>\n

RESPONDENT:<\/p>\n

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 UDRP).<\/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 UDRP).<\/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 UDRP).<\/p>", "procedural_factors": "

The Panel is satisfied that all procedural requirements under the UDRP were met and there is no other reason why it would be inappropriate to provide a decision.<\/p>", "decision": "Accepted", "panelists": [ "Radim Charvát" ], "date_of_panel_decision": "2024-06-26 00:00:00", "informal_english_translation": "

The Complainant is the owner of the following trademark registrations:<\/span><\/p>\n