Decision for dispute CAC-UDRP-101602

The Panel is not aware of any other legal proceedings that relate to the disputed domain name.

The Complainant is, inter alia, a registered owner of the following trademarks containing word elements "BANCA" and “INTESA”:

(i) BANCA INTESA (word), EU Trademark, filing (priority) date 24 March 1998, filing no. 779793, registered for goods and services in classes 9, 16, 36, 38, 41, and 42.

(ii) BANCA INTESA (word in special characters), international (WIPO) trademark, priority date 27 May 2004, registration date 24 June 2004, trademark no. 831572, registered for services in classes 36;

besides other national (e.g. Italian) trademarks consisting of the " INTESA " denomination.
(collectively referred to as "Complainant's trademarks").

The Complainant has also registered a number of domain names under generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD") containing the term “INTESA” or “BANCA INTESA”.

The Complainant (Intesa Sanpaolo S.p.A.) is a leading Italian banking group and also one of the protagonists in the European financial arena. The Complainant is the company resulting from the merger (effective as of 1 January 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.

The disputed domain name <bancaintesa-online.info> was registered on 1 September 2007 and is held by the Respondent.

The disputed domain name is not currently associated with any active website.

The Complainant seeks transfer of the disputed domain name to the Complainant.

The Parties' contentions are the following:

COMPLAINANT:

CONFUSING SIMILARITY

The Complainant states that:

- The disputed domain name contains “BANCA” and “INTESA” word elements of Complainant's trademarks in its entirety and it is therefore almost identical (i.e. confusingly similar) to Complainant’s trademarks.

- The addition of the generic term “ONLINE“ adds no distinctiveness to the disputed domain name.

Thus, according to the Complainant the confusing similarity between Complainant’s trademarks and the disputed domain name is clearly established.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant states that:

- The Respondent has not been commonly known by the disputed domain name.

- The Complainant has not authorized, permitted or licensed the Respondent to use Complainant’s trademarks in any manner. The Respondent has no connection or affiliation with the Complainant whatsoever. On this record, the Respondent has not been commonly known by the disputed domain name.

- Furthermore, the disputed domain name website has been inactive during its existence, which implies that there was no Respondent’s intention to use the disputed domain name for legitimate purposes.


BAD FAITH REGISTRATION AND USE

The Complainant states that:

- Seniority of the Complainant's trademarks predates the disputed domain name registration and such trademarks are well-known in relevant business circles. The Respondent can be considered to be aware of the Complainant's trademark when registering the disputed domain name due to well-known character thereof, which should have been checked by the Respondent by performing a simple internet search.

- The disputed domain name (at the time of filing of the Complaint) did not resolve to any active website. In the light of the foregoing, the Complainant asserts that the disputed domain name was registered and used with the sole purpose of selling the disputed domain name to the Complainant.

- It is well-founded that registration of the disputed domain name that is confusingly similar to the Complainant’s trademarks which enjoys strong reputation, plus other facts, such as above described non-use of the disputed domain name, are sufficient to establish bad faith under the 4(a)(iii) of the Policy.

- The Complainant refers to previous domain name decisions contending that registering a domain name incorporating trademarks that enjoy high level of notoriety and well-known character constitute prima facie registration in bad faith, despite a fact that such domain names are not genuinely used.



The Complainant presents the following evidence which has been assessed by the Panel:

- Information about the Complainant and its business;
- Excerpts from various trademark databases regarding Complainant's trademarks and copies of certificates of registration of such trademarks;
- Screenshots of the disputed domain name website (evidencing non-use of the same);
- Screenshots of Google search results for “Banca Intesa”
- A letter from the Complainant to the Respondent (dated 20 June 2017) requesting the transfer of the disputed domain name to the Complainant.

RESPONDENT:
The Respondent has not provided any Response to the Complaint.

The Panel concluded that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

For details, see "Principal Reasons for the Decision".

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.

For details, see "Principal Reasons for the Decision".

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.

For details, see "Principal Reasons for the Decision".

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.

RIGHTS

The disputed domain name and the Complainant’s trademarks are nearly identical since both fully incorporate words “BANCA INTESA”.

Addition of a non-distinctive word “ONLINE” and a hyphen “-“ - between BANCAINTESA and ONLINE cannot prevent the association in the eyes of internet consumers between the disputed domain name and the Complainant’s trademarks and thus the likelihood of confusion still exists.

For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the “.info”) must be disregarded under the identity and confusing similarity tests as it is a necessary technical requirement of registration.

Therefore, the Panel has decided that there is identity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the the Policy.

NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent.

In addition, given the fact that (i) the disputed domain name has not been genuinely used and (ii) in the absence of the Respondent's response, the Panel concludes that there is no indication that the disputed domain name was intended to be used in connection with a bona fide offering of goods or services as required by UDRP.

Consequently, the evidentiary burden shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. However, the Respondent failed to provide any information and evidence that it has relevant 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 Respondent has not used the disputed domain name in any manner, however, the Panel concludes (as it has been ruled in many similar cases, as for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, <jupiterscasino.com>, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, <ladbrokespoker.com> and described in the WIPO UDRP Overview 3.0, paragraph 3.3) that the apparent lack of so-called active use (e.g. to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.

Examples of what may be cumulative circumstances found to be indicative of bad faith include cases in which (i) the Complainant has a well-known trademark and (ii) there is no genuine use (e.g. a mere "parking") of the disputed domain name by the Respondent (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).

Based upon the concepts above, which the Panel finds satisfied in this case, even though there is no real use of the dispute domain name, the Panel contends, on the balance of probabilities, that the disputed domain name is being used (held) by the Respondent in bad faith.

For the reasons described above, since (i) there is only a remote chance that the Respondent has registered the disputed domain name just by a chance and without having a knowledge about the existence of the Complainant’s rights and business (ii) there is no real use of the dispute domain name, the Panel contends, on the balance of probabilities, that the disputed domain name has been registered and is being used by the Respondent in bad faith.

Thus, the Panel has taken a view that 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).