Decision for dispute CAC-UDRP-103290

None of which the Panel is aware.

- EU trade mark registration no. 7310337 for the word mark “ISP”, filed on October 13, 2008 and granted on February 12, 2010 , in class 36;

- EU trade mark registration no. 779827 for the word mark “GRUPPO INTESA”, filed on March 24, 1998 and granted on November 15, 1999 in classes 9, 16, 36, 41 and 42;

- EU trade mark registration no. 5344544 for the word mark “GRUPPO INTESA SANPAOLO”, filed on September 28, 2006, granted on July 6, 2007 in classes 35, 36 and 38.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant is a leading Italian banking group. It 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.

Intesa Sanpaolo is among the top banking groups in the euro zone, with a market capitalisation exceeding 34,8 billion euro. Thanks to a network of approximately 3,700 branches distributed throughout Italy, it has a market shares of more than 15% in most Italian regions, and offers its services to approximately 11.8 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1.000 branches and over 7,2 million customers. Moreover, its international network supports corporate customers 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. The Complainant is known among consumers also as “ISP” (the acronym of “Intesa SanPaolo”).

Moreover, the Complainant is also the owner, among the others, of the following domain names bearing the signs “GRUPPO INTESA” and “GRUPPO INTESA SANPAOLO”:
GRUPPOINTESA.COM, .ORG, .NET, .EU, .IT, .US and
GRUPPOINTESASANPAOLO.COM, .INFO, .BIZ, .ORG, .NET, .EU. All of them are now connected to the official website http://www.intesasanpaolo.com.

On May 13, 2020, the Respondent registered the domain name GRUPPOISP.ONLINE (the "Domain Name").

The Domain Name is connected to a website which has been blocked by Google Safe Browsing through a warning page.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the 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).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

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.

The Panel accepts that Complainant owns registered trade marks for the terms "ISP" and "GRUPPO INTESA SANPAOLO". The Panel also accepts the Domain Name would be most likely read as the Italian word "Grouppo" (i.e. the Italian word for Group) combined with the initials "ISP". It follows that the term "ISP" is recognisable in the Domain Name. As the Complainant has a registered trade mark in "ISP", the fact that it is recognisable in the Domain Name is sufficient for a finding of confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. In this respect see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). The Panel also accepts that the Domain Name will most likely read as the Complainant's "GRUPPO INTESA SANPAOLO" mark with "INTESA SANPAOLO" being abbreviated to the initials ISP. Accordingly, the Domain Name is also confusingly similar to that mark for the purposes of the Policy. The Complainant has, therefore, made out the requirements of 4(a)(i) of the Policy.

The Complainant contends that it "is clear" that the Domain Name has been used for the purposes of phishing. That may be correct, but unfortunately it is not really clear at all from the material filed with the Complaint that this is so. There is evidence that Google has blocked the site as malicious, but whether that is because it is a site engaged in phishing or some other malicious activity is neither explained nor evidenced.

However, the Panel is prepared to accept that the Domain Name has been registered and used for the purpose of through the mechanism of the Domain Name itself to impersonate the Complainant with a view to further some fraudulent purpose. In this respect the Panel relies upon (i) the Domain Name itself which seems inherently likely to involve a reference to the Complainant (ii) the fact that Google has blocked the page because it is likely to be being used to (in the translated words of the blocking page) "trick [the internet user] into carrying out dangerous operations"; and (iii) notwithstanding the serious allegations raised by the Complainant in the Complaint, this has not been disputed by the Respondent. There is no right or legitimate interest in holding a domain name for such a purpose, and the registration and holding of a domain name for such a purpose involves registration and use in bad faith. It follows that the Complainant has made out the requirements of 4(a)(ii) and (iii) of the Policy.