Decision for dispute CAC-UDRP-103535

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant owns the following “INTESA SANPAOLO” trademark registrations:

- International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 7, 2007 and duly renewed, in classes 9, 16, 35, 36, 38, 41 and 42; and
- EU trademark registration n. 5301999 “INTESA SANPAOLO”, granted on June 18, 2007 and duly renewed, in classes 35, 36 and 38.

The disputed domain name was registered on June 9, 2020, i.e. the Complainant’s trademark registrations cited above predate the registration of the disputed domain name.

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

The Complainant is the leading Italian banking group and also one of the protagonists in the European financial arena. 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.

Intesa Sanpaolo is among the leading banking groups in the Euro zone, with a market capitalisation exceeding 37.4 billion Euro. With market shares of more than 21% in most Italian regions, Complainant offers its services to approximately 14.6 million customers in Italy. Intesa Sanpaolo also 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 specialised in supporting corporate customers is present in 26 countries, including the United States, Russia, China and India.

The Complainant contends that the Respondent is not affiliated with the Complainant nor authorized by the Complainant in any way to use the trademark “INTESA SANPAOLO”. The Complainant does not carry out any activity for, nor has any business with the Respondent. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent is not related in any way to Complainant’s business. The disputed domain name does not correspond to the name of the Respondent, and the Respondent is not commonly known as “INTESASANPAOLO-GPAY”. According to the Complainant, there is no fair or non-commercial use of the disputed domain name because it does not resolve to an active website.

The Complainant further contends that the Respondent has registered the disputed domain name in bad faith. Its trademark “INTESA SANPAOLO” is distinctive and well known around the world. The fact that the Respondent has registered a domain name that is confusingly similar to this distinctive brand name indicates that the Respondent had positive knowledge of Complainant’s trademark at the time of registration of the disputed domain name. In addition, if Respondent had performed even a basic Google search in respect of the phrase “INTESASANPAOLO”, the search results would have shown obvious references to the Complainant.

On July 23, 2020, Complainant’s attorneys sent a cease and desist letter to the Respondent, asking for the voluntary transfer of the disputed domain name. Respondent did not react to this request.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

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).

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).

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).

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.

Except for the space between “INTESA” and “SANPAOLO” (which for technical reasons cannot be represented in an internet domain name) and the suffix ".com" (which is also owed to the technical requirements of the domain name system), the only difference between Complainant’s trademark “INTESA SANPAOLO” and the disputed domain name is the suffix “-GPAY”, which is an evident reference to the well-known payment service “Google Pay” (stylized as “G Pay”). Despite this addition Complainant’s trademark is easily recognised within the disputed domain name. The Panel therefore finds the disputed domain name to be confusingly similar to the “INTESA SANPAOLO” mark in which Complainant has rights.

The Panel further finds that the Complainant successfully submitted prima facie evidence that the Respondent has neither made any use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is making a legitimate non-commercial or fair use of the disputed domain name, nor is commonly known under the disputed domain name. This prima facie evidence was not challenged by the Respondent.

The Panel also finds that the Complainant successfully submitted prima facie evidence that the Respondent was aware of Complainant's rights in the well-known designation “INTESA SANPAOLO” when registering the disputed domain name. Again, this prima facie evidence was not challenged by the Respondent, which supports the conclusion that the disputed domain name was REGISTERED in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Given the fact that the disputed domain name does not resolve to an active website the primary question of this proceeding is whether or not Respondent has also USED the disputed domain name in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). Complainant's case regarding such bad faith use is that Respondent is effectively engaged in “passive holding” of the disputed domain name within the terms originally established by Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panel in Telstra noted that the question as to which circumstances of “passive holding” may constitute use in bad faith cannot be answered in the abstract. This question may only be determined on the basis of the particular facts of each case. A panel should give close attention to all the circumstances of the Respondent's behaviour, and a remedy can be obtained under the Policy only if those circumstances show that the Respondent's passive holding amounts to acting in bad faith (cf. Sanofi-aventis v. Gerard Scarretta, WIPO Case No. D2009-0229; Mount Gay Distilleries Limited v. shan gai gong zuo shi, CAC Case No. 100707; RueDuCommerce v. TOPNET, CAC Case No. 100617; INFRONT MOTOR SPORTS LICENCE S.r.l. v. VICTOR LEE, CAC Case No. 100385).

With this approach in mind, the Panel has identified the following circumstances as material to the issue in the present case:

(i) Complainant's trademark has a history of more than 10 year (with an even longer history of its two predecessors Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.), a strong reputation, is highly distinctive and is widely known (particularly in Italy where the Respondent is located);

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, nor can the Panel conceive of any such good faith use;

(iii) taking into account the nature of the disputed domain name the Panel cannot conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law; and

(iv) finally, special care should be taken with regard to bank websites, as there is a continuous realistic risk that domain names comprising a bank’s name will be abused for phishing attacks to illegally obtain customer’s user credentials for online banking. In particular the bank’s name “INTESA SANPAOLO” combined with suffix "-GPAY" (which refers to Google’s well-known “Google Pay” payment service) could mislead customers to (wrongly) believe that the disputed domain name is used to operate an online banking and/or payment website for Complainant’s customers.

Given all of these circumstances the Panel finds that the manner in which the disputed domain name is being used constitutes use in bad faith. The requirements of paragraph 4(a)(iii) of the Policy have therefore been met.