Decision for dispute CAC-UDRP-104208

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 bases its Complaint on the:

- International trademark registration “INTESA”, no. 793367, registered on September 4, 2002, for services in class 36, designating several countries for protection;
- International trademark registration “INTESA SANPAOLO”, no. 920896, registered on March 7, 2007, for goods and services in classes 9, 16, 35, 36, 41, 42, designating several countries for protection;
- EU trademark registration “INTESA”, no. 12247979, filed on 23.10.2013, registered on March 5, 2014, for goods and services in classes 9, 16, 35, 36, 38, 41 and 42; and
- EU trademark registration “INTESA SANPAOLO”, no. 5301999, filed on September 8, 2006, registered on June 18, 2007, for services in classes 35, 36 and 38.

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

The Complainant is Intesa Sanpaolo S.p.A., a 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 top banking groups in the euro zone, with a market capitalisation exceeding 47,8 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). Thanks to a network of approximately 4,200 branches capillary and well distributed throughout Italy, with market shares of more than 17% in most Italian regions, the Group offers its services to approximately 13,5 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1.000 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.

The Complainant is the owner of a large domain names portfolio, including the signs “INTESA SANPAOLO” and “INTESA”, such as: <INTESASANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ, INTESA-SANPAOLO.COM, .ORG, .EU, .INFO, .NET, .BIZ and INTESA.COM, INTESA.INFO, INTESA.BIZ, INTESA.ORG, INTESA.US, INTESA.EU, INTESA.CN, INTESA.IN, INTESA.CO.UK, INTESA.TEL, INTESA.NAME, INTESA.XXX, INTESA.ME>. All of them are now connected to the official website http://www.intesasanpaolo.com.

The disputed domain name <INTESASANPAOLO-SERVICE.COM> was registered on July 8, 2021 and is currently passively held.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

PARTIES' CONTENTIONS:

COMPLAINANT:

The Complainant's contentions are the following:

The disputed domain name <INTESASANPAOLO-SERVICE.COM> is identical, or – at least – confusingly similar, to the Complainant’s trademarks “INTESA SANPAOLO” and “INTESA”. The Complainant sustains that the disputed domain name <INTESASANPAOLO-SERVICE.COM> reproduces exactly the well-known trademark “INTESA SANPAOLO”, with the mere addition of the term “SERVICE”.

The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name for a number of reasons.

First, the Complainant asserts that the Respondent has no rights on the disputed domain name and any use of the trademarks “INTESA SANPAOLO” and “INTESA” has not been authorized or licensed by the Complainant.

Further, the Complainant asserts that the domain name at stake does not correspond to the name of the Respondent and, to the best of its knowledge, the Respondent is not commonly known as “INTESASANPAOLO-SERVICE.COM”.

Lastly, the Complainant asserts that it does not find any fair or non-commercial uses of the domain name at stake.

The Complainant further argues that the disputed domain name has been registered and is used in bad faith.

The Complainant’s asserts that that its “INTESA” and “INTESA SANPAOLO” trademarks are distinctive and well known and therefore, that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks.

Furthermore, the disputed domain name is not used for any bona fide offerings as the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site and also considering that the disputed domain name is connected to a website which has been blocked by Google Safe Browsing through a warning page.

The Complainant further asserts that the disputed domain name is not used for any bona fide offerings as the main purpose of the Respondent was to use the above website for “phishing” financial information in an attempt to defraud the Complainant’s customers and that Google promptly stopped the illicit activity carried out by the Respondent, which is an evidence of bad faith.

The Complainant also asserts that even excluding any current “phishing” purposes or other illicit use of the domain name in the present case (which, however, has been confirmed by Google Safe Browsing with a warning page), the Complainant could find no other possible legitimate use of <INTESASANPAOLO-SERVICE.COM>. The sole further aim of the owner of the domain name under consideration might be to resell it to the Complainant, which represents, in any case, an evidence of the registration and use in bad faith, in the Complainant’s view.

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.

I. Confusing Similarity

The Panel agrees that the disputed domain name incorporates the Complainant's earlier “INTESA SANPAOLO” and “INTESA” trademarks and that the addition of the term “service” is insufficient to avoid a finding of identity / confusing similarity.

Moreover, the extension “.com” is not to be taken into consideration when examining the similarity between the Complainant’s trademarks and the disputed domain name (WIPO Case No. D2005-0016, Accor v. Noldc Inc.). The mere adjunction of a gTLD such as “.com” is irrelevant as it is well established that the generic Top-Level Domain is insufficient to avoid a finding of confusing similarity (WIPO Case No. 2013-0820, L’Oréal v Tina Smith, WIPO Case No. D2008-0820 Titoni AG v Runxin Wang and WIPO Case No. D2009-0877, Alstom v. Itete Peru S.A.).

Therefore, the Panel is satisfied that the first condition under the Policy is met.


II. Lack of Respondent's rights or legitimate interests


The Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

Based on the available evidence, the Respondent does not appear to be known by the disputed domain name. The Respondent is not a licensee of, nor has any kind of relationship with, the Complainant. The Complainant has never authorised the Respondent to make use of its trademarks, nor of a confusingly similar trademark in the disputed domain name.

Finally, the disputed domain name is currently passively held. The disputed domain name is connected to a website which has been blocked by Google Safe Browsing through a warning page. Such use does not amount to a bona fide offering of goods or services, or to a legitimate non-commercial or fair use of the disputed domain name.

The Panel notes that the Respondent had an opportunity to comment on the Complaint’s allegations by filing a Response, which the Respondent failed to do.

Thus, the Panel is satisfied that the Complainant has at least established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel takes the view that also the second requirement under the Policy is met.


III. Bad Faith


Based on the provided proofs, the Complainant's trademark “INTESA SANPAOLO” is a well-known one and the disputed domain name is incorporating in its entirety the Complainant’s trademark to which it was added a generic term “service”. Therefore, the Panel concludes that at the time of registration of the disputed domain name, the Respondent was well aware of the Complainant’s trademark and has intentionally registered one in order to benefit from the reputation of the Complainant’s trademark.


The disputed domain name is currently passively held. Such is connected to a website which has been blocked by Google Safe Browsing through a warning page, which raises concerns as to a possible “phishing” financial information illegal situation.

Under certain circumstances, the passive holding of a domain name cannot prevent a finding of bad faith. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put (See paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0)).

In the present case, the following factors should be considered:

(i) the Complainant's trademark is a well-known one;

(ii) the Respondent failed to submit any response and has not provided any evidence of actual or contemplated good faith use of the disputed domain name;

(iii) the Respondent registered the disputed domain name by incorporating in its entirety the Complainant’s trademark to which it was added a generic term “service”; and

(iv) any good faith use of the disputed domain name would be implausible, as the trademark INTESA SANPAOLO is univocally linked to the Complainant and the Respondent has no business relationship with the Complainant, nor was ever authorised to use a domain name confusingly similar to the Complainant's trademark.

In light of the foregoing, the Panel concludes that the Respondent has registered and has been using the disputed domain name in bad faith. Thus, also the third and last condition under the Policy is satisfied.