Decision for dispute CAC-UDRP-104383

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 several trademarks, including the following trademark registrations:

- International trademark n° 920896 for the word mark “INTESA SANPAOLO”, registered on March 7, 2007 for goods and services in classes 9, 16, 35, 36, 41 and 42;
- European Union trademark n° 005301999 for the word mark “INTESA SANPAOLO”, registered on June 18, 2007 for services in classes 35, 36 and 38;
- International trademark n° 793367 for the word mark “INTESA”, registered on September 4, 2002 for services in class 36; and
- European Union trademark n° 12247979 for the word mark “INTESA”, registered on March 5, 2014 for goods and services in classes 9, 16, 35, 36 38, 41 and 42.

Such trademarks are hereinafter individually and jointly referred to as the "Trademarks".

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.

The Complainant has a market capitalization exceeding 50.9 billion euro and has a network of approximately 3,700 branches in Italy, with a market share of more than 17% in most Italian regions, and offers its services to approximately 13.5 million customers. The Complainant has also a strong presence in Central-Eastern Europe with a network of approximately 1,000 branches and over 7.1 million customers. Further, the Complainant's international network 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.

On August 26, 2021 the Respondent registered the disputed domain name, which links to a parking site offering the disputed domain name for sale.

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.

1. According to standard case law, the top level domain, in this case ".com," should be ignored when comparing the disputed domain name and the Trademarks. The Panel finds that the disputed domain name is confusingly similar to the "INTESA" Trademarks listed above at “Identification of rights” as the disputed domain name includes the INTESA Trademarks in its entirety. The addition of the letters “DR” to the disputed domain name do not take away the confusing similarity between the disputed domain name and the INTESA Trademarks.

2. The Panel is satisfied that the Respondent neither was licensed or authorized to use the Trademarks in the disputed domain name nor is commonly known under the disputed domain name. The Panel further finds that the Respondent has successfully submitted prima facie evidence, which the Respondent has not rebutted, that the Respondent has made no use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate non-commercial or fair use of the disputed domain name. The Panel therefore finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.

3. In the absence of a Response, the Panel infers that the Respondent must have had the Complainant's "INTESA" Trademarks in mind when registering the disputed domain name, as it copied the entire "INTESA" Trademarks in the disputed domain name, while these Trademarks are sufficiently distinctive and actually well-known, that is it likely that the Respondent was familiar with the Trademarks when it registered the disputed domain name. Furthermore, the Panel is satisfied that the Respondent’s use of the disputed domain name which resolves to a website which offers the disputed domain name for sale constitutes use in bad faith as, in this case, the disputed domain name entirely includes a well-known trademark which makes any good faith use to which the domain name may be put improbable, the Respondent failed to file a Response and the Respondent concealed its identity when it registered the disputed domain name (cf. section 3,3, of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition). For these reasons the Panel finds that the disputed domain name was registered and is being used in bad faith.

Consequently, the Panel finds that all three elements of paragraph 4(a) of the Policy have been met.