Decision for dispute CAC-UDRP-104623

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

The Complainant owns several trademarks consisting either of the word element “INTESA” alone or “INTESA SANPAOLO”.

Some of the most relevant trademarks are as follows:

• Word EU trademark “INTESA”, No. 12247979, registered in Classes 9, 16, 35, 36, 38, 41 and 42
• Word EU trademark “INTESA SANPAOLO”, No. 5301999, registered in Classes 35, 36 and 38
• International Registration of a word trademark “INTESA”, No. 793367 in Class 36
• International Registration of a word trademark “INTESA SANPAOLO”, No. 920896 in Classes 9, 16, 35, 36, 41, 42.

Moreover, the Complainant owns an important domain names portfolio containing the expressions “INTESA” alone or “INTESA SANPAOLO”.

The Complainant is an Italian banking group based in Torino. With its 3,700 branches distributed throughout Italy, the Complainant offers its services to more than 11 million customers and its market share amount to more than 15% in most Italian regions.

No information is known about the Respondent who registered the disputed domain names <ONLINEINTESA.ORG> and <ONLINEINTESA.NET> on 19 July, 2021. The disputed domain names are not currently used in connection with any goods or services and resolve in blank pages with no content.

COMPLAINANT' CONTENTIONS:

Identical or confusingly similar

The Complainant argues that the disputed domain names <ONLINEINTESA.ORG> and <ONLINEINTESA.NET> and the Complainant's registered trademarks are confusingly similar.

The Complainant states, in particular, that the registered trademarks are fully contained in the disputed domain names and points out that the elements in which the names differ, are not relevant and thus do not alter the overall confusion between the them.

No rights or legitimate interests

The Complainant argues that there is no evidence at all that the Respondent is commonly known by the disputed domain names or a name corresponding to the disputed domain names, nor that the Respondent is using the disputed domain names for offering goods or services in the market. Moreover, the Complainant states that the Respondent has not been licensed or otherwise authorized to use any of the Complainant’s trademarks nor to apply for or use any domain name incorporating such trademarks.

Registered and used in bad faith

As far as bad faith registration is concerned, the Complainant states that the trademarks owned by him are well known marks and consequently the Respondent could not be unaware of the Complainant rights over the name “INTESA” and/or “INTESA SANPAOLO” at the time of the disputed domain name registration.

Finally, the websites at the disputed domain names are currently inactive and there is no evidence of having ever been associated with any goods or services. The Complainant underlines that, although the domain names have ever been actively used by the Respondent, passive holding may amount to bad faith use under certain circumstances, as in this case.

RESPONDENT'S CONTENTIONS:

The Respondent did not respond to the Complaint.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to trademarks 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 have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii)of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

On 7 June 2022, the Czech Arbitration Court (the CAC) transmitted a notification of the Complaint to the Respondent, setting a deadline of 27 June, 2022, by which the Respondent had the obligation to file a Response to Complaint to avoid default. The commencement notification was transmitted to the Respondent by e-mail to the e-mail addresses postmaster@onlineintesa.org and postmaster@onlineintesa.net which returned back undelivered.

On the e-mail notice was also sent to Respondent´s registered e-mail campora.gabriella@libero.it, but no proof of delivery or notification of undelivery was received. Having reviewed the communications records in the case file, the Panel finds that the CAC has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonable available means calculated to achieve actual notice to Respondent."

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.

Paragraph 15 of the Rules states that the Panel decides a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law deemed applicable.

In the case of default by a Party, Rule 14 states that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as appropriate.

In the present case, the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant.

The Panel proceeds therefore to decide only on the basis of the Complainant’s factual statements and the documentary evidences provided in support of them.

1. The Complainant owns several trademarks whose common distinctive element are the particles “INTESA” and “SANPAOLO”. Besides the EU protection, the trademarks are protected in various non-EU countries, including the Respondent’s country of origin – the United States of America.

The disputed domain names <ONLINEINTESA.ORG> and <ONLINEINTESA.NET> comprise of the distinctive element “<-INTESA>” placed after the initial descriptive word element “ONLINE".

Furthermore, the top-Level domains “.org” and “.net” employed within the disputed domain names represent technical requirement of the domain names’ registration and as such are excluded from the confusing similarity test.

The Panels finds therefore that the Complainant’s trademarks “INTESA” are fully comprised in the disputed domain names and that the additional element “ONLINE” has very low degree of distinctive character as it refers to activities performed on the Internet, thus does not alter the overall similarity of the registered trademarks and the disputed domain names.

As the disputed domain names do not comprise any additional distinctive elements, the Panel considers that the disputed domain names and the Complainant’s previously registered trademarks are confusingly similar.

The Panel accordingly concludes that paragraph 4(a)(i) of the Policy is satisfied.

3. The Respondent is not in any way related to the Complainant's business, and is not the agents of the Complainant. The Respondent is not currently known and has never been known as “INTESA”, or any combination of this trademark.

The domain names <ONLINEINTESA.ORG> and <ONLINEINTESA.NET> are not associated with any webpages. Therefore, the Respondent does not appear to have a legitimate interest in the disputed domain names.

Consequently, and in the absence of a Response, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, so that the requirements of paragraph 4(a)(ii) of the Policy are met.

4. As to the bad faith at the time of the registration, the Panel finds that, in light of the distinctiveness of the Complainant’s trademark with which the disputed domain names are confusingly similar, and due to the worldwide presence of the Complainant’s business known under the name “INTESA” or “INTESA SANPAOLO”, the Respondent was more likely aware of the Complainant’s trademark at the time of the registration of the disputed domain names.

Furthermore, the Complainant notes that the disputed domain names do not resolve to any web sites or other on-line presence, nor appear to have been used so far. In this regard, prior Panels have discussed the passive holding of a domain names (e.g. in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and found that the passive holding itself can constitute bad faith use.

The Panel recalls that „the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”. (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003)

The particular circumstances of this case, allow the Panel to infer that this is the case when the inactivity of the domain names’ holder could be considered as a bad faith use, given that:

(i) The Complainant’s business name and trademark “INTESA” and “INTESA SANPAOLO” have a wide online presence and are widely known, as evidenced by its substantial use in several countries;

(ii) The word element “<ONLINEINTESA>” in the disputed domain names could be perceived as allusive to the Complainant’s trademarks as it fully reproduces the Complainant’s business name and well know-trademark;

(iii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.

Bearing in mind these circumstances, the Respondent can be deemed to have registered the domain names primarily for the purpose of transferring the domain names registration for valuable consideration in excess of the Respondent’s costs directly related to the domain name acquisition.

Under such circumstances, the Panel finds that the disputed domain names were registered and used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.