Decision for dispute CAC-UDRP-104765

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 trademark registrations:

• International trademark registration number 920896 for INTESA SANPAOLO, registered on 7 March 2007 in classes 9, 16, 35, 36, 38, 41 and 42;
• International trademark registration number 793367 for INTESA, registered on 4 September 2002 in class 36;
• EU trademark registration number 5301999 for INTESA SANPAOLO, registered on 18 June 2007, in classes 35, 36 and 38; and
• EU trademark registration number 12247979 for INTESA, granted on 5 March 2014 in classes 9, 16, 35, 36 38, 41 and 42.

The Complainant also owns several domain names incorporating words INTESA SANPAOLO and INTESA. These include <intesasanpaolo.com>, <intesa-sanpaolo.com>, <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>, which all connect to its official website at http://www.intesasanpaolo.com.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT

The Complainant is a well-known Italian banking group, created by the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. in 2007. The Group offers its services to approximately 13.5 million customers. It has a strong presence in Central-Eastern Europe with a network of approximately 1.000 branches and over 7 million customers. Its international network includes 25 countries.

The Complainant owns several trademarks for INTESA SANPAOLO and INTESA, which predate the registration of the disputed domain name, as well as numerous domain name registrations incorporating the names INTESA SANPAOLO and INTESA.

The Respondent registered the disputed domain name on 4 March 2022 using a privacy service.

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.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.

A. IDENTICAL OR CONFUSINGLY SIMILAR

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademarks INTESA SANPAOLO and INTESA. It states that <intesanpaolocreditcard.com> reproduces its well-known trademark INTESA SANPAOLO, and that the mere omission of letters “s” and “a” in the disputed domain name is typosquatting. It states that the addition of the words “credit card" is an obvious reference to Complainant’s services for which the above-mentioned trademarks have been registered and are used. The Complainant refers to Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc, WIPO Case No. D2001-1314, regarding the domain names <duetschebank.com> and <duetsche-bank.com>, in which the Panel found that the domain name with a slight alphabetical variation from a famous mark is confusingly similar and a clear example of “a case of ‘typosquatting’.

Ignoring the top-level suffix ".com", the disputed domain name consists of an obvious misspelling of the Complainant’s well-known mark, plus the words “credit card” which are associated with the Complainant’s business.

The Panel concludes that the disputed domain name <intesanpaolocreditcard.com>, is confusingly similar to the Complainant's trademark and that the requirements of Paragraph 4(a)(i) of the Policy have been met.

B. NO RIGHTS OR LEGITIMATE INTERESTS

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and states:

(i) any use of the trademarks INTESA SANPAOLO and INTESA must be authorised by the Complainant and the Respondent has not been authorised or licensed to use those marks;
(ii) the disputed domain name does not correspond to the name of the Respondent, nor is he commonly known as “INTESANPAOLOCREDITCARD”; and
(iii) there is no fair or non-commercial use of the disputed domain name by the Respondent.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of proof now shifts to the Respondent to show he has relevant rights.

The Respondent is not authorised to use the Complainant's trademarks, INTESA SANPAOLO and INTESA, which pre-date the registration of the disputed domain name. The Respondent’s name does not correspond to the disputed domain name, and he is not commonly known by that name. The Respondent has provided false contact details. He has not filed a Response nor disputed any of the Complainant’s assertions. He has not asserted any rights in the disputed domain name and there is no indication that the Respondent has used it for any fair or non-commercial purposes.

Taking these factors into consideration the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. REGISTERED AND USED IN BAD FAITH

The Complainant’s trademarks are well-known and predate the registration of the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s trademarks and incorporate the words “credit card”, which are terms associated with the Complainant’s business. It is implausible that the Respondent did not know of the Complainant and its trademarks when he registered the disputed domain name. The Respondent lacks rights in the disputed domain name and there appears no legitimate reason for the disputed domain name to be registered by the Respondent. For these reasons, the Panel concludes that the dispute domain name was registered by the Respondent in bad faith.

The disputed domain name is being held passively. The Panel notes that:

(i) the Complainant’s trademarks are distinctive and well-known;
(ii) the dispute domain name is comprised of a misspelling of the Complainant’s trademark plus words associated with the Complainant’s business;
(iii) the Respondent has provided false contact details and has failed to correct these; and
(iv) the Respondent has failed to provide a Response or provide any evidence of actual or good faith use.

Considering these factors, the Panel finds that it is not possible to conceive of any legitimate actual or contemplated use of the disputed domain name by the Respondent that would not amount to an infringement of the Complainant’s trademark rights (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Taking these factors into consideration, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.