Decision for dispute CAC-UDRP-104950

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 is the registered owner of several word-trademark registrations consisting of the terms "INTESA SANPAOLO":

• EU trademark registration no 5301999, filed on September 8, 2006 and duly renewed, registered for services in classes 35, 36 and 38; and
• International trademark registration no 920896, registered on March 7, 2007 and duly renewed, registered for goods/services in classes 9, 16, 35, 36, 38, 41 and 42 and designating a large number of countries.

The Complainant claims to be the leading Italian banking group and also one of the protagonists in the European financial area with a market capitalisation exceeding 32,8 billion Euros.

It further contends its marks “INTESA SANPAOLO” and “INTESA” are distinctive and well known all around the world.

According to the Registrar verification response, the Respondent registered the disputed domain name on February 26, 2022. The disputed domain name is not connected to any web site.

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.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks “INTESA SANPAOLO”:

Many panels have found that a domain name is confusingly similar to a complainant’s trademark where it incorporates the complainant’s trademark in its entirety. This is the case here, where the disputed domain name contains the registered trademark "INTESA SANPAOLO" entirely. The combination of the trademark with the term "SECURE" does not avoid the finding of confusing similarity. This term is descriptive and will therefore lead to users' confusing expectations that the corresponding website run by the Complainant is accessible under the disputed domain name.

2.
In the absence of any response, or any other information from the Respondent indicating the contrary, the Panel further holds that the Complainant successfully presented its prima facie case and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In particular, the Respondent is not affiliated with nor authorized by the Complainant in any way, and it is not related in any way to the Complainant’s business. In addition, there is no information in the file that could lead the Panel to assume that the Respondent is commonly known by the disputed domain name. Finally, no content is currently available under the disputed domain name which can neither be considered a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 

3.
Finally, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

First, it is to be noted that the non-use of a disputed domain name does not prevent a finding of bad faith under the doctrine of passive holding.

It is the view of this Panel that the Respondent has intentionally registered the disputed domain name, which fully includes the Complainant’s trademark “INTESA SANPAOLO”. In addition, the Panel notes that Complainant’s trademarks “INTESA SANPAOLO” are deemed well-known at least in Italy, where both parties are located. Therefore, it is the view of this Panel that the Respondent knew or should have known that the disputed domain name is almost identical to the Complainant’s trademarks when he registered the domain name. Registration of a domain name in awareness of a reputed trademark and in the absence of rights or legitimate interests amounts to registration in bad faith.

Considering that the trademark “INTESA SANPAOLO” is entirely included in the disputed domain name, which suggests the Respondent’s awareness of the trademark, the Panel finds that the Respondent registered and is using the disputed domain names for bad faith purposes. Relevant additional factors supporting these findings are (i) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, (ii) the implausibility of any good faith use to which the disputed domain name may be put.