Westmore · UDRP DecisionIntsanpaolo.com
The Panel ordered transfer of <intsanpaolo.com>. It found the domain confusingly similar to the Complainant’s INTESA SANPAOLO marks because it differed principally by omission of the letters “esa.” The Complainant established a prima facie case that the Respondent lacked rights or legitimate interests, which the defaulting Respondent did not rebut. On bad faith, the Panel found on the balance of probabilities that the domain had been registered and used in bad faith, while acknowledging that the submitted phishing screenshots did not refer to the domain. The Panel also found that the circumstances—including the Complainant’s known banking business, the domain’s close similarity to its marks, the Respondent’s apparent use of a false address, the lack of a response, and the suspended website—supported bad faith even apart from the phishing evidence.
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This decision illustrates that weak linkage between submitted phishing screenshots and the disputed domain does not necessarily defeat a complaint when the remaining circumstances independently support bad faith. The Panel relied on the close typographical imitation of a known banking mark, likely awareness of the Complainant, apparent false contact information, default, and the principle that inactive or suspended use can still constitute bad faith.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intesa Sanpaolo S.p.A. v. Mark Adams, Intsanpaolo Case No. D2013-2194 1. The Parties The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy. The Respondent is Mark Adams, Intsanpaolo of London of United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar The disputed domain name <intsanpaolo.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2013. On December 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2014. On December 24, 2013, the Center received a message from The British Arab Commercial Bank Plc, indicating that the address used by the Respondent is in fact the business address of The British Arab Commercial Bank and not of the Respondent. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 15, 2014. The Center appointed Alfred Meijboom as the sole panelist in this matter on January 27, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a leading banking group in Italy. The Complainant is the owner of several registered trademarks, including an international trademark for INTESA SANPAOLO (registration number 920896) with designation – inter alia – United States, Community word mark INTESA SANPAOLO (registration number 5301999), Community device mark (registration number 5421177) and Italian word mark INTESA SANPAOLO (registration number 1042140). The Complainant has registered several domain names containing the words “intesa” and “sanpaolo” in different variations and under different top levels, all of these domain names are connected to the official website which is provided under the domain name <intesasanpaolo.com>. The Respondent registered the disputed domain name on November 18, 2013. 5. Parties’ Contentions A. Complainant The Complainant provides its business throughout the world and owns the aforementioned trademarks as well as several domain name registrations. The disputed domain name is at least confusingly similar with the Complainant’s trademarks and the Respondent has no rights or legitimate interests in respect of that domain name, since he has not been authorized by the Complainant to use the disputed domain name and is not commonly known as “intsanpaolo”. The disputed domain name is not used for any bona fide offerings. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website linked to the disputed domain name by creating a likelihood of confusion with the Complainant’s trademarks. The Respondent has registered and is using the disputed domain name in bad faith, notably by operating a “phishing” website under the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrates that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In the present case Complainant has sufficiently demonstrated that it has rights in the aforementioned trademarks. The disputed domain name is highly similar to the Complainant’s word marks and the dominant word elements of its device mark, with only the letters “esa” in the first word element “intesa” missing. Considering the high similarity between the Complainant’s trademarks and the disputed domain name, and as it is well established that top level domain extensions such as “.com” should not be considered in the assessment under paragraph 4(a)(i) of the Policy ( e.g. Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 ), the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(a)(ii)of the Policy requires that the Complainant demonstrates that the Respondent has no rights or legitimate interests in the disputed domain name. With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name ( WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition, paragraph 2.1 ). In the present case, the Panel finds that the Complainant has made such prima facie case, also taking into consideration the Complainant’s contentions that the Respondent has been operating a “phishing” website in relation to the disputed domain name. The burden of proof has therefore shifted to the Respondent. As the Respondent has not replied to the Complainant’s contentions, it has failed to demonstrate any rights and/or legitimate interests in the disputed domain name. The Panel therefore finds that the requirement under paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(a)(iii)of the Policy requires that the Complainant demonstrates that the disputed domain name has been registered and is being used in bad faith. Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where the respondent has “intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service offered on the respondent’s website or location”. In this respect, the Complainant asserts that the Respondent is using the disputed domain name in connection with a “phishing” website. Although the Panel notes that the evidence submitted by the Complainant, consisting of several screenshots allegedly of the website under the disputed domain name, does not show any reference to the disputed domain name, and the website currently merely displays a message “This Account Has Been Suspended”, the Panel finds that the Complainant has on the balance of probabilities proven that the Respondent has registered and used the disputed domain name in bad faith. The Panel further notes that even if it would disregard the Complainant’s evidence concerning the “phishing” and only take into account the current status of the website under the disputed domain name, the lack of so-called active use by the Respondent does not as such prevent a finding of bad faith, as the Panel must examine all circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity ( WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Second Edition, paragraph 3.2 ). In the present case, taking into account that the Complainant is a large Italian banking group that is also known outside Italy, as well as the fact that the Respondent has registered the disputed domain name which is very similar to the Complainant’s trademarks, it is likely that the Respondent was aware of the Complainant’s trademarks and has registered the disputed domain name in bad faith. Also, the Respondent has apparently used a false address, as mentioned in the Procedural History, and has not responded to the Complaint. Taking into account these circumstances, the Panel finds that there is sufficient evidence that the Respondent has registered and is using the Domain Name in bad faith. Considering the above, the Panel finds that the requirement under paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <intsanpaolo.com> be transferred to the Complainant. Alfred Meijboom Sole Panelist Date: February 11, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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