Westmore · UDRP DecisionConvalida-recapiti-intesasanpaolo.com
The Panel ordered transfer of <convalida-recapiti-intesasanpaolo.com>. It found the domain confusingly similar to the Complainant’s INTESA SANPAOLO trademark because the added Italian words “convalida” and “recapiti” did not distinguish it from the mark. The Complainant established a prima facie absence of rights or legitimate interests, which the defaulting Respondent did not rebut. Given the mark’s established reputation, the deliberate registration of a confusingly similar domain, and the circumstances of the domain’s passive holding, the Panel found registration and use in bad faith.
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The decision illustrates how a domain that reproduces a reputed banking mark and adds account- or contact-related Italian terminology may remain confusingly similar. It also shows that inactivity does not preclude a bad-faith finding where the mark’s reputation, the deliberate selection of a confusingly similar domain, and the absence of a credible explanation support passive holding.
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. Rumeno Marcone Case No. D2018-0090 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 Rumeno Marcone of Rome, Italy. 2. The Domain Name and Registrar The disputed domain name <convalida-recapiti-intesasanpaolo.com> is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2018. On January 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2018. The Center appointed Edoardo Fano as the sole panelist in this matter on March 8, 2018. 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. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent. The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is Intesa Sanpaolo S.p.A., a leading Italian banking group, owning many trademark registrations for INTESA SANPAOLO, including: - International Trademark Registration No. 920896 INTESA SANPAOLO, registered on March 7, 2007; - European Union Trademark Registration No. 5301999 INTESA SANPAOLO, registered on June 18, 2007. The Complainant operates its main website at “www.intesasanpaolo.com” and also owns several other domain names connected to the latter, including <intesasanpaolo.org>, <intesasanpaolo.biz>, <intesasanpaolo.info>, <intesasanpaolo.eu>, <intesasanpaolo.net>, <intesa-sanpaolo.com>, <Intesa-sanpaolo.org>, <intesa-sanpaolo.biz>, <intesa-sanpaolo.info>, <Intesa-sanpaolo.eu>, <Intesa-sanpaolo.net>. The Complainant provided evidence in support of the above. The disputed domain name <convalida-recapiti-intesasanpaolo.com> was registered on December 21, 2017. At the time of filing the Complaint, the website at the disputed domain name was not active. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name <convalida-recapiti-intesasanpaolo.com> is confusingly similar to its trademark INTESA SANPAOLO. Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to use it, it is not commonly known by the disputed domain name, nor is the Respondent making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark INTESA SANPAOLO is distinctive and well-known all around the world. Therefore, the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant cannot see a use of the disputed domain name by the Respondent that would not amount to bad faith. B. Respondent The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g. , Reuters Limited v. Global Net 2000, Inc. , WIPO Case No. D2000-0441 ; Microsoft Corporation v. Freak Films Oy , WIPO Case No. D2003-0109 ; SSL International PLC v. Mark Freeman , WIPO Case No. D2000-1080 ; Altavista Company v. Grandtotal Finances Limited et. al. , WIPO Case No. D2000-0848 ; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A ., WIPO Case No. D2007-0288 .) 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark INTESA SANPAOLO, both by registration and by acquired reputation and that the disputed domain name <convalida-recapiti-intesasanpaolo.com> is confusingly similar to the trademark INTESA SANPAOLO. Furthermore, the addition of the words “convalida” (which means “validation” in Italian) and “recapiti” (which means “addresses” in Italian) is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g. , VAT Holding AG v. Vat.com , WIPO Case No. D2000-0607 ). The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Respondent has failed to file a response in accordance with the Rules, paragraph 5. The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate non-commercial or fair use or in connection with a bona fide offering of goods or services. The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or (iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.” Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark INTESA SANPAOLO in the field of banking and financial services is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name because it is confusingly similar to the Complainant’s trademark. Regarding the use in bad faith of the disputed domain name, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 . In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use. The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that 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 <convalida-recapiti-intesasanpaolo.com> be transferred to the Complainant. Edoardo Fano Sole Panelist Date: March 13, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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