Westmore · UDRP DecisionBankintesa-convalidare.com
The Panel ordered transfer of <bankintesa-convalidare.com>. It found the domain confusingly similar to the Complainant’s INTESA and BANCA INTESA marks, that the Respondent lacked rights or legitimate interests, and that the domain was registered and used in bad faith. The bad-faith finding rested on the marks’ prior renown in Italy, the domain’s impersonating composition, the Respondent’s silence following a cease-and-desist letter, and passive holding in the circumstances of the case.
The timeline behind bankintesa-convalidare.com
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This decision illustrates how a domain combining a recognizable banking mark with terms associated with banking and account validation may support findings across all three UDRP elements even when the domain is inactive. The Panel treated the composition as suggesting impersonation or endorsement and assessed passive holding together with prior trademark rights, renown in the Respondent’s country, and the Respondent’s silence.
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. Domain Administrator, See PrivacyGuardian.org / Chiara Chiarenza Case No. D2018-1442 1. The Parties The Complainant is Intesa Sanpaolo S.p.A. of Turin, Italy, represented by Perani Pozzi Associati - Studio Legale, Italy. The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Chiara Chiarenza of Rome, Italy. 2. The Domain Name and Registrar The disputed domain name <bankintesa-convalidare.com> is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2018. On June 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 29, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 3, 2018. The Center verified that the Complaint together with the amendment to 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 July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2018. The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 27, 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. 4. Factual Background The Complainant in this proceeding is one of the leading Italian banking groups and one of the protagonists in the European financial arena. The Complainant is the company created by the merger (effective January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. The Complainant is among the top banking groups in the Euro zone, with a market capitalisation exceeding EUR 46 billion, and is a leader in Italy in all business areas (retail, corporate and wealth management). The Complainant has a wide-ranging network of approximately 4,800 branches distributed throughout Italy, with market shares of more than 16 percent in most Italian regions, and offers its services to approximately 12.6 million customers. The Complainant has proven to be the owner of the INTESA and BANCA INTESA marks, which enjoy comprehensive protection through many registrations thereof worldwide. The Complainant is inter alia the owner of: European Union Trade Mark registration no. 2803773 INTESA, applied for on August 7, 2002, granted on November 17, 2003, in class 36; European Union Trade Mark registration no. 12247979 INTESA, applied for on October 23, 2013 and granted on March 5, 2014, in classes 9, 16, 35, 36, 38, 41 and 42; United States trademark registration no. 4196961 INTESA, filed on June 30, 2011 and granted on August 28, 2012, in class 36; International trademark registration no. 831572 BANCA INTESA, granted on June 24, 2004 and duly renewed, in class 36; European Union Trade Mark registration no. 779793 BANCA INTESA, applied for on March 24, 1998, granted on November 15, 1999 and duly renewed, in classes 9, 16, 36, 38, 41 and 42; Italian trademark registration no. 1235313 BANCA INTESA, filed on December 14, 2007, granted on December 18, 2009 and duly renewed, in classes 9, 16, 36, 38, 41 and 42. Moreover, the Complainant is also the owner of, among others, the following domain names bearing the signs INTESA and BANCA INTESA: <intesa.com>, <intesa.info>, <intesa.biz>, <intesa.org>, <intesa.us>, <intesa.eu>, <intesa.cn>, <bancaintesa.com>, <bancaintesa.net>, <bancaintesa.eu>. All of these now redirect to the Complainant’s official website at “www.intesasanpaolo.com.” The disputed domain name <bankintesa-convalidare.com> was registered on May 31, 2018. The disputed domain name does not resolve to an active website, and the related account appears to have been suspended. The Complainant’s trademark registrations predate the registration of the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s INTESA and BANCA INTESA registered trademarks; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel that: (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 Complainant has established rights in the INTESA and BANCA INTESA trademarks. The disputed domain name <bankintesa-convalidare.com> consists of the mark INTESA, with the mere addition of the terms “bank” and “convalidare” (meaning “validate”), which are both descriptive of the on-line financial security services offered by the Complainant to its bank account holders in order to protect them from phishing activities. The disputed domain name is also very similar to the trademark BANCA INTESA. This Panel agrees with the Complainant’s assertion that the addition of the descriptive terms “bank” and “convalidare” is not enough to avoid confusing similarity with the renowned INTESA and BANCA INTESA trademarks. In fact, it has already been held by previous UDRP panels that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity between a domain name and a complainant’s trademark. Indeed, the Complainant’s trademarks are clearly recognizable in the disputed domain name. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademarks INTESA and BANCA INTESA in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions to claim any rights or legitimate interests in the disputed domain name. Moreover, the Panel finds that the composition of the disputed domain name effectively impersonates or suggests sponsorship or endorsement by the Complainant which cannot constitute fair use. See section 2.5.1 of WIPO Overview 3.0 . Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the INTESA and BANCA INTESA marks when the Respondent registered the disputed domain name. In fact, the Complainant’s trademarks are renowned particularly in Italy where the Respondent resides. They have been registered and used for many years and thus they long predate the disputed domain name’s registration. Therefore, in the absence of evidence to the contrary, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business, and that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name. As previously mentioned, the disputed domain name effectively impersonates or creates the impression of an association with the Complainant. Moreover the Panel notes the following: An inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has never replied to the Complainant’s cease-and-desist letter. Indeed, owing to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name the Respondent would have responded. Finally, the Panel finds that the passive holding of the disputed domain name does not prevent a finding of bad faith registration and use in the circumstances of the case. Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and15 of the Rules, the Panel orders that the disputed domain name <bankintesa-convalidare.com> be transferred to the Complainant. Fabrizio Bedarida Sole Panelist Date: August 8, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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