The Complainant is Intesa Sanpaolo S.p.A., of Torino, Italy, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Lliefetx Ag, Elisabethenstrasse 10, of Bern, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <intesabanca.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2007. On November 22, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On November 26, 2007, GoDaddy.com, Inc. 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”), 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 November 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2007.
Th Center appointed Arne Ringnes as the sole panelist in this matter on January 7, 2008. 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 the company resulting from the recent merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A, and is a leading Italian banking group. It has a market capitalization exceeding EUR 70 billion and an average market share of approximately 20 % in Italy, in all business areas. The Complainant has approximately 5,500 branches distributed throughout Italy, with approximately 12 million customers, and approximately 1,400 branches throughout Central-Eastern Europe with over 6 million customers. Furthermore, the Complainant is present in 34 countries, particularly in the Mediterranean area, the United States of America, Russia, China and India.
The Complainant is the owner of several trademark registrations and applications for the trademark BANCA INTESA, including:
- Italian trademark registration n. 818814 BANCA INTESA, filed on December 18, 1997 and granted on June 20, 2000, in connection with the products of classes 9, 16 and the services of classes 36, 38, 41 and 42;
- Community trademark registration n. 779793 BANCA INTESA, filed on March 24, 1998 and granted on November 15, 1999, in connection with the products of classes 9, 16 and the services of classes 36, 38, 41 and 42;
- International trademark registration n. 831572 BANCA INTESA, granted on June 24, 2004, in connection with the services of class 36.
On June 30, 2007, the Respondent registered the disputed domain name <intesabanca.info>.
The Complainant contacted the Respondent in a letter September 13, 2007, informing the Respondent of the Complainant’s rights to the trademark BANKA INTESA, and requesting a voluntary transfer of the domain name. The Respondent replied by e-mail the same day, with an offer to transfer the domain name for a compensation of 4000 Euros.
5. Parties’ Contentions
A. Complainant
The Complainant is the owner of several BANCA INTESA trademark registrations and applications. The disputed domain name exactly reproduces the trademark BANCA INTESA. The sole difference – anyway negligible – is represented by the inverted order of the two words. The word “Banca” - which means “bank” - is a descriptive term, highly generic and of little distinctive value. Therefore, the focus is on the distinctive “INTESA” component of the Complainant’s trademark and the “INTESA” component of the contested domain name, which are identical.
The Respondent has no rights to the domain name. To the Complainant’s findings the Respondent has no trade mark rights in the name, and the domain name does not correspond to the business name of the Respondent, or a name LLIEFTEX is commonly known by.
The contested domain name is not used for any bona fide offerings.
On the contrary, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. The website contains several links to different kind of services on line, including bank and financial services. The content of the website is highly confusing, as Intesa Sanpaolo operates in the field of banking and financing. In the mentioned website, there are also explicit references to Banca Intesa and other companies of Intesa Sanpaolo’s group.
The Complainant finally submits that the sole further aim of the owner of the domain name would be to resell it to the Complainant, which represents, in any case, an evidence that the registration and use is in bad faith. This is supported by the fact that the Respondent requested 4000 Euros for the transfer of the domain name to the Complainant. An amount that clearly exceeds the out-of-pocket costs directly related to the domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights to the trade mark BANCA INTESA which precede the Respondent’s registration of the disputed domain name.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s trade mark BANCA INTESA. The disputed domain name incorporates the Complainant’s trade mark completely. The only difference is that the words “BANCA” and “INTESA” are inverted.
“Banca” is a descriptive term. Therefore, the Panel agrees with the Complainant that the focus should be on the distinctive term “INTESA”, which is identical with the same part in the Complainant’s trademark registrations and applications, cf the panel’s observations in Banca Intesa S.p.A., v. Fahri Dogan Bato,
WIPO Case No. D2006-0509.
Based on the above, the Panel finds that the Complainant has proved that the condition under the Policy, paragraph 4(a)(i) is fulfilled with respect to the disputed domain name.
B. Rights or Legitimate Interests
It is fairly simple for a respondent to demonstrate it has rights to or legitimate interests in a domain name. Previous decisions under the Policy have found that once a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests, respondent carries the burden of demonstrating rights or legitimate interests in the domain name.
The Respondent has not responded to the Complaint and the Panel has neither been provided any documentation indicating that the Respondent has registered the disputed domain name as a trade mark nor documentation indicating that the Respondent has been granted any rights to use a trademark corresponding to the disputed domain name.
The basis for the Panel’s decision is that the Complainant has not granted the Respondent any rights to use its mark, and that the Respondent is in no way affiliated with the Complainant.
The Panel finds that the circumstances mentioned and evidenced by the Complainant are sufficient to establish a prima facie showing that the Respondent has no rights to or legitimate interests in the domain name at issue.
As the Panel cannot find any indications of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy or any other circumstances indicating such rights or legitimate interests in the case file, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
The Panel finds that the Complainant has proven that the registration and use of the domain name is in bad faith. The Panel cannot find that the Respondent could have had other intentions in registering the domain name than to try to sell it to Complainant for a profit or to redirect traffic intended for Complainant to the Respondent’s own website. Furthermore, it can not be reasonably argued that the Respondent could have been unaware of Complainant’s mark, cf the Panels observations in National City Corporation v. MH Networks LLC,
WIPO Case No. D2004-0128.
The disputed domain name is connected to the website “www.intesabanca.info”, a website which contains several links to different kind of services online, including bank and financial services and with explicit references to Banca Intesa and other companies of the Complainant’s group, Intesa Sanpaolo. The Panel finds it clear that the Respondent is using Complainant’s trade mark to attract Internet users to its website without making it clear that it is not a website of the Complainant or affiliated with or sponsored or endorsed by it.
Registration and use of a domain name to re-direct internet users to websites of competing organizations constitute bad faith registration and use under the Policy, cf the Panel’s observations in Netwizards, Inc. v. Spectrum Enterprises,
WIPO Case No. D2000-1768; and National City Corporation v. MH Networks LLC,
WIPO Case No. D2004-0128.
Even if the users who access the Respondent’s website may conclude that it is not what they were originally looking for, the Respondent has already succeeded in its purpose of using the Complainant’s mark to attract users, cf the Panel’s observations in Red Bull GmbH v. Unasi Management Inc.,
WIPO Case No. D2005-0304.
The Panel further sees the Respondent’s offer to sell the disputed domain name for valuable consideration in excess of his out-of-pocket costs related to the domain name, as a further indication of bad faith.
For the various reasons discussed above, the Panel finds that the Respondent has registered and used the domain name in dispute in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <intesabanca.info> be transferred to the Complainant.
Arne Ringnes Sole Panelist
Dated: January 21, 2008
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