WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Thi Thanh, Nguyen, VPDD UBGM Ltd

Case No. D2009-0751

1. The Parties

The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Studio Legale Perani, Italy.

The Respondent is Thi Thanh, Nguyen, VPDD UBGM Ltd of Tay Ho, Hanoi, Viet Nam.

2. The Domain Name and Registrar

The disputed domain names <intessanpaolo.com> and <intsasanpaolo.com> are registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2009. On June 9, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On June 10, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 18, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 10, 2009.

The Center appointed John Katz QC as the sole panelist in this matter on July 29, 2009. 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 major Italian based banking group. It came into existence under its current name and trading style in January 2007 following the merger of Banca Intesa and Sanpaolo IMI.

The Complainant contends it is the leading bank in Italy with a market share of 20% in all business areas and a market capitalization of €20 billion. It has some 6,500 branches in Italy and some 12 million customers. Its customer base extends beyond Italy into Europe with some 2,000 branches and 8.5 million customers. The international network of the group extends as far as the United States of America, The Russian Federation, China and India.

The annexes to the Complaint establish the banking services extend to asset management and pension funds. It is ranked by Bloomberg as number four in market capitalization and ahead of many other internationally known banks.

The list of branches and representative officers worldwide shows a truly international presence on almost every continent. Notably there is a branch or representative office in Hong Kong, Singapore, Shanghai, Beijing and Ho Chi Minh City (Cities).

The Complainant has also registered various trade marks INTESA SANPAOLO, GRUPPO INTESA SANPAOLO and BANCA INTESA SANPAOLO. The first of these is an international registration extending to Viet Nam (under the Madrid Agreement).

Although not referred to in the Complaint, the Complainant also has a website “www.intesasanpaolo.com”. This website drops down to other websites associated with the Complainant.

5. The Parties' Contentions

A. Complainant

The Complainant contends that by virtue of its trade marks, both registered and at common law, its general reputation and goodwill and its enormous public profile it has established an international reputation such that anybody seeing or hearing the trade mark INTESA SANPAOLO would think of and associate it with the Complainant and the Complainant alone. It is said to be among the most well-known trade marks in the banking field.

The Respondent has registered the disputed domain names in question containing two minor misspellings in the form of one letter missing in each domain name.

Significantly both contain the full name “Sanpaolo” correctly spelled.

The Respondent's disputed domain names <intsasanpaolo.com> and <intessanpaolo.com> are linked to a website which is live and purports to offer drop down links to other websites offering banking and financial services many of which are services also offered by the Complainant. Some of these other sites are of competitors to the Complainant and also include other websites of the Complainant itself. The potential for confusion and deception with resultant damage to the Complainant is clear.

B. Respondent

The Respondent has defaulted and therefore has not put anything before the Panel by way of evidence. However, some indication of the Respondent's activities can be seen from the evidence the Complainant has adduced, including the websites “www.intsasanpaolo.com” and “www.intessanpaolo.com” and another domain name dispute decision Intesa Sanpaolo S.p.A v. VPDD UBGM LTD., WIPO Case No. D2007-0553, (June 5, 2007). There, a number of domain names had been registered by the Respondent including <intesasanapolo.com> all of which were ordered by the panel in that decision to be transferred to the Complainant.

6. Discussion and Findings

The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.

As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.

Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:

(i) The respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The respondent's domain name has been registered and is being used in bad faith.

Each of three elements must be established by a complainant to warrant relief.

A. Identical or Confusingly Similar

As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.

The Complainant must establish that it has rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent. The Complainant has registered trade marks and a domain name. It also clearly has extensive common law rights based upon its very extensive trading and use of its trade marks in connection with its business units. There can be no question that the Complainant has rights to trade marks or service marks and protectable goodwill.

The disputed domain names are strictly speaking not truly identical with any of the Complainant's marks. The Panel notes in passing what the European Court said in the case of LTJ Diffusion SA v. Sardas Vertdaubet SR [2003] FSR 34. In that case the European Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant's mark if the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.

The Complainant relies on the activities of the Respondent as constituting “typo squatting”, that is, adopting a slight and often imperceptible typographical variation to a well-known trade mark, chosen and used by a cyber-squatter deliberately on the understanding that an Internet user may not realize or appreciate the typographical error.

Moreover, the Panel notes where the disputed domain name defaults to an active or live website that offers links to other banking websites and has an overt appearance of being genuine, the risk of error and consequential damage or diversion of business can be immeasurable. Such dangers cannot be underestimated in the international banking environment.

In line with the UDRP precedent, on a direct comparison between the disputed domain names and the Complainant's mark or marks there is a clear likelihood of confusion. The Panel accordingly has no hesitation in finding that the disputed domain names and the Complainant's mark or marks are confusingly similar even if they are not in the strictest or purest sense identical, and that is all the Complainant needs to establish under the Policy. This must be especially so where the differences as here are of such a minor nature that to most people they would go unnoticed or at best would simply, if noticed, would be dismissed as inconsequential.

The Panel finds accordingly that paragraph 4(a)(i) of the Policy is made out.

B. Rights or Legitimate Interests

As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietary right to the mark.

Under paragraph 4(a)(ii) a respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.

Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.

It is however difficult to imagine what legitimate business or personal use defence the Respondent could put up.

Moreover, as the disputed domain names default to other but competing websites the inference may readily be drawn that the Respondent has no legitimate interests to protect and is simply seeking wrongly to take advantage of the Complainant's reputation and goodwill to divert web users' attention.

The previous panel decisions cited in the Complaint by the Complainant and annexed to the Complaint provide abundant authority for this proposition.

The Panel finds accordingly that paragraph 4(a)(ii) of the Policy is made out.

C. Registered and Used in Bad Faith

As to the third ground, this requires that the domain name be registered and used in bad faith. As has previously been said in other panelists' decisions together with earlier decisions of this Panelist, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.

Any person coming across the Respondent's domain names would naturally assume, contrary to the fact, that there was or may well be some connection or association between the Complainant and the Respondent. This is especially so given that the disputed domain names default to banking and banking related websites and include subsidiary websites of the Complainant itself.

The reasons set out in Section B above of this decision elide with those under this section. Once again, the inference is irresistible that this Respondent has registered and is using the domain names in bad faith. Such an inference may even more readily be drawn given that this appears to be the second instance where this Respondent has wrongly registered and used a domain name confusingly similar to a trade mark or trade name of the present Complainant.

The Panel finds accordingly that paragraph 4(a)(iii) of the Policy has been made out.

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 names, <intessanpaolo.com> and <intsasanpaolo.com> be transferred to the Complainant.

John Katz QC
Sole Panelist

Dated: August 12, 2009