WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A v. Above.com Domain Privacy/Transure Enterprise Ltd

Case No. D2009-0838

1. The Parties

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

The Respondent is Above.com Domain Privacy/Transure Enterprise Ltd of Australia, and British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, respectively.

2. The Domain Name and Registrar

The disputed domain name <linksanpaoloimi.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2009. On June 25, 2009, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 26, 2009, Above.com, Inc. 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 31, 2009, 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, 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 July 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 14, 2009.

The Center appointed Alexandre Nappey as the sole panelist in this matter on August 14, 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 facts related are based on the Complainant's submission.

Intesa Sanpaolo S.p.A. is a leading Italian banking group, resulting from the recent merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.

It has more than 6,500 branches and almost 12 million clients.

The Complainant's international network specialised in supporting corporate customers is present in 34 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, Russia, People's Republic of China and India.

Links Sanpaolo refers to a bundle of services of remote online banking offered by the group Intesa Sanpaolo S.p.A.

Intesa Sanpaolo is the owner of several trademark registrations and applications on SAN PAOLO IMI and LINKS SAN PAOLO, including particularly:

- Italian trademark application No. TO2006C002813 LINKS SAN PAOLO stylized, filed on October 25, 2006 in connection with the products of class 9 and with the services of class 36;

- Italian trademark registration No. 853343 SANPAOLO IMI.COM and device filed on June 12, 2001, granted on October 30, 2001, in connection with the products of class 9 and with the services of classes 35, 36 and 41;

- Italian trademark registration No. 782507 SANPAOLO IMI, filed on March 4, 1999, and granted on May 27, 1999, duly renewed on June 17, 2009, in connection with the products of class 9 and with the services of classes 35, 36 and 42;

- Community trademark registration No. 1182716 SANPAOLO IMI and device, filed on May 24, 1999, granted on July 19, 2000 and duly renewed on May 25, 2009 in connection with the products of class 9 and with the services of classes 35, 36 and 42;

- International trademark registration No. 770532 SANPAOLO IMI.com, granted on October 30, 2001 in connection with the products of class 9 and with the services of classes 35, 36 and 41.

All changes related to the Complainant's name have been duly recorded before the competent trademark offices.

Moreover, the Complainant is also the registrant for the domain name <linksanpaolo.it>.

The disputed domain name appears to have been registered by the Respondent on February 13, 2008.

5. Parties' Contentions

A. Complainant

According to the Complainant, the disputed domain name <linksanpaoloimi.com> is confusingly similar to the Complainant's trademark. In fact, it exactly reproduces the trademark SANPAOLO IMI, with the addition of the prefix “links”, which is a generic term.

Further, the disputed domain name is almost identical to the trademark LINKS SAN PAOLO, which the Complainant filed application for in 2006, and it has been using to promote its online banking services for at least three years.

Neither the Respondent nor anyone else within the context has rights or legitimate interests in the disputed domain name or has been given permission to use it, since the disputed domain name does not correspond to a trademark registered or the name of the Respondent, nor is the Respondent commonly known by LINKS SAN PAOLO IMI.

The Complainant underlines that the Respondent does not make any noncommercial or fair use of the domain name in issue.

At last the Complainant asserts that the disputed domain name has been registered in bad faith primarily for the purpose of selling for valuable consideration in excess of out-of-pocket costs. In the meantime, the disputed domain name is used to resolve to a parking web page displaying sponsored links, notably in the field of finance.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences there from as it considers appropriate”.

Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above cited elements are the following.

A. Identical or Confusingly Similar

The Complainant has provided substantial evidence of its rights and wide use of the mark SAN PAOLO IMI. The trademark is however not strictly identical to the disputed domain name <linksanpaoloimi.com>.

The Panel has to determine whether the domain name <linksanpaoloimi.com> is confusingly similar to the trademark SANPAOLO IMI the Complainant holds.

First, the Complainant's trademark is incorporated in its entirety into the disputed domain name. It is observed that previous panel decisions have considered that such domain names may be confusingly similar to such marks, despite the addition of other words. See Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095.

Second, the addition of generic words to trademarks has been considered in numerous UDRP decisions not to avoid confusing similarity between a domain name and a trademark.

The disputed domain name combines the Complainant's trademark with the generic term “links”, which is used by the Complainant to describe its online banking services.

The Panel notes in passing that the Complainant also filed application for the trademark LINKS SAN PAOLO in Italy in 2006, and that this application is currently still pending.

At last it is pointed out that the Complainant holds rights in the domain name <linksanpaolo.it> (Italy), which the disputed domain name is also confusingly similar to.

Therefore the Panel is satisfied that the Complainant owns rights in the SANPAOLO IMI trademark and that it has made commercial public use of the unregistered trademark LINKS SAN PAOLO, and finds that the disputed domain name is confusingly similar to the Complainant's trademarks. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is submitted that the Respondent has no connection or affiliation with the Complainant, who has not licensed or otherwise authorized the Respondent to use or apply for any domain name incorporating the Complainant's trademarks.

The Respondent has not alleged any facts or elements to justify prior rights or legitimate interests in the disputed domain name.

The Respondent does not appear to make any legitimate use of the domain name for noncommercial activities. To the contrary, the Respondent is, for his own commercial gain, diverting Internet users looking for the Complainant's services to a website displaying commercial sponsored links, some of them promoting the Complainant's competitors.

Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy. The Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant has to demonstrate both that the disputed domain name has been registered and is being used in bad faith.

The Complainant's documented evidence of its strong reputation in the field of banking leads the Panel to consider that the Respondent was aware of the Complainant and its trademark at the time of the registration of the disputed domain name.

As ruled in numerous cases, registration of a well-known trademark of which a respondent must have been aware may of itself be sufficient proof of registration in bad faith. Banca Intesa S.p.A. v. Fahri DoganBato, WIPO Case No. D2006-0509.

Moreover the disputed domain name is connected to a website displaying sponsored links, notably in the field of finance, promoting several competitors to the Complainant.

The Complainant claims that such use generates commercial gain for the Respondent, who is trading on the reputation of the Complainant.

The Panel is of the opinion that the connection between the disputed domain name and the use of the website is highly confusing for the Complainant's clients. The domain name in issue which indirectly allows access to websites operated by some of the Complainant's competitors clearly suggests that the domain name is used in bad faith, a fortiori when the domain name is similar to a widely-known trademark. See Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.

At last there is the Respondent's use of domain name Whois privacy service. Even if it is obvious that the use of such service does not per se lead to a finding of a bad faith, the Panel finds that in the specific circumstances of this case, and in the absence of any contention from the Respondent justifying the masking of its details, it may on the contrary indicate that the Respondent tried to escape from these proceedings.

See the finding of the panel in Compagnie Gervais Danone v. Domain Management, Syed Hussain,WIPO Case No. D2008-1239:

“It is sometimes argued by those who use such services that the provision of registration and contact details that are accessible through Whois services may result in unsolicited e-mails, regular mail or even phone calls. To hide one's contact details so as to prevent such unsolicited contact is said to be legitimate (particularly if the registrant is an individual). Therefore, it is argued that no inference of bad faith can be drawn from the use of these services. However, even if this argument were accepted by this Panel, it is difficult to see why it would justify the masking of a registrant's identity as opposed to just its contact details. Further, it is becoming an increasingly common practice for registrants to use these services to mask their identity from those who might wish to bring proceedings against them, whether under the UDRP or otherwise. In the circumstances, whilst the use of such a service may not by itself be sufficient to justify a finding of bad faith, the Panel accepts that, in the absence of any explanation from a respondent, it is a factor that may often point in that direction.”

Therefore, the Panel is satisfied that the requirement of paragraph 4(a)(iii) of the Policy is met: the Respondent has registered and is using the domain name 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 <linksanpaoloimi.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist

Dated: August 28, 2009