The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Shumei Li of Shulanshi, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <sanpaoloimi.mobi> is registered with HiChina Zhicheng Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2009. On November 4, 2009, the Center transmitted by email to HiChina Zhicheng Technology Ltd. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On November 5, 2009, 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. On November 6, 2009, the Center transmitted an email to the parties in both Chinese and English with respect to the language of proceeding. On November 11, 2009, the Complainant submitted a request that English be the language of proceedings while the Respondent did not comment on the language of proceedings by the due date. The Center verified that the Complaint had 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 November 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 7, 2009.
The Center appointed C. K. Kwong as the sole panelist in this matter on December 18, 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 the owner of numerous trade marks consisting of the words SANPAOLO IMI. These registrations include, in particular, the following:
(a) Italian trade mark registration no. 0000782507 for the mark SANPAOLO IMI which was granted on May 27, 1999 in respect of certain goods and services under Classes 9, 35, 36 and 42;
(b) Community trade mark registration no. 001182716 for the mark SANPAOLO IMI which was granted on July 19, 2000 in respect of certain goods and services under Classes 9, 35, 36 and 42.
The Complainant has also registered domain names embodying the word “sanpaolo imi”, namely: <sanpaoloimi.com>, <sanpaoloimi.eu> and <sanpaoloimi.biz>.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid SANPAOLO IMI marks occurred before the registration of the disputed domain name <sanpaoloimi.mobi> on January 22, 2009.
Other than the particulars shown on the printouts of the database searches conducted by the Complainant of the WhoIs database (as provided in Annex A to the Complaint), Annex I to the Request for English to be the language of this Administrative Proceeding and the WhoIs database search results updated to November 16, 2009 provided by the Center (“the Database Records”), there is no evidence in the case file concerning the background of the Respondent and its business.
5. Parties' Contentions
A. Complainant
The Complainant has made the following contentions:
The Complainant has rights in the trade mark SANPAOLO IMI. Furthermore, the disputed domain name <sanpaoloimi.mobi> is confusingly similar to the trade mark SANPAOLO IMI.
The Complainant is the company resulting from the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups. The Complainant states that it is the undisputed leader in Italy with an average market share of 20 per cent in all banking business areas (retail, corporate and wealth management) with 5,500 branches throughout Italy and approximately 12 million customers. It also has a strong presence in Central-Eastern Europe with a network of approximately 1,400 branches and over 6 million customers. The Complainant has an international network specializing in corporate customers and is present in 34 countries including China. With a market capitalization exceeding Euro70 billion, it is among the top banking groups in the euro zone.
The disputed domain name <sanpaoloimi.mobi> has exactly reproduced the Complainant's trade mark SANPAOLO IMI. In the circumstances, the disputed domain name is likely to confuse the public into believing that it is connected to the Complainant.
The Respondent has no rights in the domain name because it has not registered the trade mark SANPAOLO IMI. Furthermore, the Respondent is not commonly known as “sanpaolo imi”. The disputed domain name is not connected to any website showing that it is used for any bona fide offering of goods or services or other legitimate purposes, or any fair or non-commercial use. It is also alleged that there has been a concealment of identity, the provision of false and misleading information in connection with the registration of the disputed domain name, the use of an unidentifiable business entity, the failure to provide conventional business information and the provision of insufficient contact information to the Registrar, all of which point to the use of the disputed domain name in bad faith. It is also not possible to conceive of any possible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate or an infringement of the Complainant's rights under trade mark law.
The Complainant has also suggested possible abuse by the Respondent such as phishing and identity theft, although these are unsubstantiated by the evidence adduced on the present record.
The Complainant has also suggested that the sole purpose of the registration of the disputed domain name by the Respondent might be to resell it to the Complainant at a profit in excess of the out-of-pocket expenses directly related to the registration of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex A to the Complaint, which was filed on November 3, 2009 and the WhoIs search result updated to November 16, 2009 as provided by the Center.
Such contact particulars also agree with those provided by the Registrar to the Center on November 5, 2009.
On November 16, 2009, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding to the Respondent in accordance with the contact details above by post/courier, facsimile and email with copies to the Registrar.
Although there were included in the case bundle supplied by the Center (a) undeliverable email notices which indicate that the emails sent to the Registrant's given email address were unsuccessful, (b) a fax transmission report showing that the fax communication was unsuccessful, and (c) a hand written note stating “faulty address no street address!” indicating that the delivery by post/courier might also be unsuccessful, all these are due to no fault or omission on the part of the Center.
The Panel is entitled to undertake limited factual research into matters of public record. Société des Produits Nestlé SA v. Telmex Management Services,
WIPO Case No. D2002-0070. The Panel notes that the Terms and Conditions of Services of the Registrar as incorporated in the Registration Agreement as shown in the HiChina website contain:
(a) an undertaking given by the user (Respondent) when registering the domain name with the Registrar, namely:
“User hereby undertakes that, the data provided by it in the domain name registration application shall be true, accurate and complete, and contain no misleading or false statements. In case of any change of the information for registration, User should update in time. All responsibility arising from the breach of this provision will be bore solely by the User…… User agrees to be legally bound by these terms and conditions just like the written terms agreed and sealed by it in person.”
(b) Article 10.4 “Either party may at any time change its address for notices or communications or other contact method by a prompt notice stating such changed address and other contact method. Or else, it shall be liable for all the consequences arising from failing to do so.”
In the circumstances, the Panel finds that as long as the Complainant (or the Center as the case may be) has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar, as reflected in the Database Records, their respective obligations of such communications will be discharged and the Respondent will be bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any omission or inadequate communication by the Center.
B. Language of Proceedings
In response to the Center's notification in English and Chinese of November 6, 2009 to both parties concerning the language of proceeding, the Complainant filed a request for English to be the language of this Administrative Proceeding on November 11, 2009.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the Registration Agreement for the disputed domain name is Chinese.
In support of its request, the Complainant has inter alia argued that:
(a) Contents of the website connected to the disputed domain name shows the English expression “Ready for the mobile website?”
(b) By registering an English character domain name and displaying at the website the above English expression, the Respondent has demonstrated its ability to comprehend the English language;
(c) The Complainant is not able to communicate in Chinese; and
(d) English is a neutral language for both parties in this case which will ensure fairness and an equal level of comfort to both parties.
The Panel has taken into consideration the fact that the disputed domain name consists of ASCII characters, the Respondent has provided contact details in English to the Registrar and the contents of the website connected to the disputed domain name apparently contains only the English phrase “Ready for the mobile web?” and other characters which are blurred but some of which appear to consist of English text.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,
WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna King,
WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,
WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trade mark SANPAOLO IMI by reason of its various trade mark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is substantially identical or confusingly similar to the Complainant's trade mark SANPAOLO IMI despite the addition of the generic top-level domain “.mobi”. After removing the generic top-level domain, only the word “sanpaoloimi” is left in its entirety. It is well-established practice to disregard the top-level part of a domain name, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian v. Beroca Holdings B.V.I. Limited,
WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is satisfied.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trade mark SANPAOLO IMI prior to the Respondent's registration of the disputed domain name <sanpaoloimi.mobi> on January 22, 2009. Further, the Panel notes that the names of the Registrant and the Registrant Organization do not correspond in any way with the domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as <sanpaoloimi.mobi>. There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
There is no possible explanation as to why it was necessary for the Respondent to adopt the word “sanpaoloimi” in its domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
In view of (a) the Complainant's uncontradicted claim of its international network providing services to corporate customers in 34 countries including China; (b) the registration of the disputed domain name in 2009, which was well after the Complainant's registrations and extensive use of the trade mark SANPAOLO IMI in Italy, Europe and 30 other countries by itself and its predecessors in title for upwards of 10 years with 12 million customers in Italy and 6 million customers in Europe, the Panel finds that the Respondent registered the disputed domain name in bad faith with knowledge of the Complainant's business and its use of the SANPAOLO IMI trade mark and trade name.
There is no evidence that the disputed domain name has been actively used by the Respondent as a website for either a legitimate noncommercial or fair use purpose, or in connection with a bona fide offering of goods or services. On the other hand, upon a visit to the website and clicking onto the words “contact telephone”, the words “此域名转让70万美元，有意请联系李女士13500900056” appeared. In English those words mean “US$700,000 for transfer of this website. Please contact Ms. Lee at 13500900056 if interested”. In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain.
The open public offer to the world by the Respondent to transfer the disputed domain name for the sum of USD700,000 include an offer to the Complainant or a competitor of the Complainant for valuable consideration in excess of the out of the Respondent's pocket costs directly related to the registration of the disputed domain name. The Panel is of the view that this was the primary purpose of the Respondent in registering the domain name. The Panel accordingly finds that, inter alia, the circumstances of paragraph 4(b)(i) of the Policy are present. It is also not possible to think of any plausible, genuine use of the disputed domain name by the Respondent.
The Panel finds that the domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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 disputed domain name <sanpaoloimi.mobi> be transferred to the Complainant.
C. K. Kwong Sole Panelist
Dated: December 29, 2009
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