WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / David Woo

Case No. D2010-1566

1. The Parties

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

The Respondent is Above.com Domain Privacy of Beaumaris, Australia/ David Woo of Hong Kong, Special Administrative Region of the People’s Republic of China.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 16, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 17, 2010, 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 September 20, 2010 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 September 24, 2010.

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 September 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2010.

The Center appointed Daniel Peña, as the sole panelist in this matter on October 29, 2010. 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 an Italian banking group and also carries out activities in the European financial arena.

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., two Italian banking groups.

The Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 31.7 billion euro.

The Complainant has 6,500 branches distributed throughout Italy, with market shares of more than 15% in most Italian regions, and it offers its services to approximately 12 million customers.

The Complainant has a presence in Central-Eastern Europe with a network of approximately 2,000 branches and over 8.5 million customers. The 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, Russia, China and India.

The Complainant is the owner, among others, of the following registrations for the trademarks SANPAOLOIMI and SANPAOLOIMI.COM:

On November 8, 2009, the Respondent registered the domain name <sanapaoloimi.com>.

5. Parties’ Contentions

A. Complainant

The Complainant is the leading Italian banking group and also one of the protagonists in the European financial arena.

The Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 31.7 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management).

In the Complainant´s view, it is more than obvious that the disputed domain name is confusingly similar to the Complainant’s trademarks. The domain name <sanapaoloimi.com> reproduces the distinctive trademarks SANPAOLO IMI and SANPAOLO IMI.COM, with the addition of the letter “A”. The Respondent is obviously engaging in “typosquatting”, a practice that consists in the registration of a domain name which is a slight alphabetical variation of a famous mark.

The Complainant likewise avers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used 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 prevail and have the disputed domain name transferred, the Complainant must show the following per the Policy, paragraph 4(a):

(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.

The Complainant bears the burden of proof for each of these elements.

A. Identical or Confusingly Similar

The Complainant has evidenced registrations for the trademarks SANPAOLO IMI and SAN PAOLOIMI.COM, granted by the Republic of Italy, the European Community and several international trademark registrations.

The Panel finds that the disputed domain name <sanapaoloimi.com> is confusingly similar to the Complainant’s trademarks SANPAOLOIMI and SANPAOLOIMI.COM. In Panel´s view, the addition of a letter and minor misspellings characteristic of the disputed domain name is an example of typosquatting. In other words, a form of cybersquatting which relies on mistakes such as typographical errors or mistakes made by Internet users when writing a domain name into a web browser.

For instance, upon a comparison between the spelling of the disputed domain name and the spelling of the Complainant’s trademarks, the Panel finds:

S A N P A O L O I M I

S A N A P A O L O I M I

The only difference between the disputed domain name and the Complainant’s registered trademarks is the letter “A” included in the domain name <sanapaoloimi.com>. The additional eleven (11) letters are identical and in the exact same order.

Such addition of one letter, as here, is per se and in fact clear evidence that the intention of the Respondent was to take advantage of users’ misspelling when typing the trademark SANPAOLOIMI.

It is also well accepted that top-level domain denomination, in this case “.com” may be ignored when assessing identity or confusing similarity of a trademark and domain name. However, in this case, the confusion is reaffirmed given that the Complainant is also the owner of the international registration of the trademark SANPAOLOIMI.COM.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks. The requirements in paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

With respect to paragraph 4(c)(i) of the Policy, in this case there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.

With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name in connection with a bona fide offering of goods or services.

In this Panel’s view, the Complainant has provided evidence that the Respondent uses the disputed domain name to mislead Internet users to active web sites where information about the Complainant’s financial services or those of the Complainant’s competitors is provided.

The Respondent has also adopted the Complainant’s trademarks for its own use and incorporated them into the disputed domain name without any authorization or license.

In the absence of a response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).

This Panel finds that the Respondent registered the disputed domain name which corresponds to widely used trademarks in financial services with prior knowledge of the Complainant’s rights. Only someone who was familiar with the Complainant’s marks would have registered a domain name including therein the distinctive expressions “San Paolo Imi”, as such.

In addition, the fact that the Respondent’s websites are affiliated with the promotion of services distinguished with trademark SAN PAOLO IMI, shows the Respondent’s intent, for commercial gain, to re-direct Internet users, especially potential customers of the Complainant to active web pages without any relationship with the Complainant.

In this Panel’s view, these facts lead to the risk of deception and confusion since it could give the impression that the websites redirected at “www.sanapaoloimi.com” is somehow endorsed by the Complainant.

Given the particular circumstances of this case, the Panel also finds that the use of a privacy service to conceal the Respondent’s identity is further evidence of the Respondent’s bad faith.

Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.

The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.

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 <sanapaoloimi.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist
Dated: November 10, 2010