WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Moniker Privacy Services / Charlie Kalopungi

Case No. D2011-0758

1. The Parties

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

The Respondent is Moniker Privacy Services / Charlie Kalopungi of Pompano Beach, Florida, United States of America and of Seychelles, respectively.

2. The Domain Name and Registrar

The disputed domain name <intesasanpaoplo.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2011. On May 2, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the disputed domain name. On May 4, 2011, Moniker Online Services, LLC. 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 May 5, 2011, 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 May 6, 2011.

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 May 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2011.

The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on June 6, 2011. 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 leading Italian banking group, created by the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A on January 1, 2007. The Complainant has a network of 5,900 branches and approximately 11.4 million customers in Italy.

The Complainant is among the top banking groups in the Euro Zone, with a market capitalization exceeding EUR 30.9 billion. The Complainant has a strong presence in Central-Eastern Europe with a network of approximately 1,700 branches and over 8.4 million customers. The Complainant also maintains an international network specializing in supporting corporate customers with a presence in 29 countries, in particular the Mediterranean area and other areas where Italian companies are most active, such as the United States of America, the Russian Federation, the People’s Republic of China and India.

The Complainant is the owner of a variety of registered trademarks for the word mark INTESA SANPAOLO including International trademark registration no. 920896, registered on March 7, 2007 in classes 9, 16, 35, 36, 38, 41 and 42.

The First Respondent is a WhoIs privacy service provider or proxy registrant. Upon the filing of the present complaint the First Respondent disclosed the identity of the Second Respondent (hereafter described as “the Respondent”) to the Center. The Respondent appears to be an individual with a contact address in the Seychelles. The Respondent registered the disputed domain name on September 4, 2010. As at the date of filing of the Complaint, the disputed domain name was pointing to a website sponsoring, among others, banking and financial services offered by competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant asserts that the disputed domain name exactly reproduces its INTESA SANPAOLO trademark with the sole difference being the addition of the letter “P” in the middle of the word. The Complainant points out that the letter “P” is next to the letters “O” and “L” on the qwerty keyboard. The Complainant uses the mark INTESA SANPAOLO in the second level of a variety of domain names including <intesasanpaolo.com> and the corresponding “.org”, “.eu”, “.info”, “.net” and “.biz” top level domain names. The Complainant asserts that as the disputed domain name is a slight alphabetical variation from its INTESA SANPAOLO trademark which renders the disputed domain name confusingly similar thereto.

The Complainant submits that the Respondent has no rights in the disputed domain name as any use of the trademark INTESA SANPAOLO has to be authorized or licensed by the Complainant and the Complainant has provided no such permission to the Respondent. The Complainant asserts that the disputed domain name does not correspond to the Respondent’s name and that the Respondent is not commonly known as “Intesasanpaoplo”. The Complainant submits that the disputed domain name is not being used in a fair or non-commercial manner.

The Complainant asserts that the Respondent has registered the disputed domain name with intent to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s INTESA SANPAOLO trademark. The Complainant submits that its trademark is distinctive and the fact that the Respondent registered a confusingly similar domain name indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Complainant further asserts that the disputed domain name is not used for any bona fide offerings but is used in a confusing manner to lead Internet users searching for information on the Complainant’s services to the websites of the Complainant’s competitors. The Complainant states that this practice of diversion is frequent in the banking realm due to the high number of online banking users and that the Respondent’s commercial gain is evident since it is obvious that the Respondent’s sponsoring activity is being remunerated.

The Complainant notes that the Respondent has been named as respondent in previous cases under the Policy in which the Respondent registered domain names constituting variations of very famous marks and asserts that this demonstrates the bad faith of the Respondent who is accustomed to typosquatting practice and is well aware of its unfairness.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

A. Identical or Confusingly Similar

In light of the registered trademarks cited in the Complaint, an example of which is noted in the Factual Background section above, the Panel is satisfied that the Complainant has established that it has rights in the trademark INTESA SANPAOLO. In comparing the trademark to the disputed domain name the Panel first disregards the generic top level domain “.com” as is customary in cases under the Policy and any white space in the trademark as such spaces are not permitted within domain names. It can then be seen that the disputed domain name is almost identical to the Complainant’s trademark, the only difference being the addition of the letter “P”. In the Panel’s view the additional letter does not serve to distinguish the disputed domain name from the Complainant’s trademark and, on the contrary, it appears to have been added purely to take advantage of a common typing error which can result from the fact that the letters “O”, “L” and “P” are adjacent on qwerty keyboards. The Complainant’s trademark remains the dominant element of the disputed domain name notwithstanding the addition of the letter “P” and this in the Panel’s opinion renders the disputed domain name confusingly similar to that trademark.

In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and thus that the first element under the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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”.

The consensus of previous decisions under the Policy is that a complainant may establish this second element by making out a prima facie case not rebutted by the respondent. The Respondent did not respond to the Complaint, and therefore did not submit any evidence regarding any rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not known by the name “Intesasanpaoplo” and has received no permission from the Complainant to use its INTESA SANPAOLO trademark. The Complainant notes that the disputed domain name is being used to point to a website which provides a series of financial services related sponsored links which direct the visitor to the Complainant’s competitors. The Panel is satisfied that this constitutes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has chosen not to explain its use of the disputed domain name or to set out any rights or legitimate interests in it. In the absence of an alternative explanation, the Panel is of the opinion that the Respondent selected the disputed domain name because of its close association with the Complainant’s trademark and as a typographical variant of the Complainant’s own online identity, with a view to receiving Internet traffic which mistakenly arrives at the Respondent’s website rather than that of the Complainant. When such traffic is received at the Respondent’s website the Respondent seeks to direct it to the Complainant’s competitors via the various hyperlinks. In the Panel’s view this is clearly not a bona fide offering of goods or services and the Panel is satisfied that the Respondent’s use of the disputed domain name in this manner cannot confer any rights or legitimate interests upon it. Furthermore, the Panel cannot conceive of any possible legitimate interest or right that the Respondent might have or could claim in the disputed domain name.

Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.

In light of the Complainant’s submissions and evidence the Panel is satisfied that the disputed domain name has been registered and is being used in bad faith. It is clear to the Panel that the Respondent intended to target the Complainant’s trademark by registering a likely typographical variant thereof as a domain name, a practice sometimes described as “typosquatting”, and that the Respondent has thereafter intentionally used the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. It is also clear from previous cases under the Policy such as, for example, Société Nationale des Chemins de Fer Français, SNCF v. Charlie Kalopungi / Moniker Privacy Services, WIPO Case No. D2011-0160, that the Respondent has engaged in a pattern of this type of conduct.

In these circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and accordingly that the third element under the Policy has been established.

7. Decision

For 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 <intesasanpaoplo.com> be transferred to the Complainant.

Andrew D.S. Lothian
Sole Panelist
Dated: June 9, 2011