The disputed domain names <bankintesa.net>, <bankintesa.org>, <intesabanca.net>, <intesabankasi.com>, <intesabank.net>, <intesabank.org> and <intesainsurance.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2014. On March 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 6, 2014, 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.

The Center verified that 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 March 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2014. The Response was filed with the Center on March 27, 2014.

The Center appointed Martine Dehaut as the sole panelist in this matter on April 4, 2014. 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

As demonstrated by the Complainant, the Complainant is a leading Italian banking group and is among the top banking groups in the euro zone, with a market capitalization exceeding EUR 32.7 billion.

As indicated in the Complaint, “the Complainant is the leader in Italy, in all business areas (retail, corporate and wealth management). Through a network of approximately 4,800 branches capillary and well distributed all over the country, with market shares of more than 15% in most Italian regions, the Complaint’s Group offers its services to approximately 11 million customers. Intesa Sanpaolo has a strong presence in Central-Eastern Europe with a network of approximately 1,400 branches and over 8.4 million customers. Moreover, the international network specialized in supporting corporate customers is present in 29 countries, in particular in the Mediterranean area, in the United States of America, Russian Federation, China and India”.

The Complainant is the owner in particular of the following trademarks:

- International trademark No. 793367 INTESA, registered on September 4, 2002;

- Community trademark No. 3105277 INTESA, registered on February 13, 2009;

- International trademark No. 1032908 BANCA INTESA, registered on December 18, 2009;

- Community trademark No. 6661491 BANCA INTESA & device, registered on December 12, 2008;

- Community trademark No. 6661672 INTESA SANPAOLO BANK & device, registered on February 19, 2009.

Moreover, the Complainant owns, among others, the following domain names incorporating the word “intesa”: <intesabank.com>, <intesabank.eu>, <intesabank.cn>, <intesabank.com.cn>, <intesabank.ru>, <intesabank.sk>, <intesabank.hu>, <intesabanca.com>, <bankintesa.com>, <bankintesa.ru> and <bank-intesa.ru>.

The disputed domain names <bankintesa.net>, <bankintesa.org>, <intesabankasi.com>, <intesabank.net> and <intesabank.org> were registered on April 15, 2013, while the disputed domain names <intesabanca.net> and <intesainsurance.com> were registered on April 16, 2013. These disputed domain names have not been used since then.

Some exchanges took place between the parties, before the introduction of this proceeding. In response to a cease and desist letter sent by the representative of the Complainant, the Respondent Mr. Rengi replied in particular the following: “please be advised that, these domain names are purchased by me, by a legitimate transaction. Your claim of identity and confusion of the domain names with your client’s registered trademarks is a controversial issue which should be resolved at the competent jurisdiction. Therefore, your demand of transferring the domain names to your client at no cost would not be acceptable. As you know, such a dispute over domain names is subject to U.S. jurisdiction. Considering the legal costs and the time which would be consumed for pursuing such a legal process, I hereby offer your client a price of 150.000 Euros in return for transferring the all 7 domain names to your client immediately”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s trademarks. In particular, the disputed domain name <intesabanca.net> is almost identical to the trademark BANCA INTESA and to the domain name <intesabanca.com>. The same reasoning applies to the disputed domain names <intesabank.net>, <intensabank.org>, <bankintesa.net>, <bankintesa.net> and <intesabankasi.com>, which consist of an association of the trademark INTESA with the terms “bank” and “bankasi”, which are, respectively the English and the Turkish equivalents of the Italian word “banca”. As to the disputed domain name <intesainsurance.com>, it is composed of the registered trademark INTESA combined with the term “insurance”.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain names and has no connection with the Complainant. The Complainant has never authorized or licensed the Respondent or any other person to register or use the disputed domain names.

The Complainant argues that the Respondent has registered and is using the disputed domain names in bad faith. In this respect it explains that the disputed domain names are not used for a bona fide offering of goods and services; even if they are inactive by now, this behavior constitutes a conduct of passive holding of a domain name which is evidence of bad faith registration and use. In fact, the passive holding constitutes evidence of the use and the registration in bad faith because the Complainant’s trademarks INTENSA and BANCA INTENSA are well known. Therefore, it is not possible to foresee any legitimate use, in good faith, of the disputed domain names. Moreover, the Respondent has offered to transfer the disputed domain names to the Complainant for a price of EUR 150,000. The sole aim of the Respondent is to sell the disputed domain names to the Complainant at a very high cost, which also evidences bad faith behavior.

B. Respondent

The Respondent filed a response to the Complaint, in which he stated in particular the following:

- “The related domain names do not include San Paolo words. Especially the domain <intesainsurence.com>, if the complainant is doing this business for years and years, “com” is the most common annex and they did not register it before. It is strange”; and

- “These websites are not being used as they are San Paolo’s.”

6. Discussion and Findings

According to the paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain either the cancellation or the transfer of the disputed domain names:

(i) the disputed domain names are 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 interest in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel notes that the Complainant is the owner of various registered International and community trademarks INTESA and BANCA INTESA.

The confusing similarity between the disputed domain names and the trademarks is obvious for each and every disputed domain name:

First, the disputed domain name <intesabanca.net> is composed of the words “intesa” and “banca”, which constitute the prior trademark BANCA INTESA.

Second, the disputed domain names <bankintesa.net>, <bankintesa.org>, <intesabankasi.com>, <intesabank.net> and <intesabank.org> all contain the distinctive trademark INTESA, associated to the word “bank” or “bankasi”, which describes the activities of the Complainant. Besides, the words “bank” and “bankasi” are very similar to “banca”.

Third, the disputed domain name <intesainsurance.com> consists of the distinctive trademark INTESA, followed by the word “insurance”. All the major banks offer insurance services, and therefore there is a clear similarity between the earlier trademarks INTENSA and INTESA BANCA, and the disputed domain name <intesainsurance.com>.

Therefore, the disputed domain names have to be regarded as confusingly similar to the trademarks of the Complainant.

Based on the foregoing, the Panel holds that the first requirement of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

Following the second condition of paragraph 4(a) of the Policy, the Complainant has to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Following standard practice, the Complainant has asserted not to have granted the Respondent any authorization to use the trademarks INTESA and BANCA INTESA whatsoever, nor to have granted any license giving the right to the Respondent to use the disputed domain names. Besides, as mentioned in the Complaint, the Respondent is in no way affiliated or associated with the Complainant.

Absent of any defense on this point by the Respondent, and any active use of the disputed domain names, the Panel concludes that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Accordingly, the Panel finds that the second requirement of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Respondent has registered and used the disputed domain names in bad faith. Paragraph 4(b) of the Policy gives examples of circumstances which constitute evidence of both bad faith registration and bad faith use.

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, 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 this matter, bad faith is everywhere:

The Respondent has registered, not one, but a series of disputed domain names which all imitate the earlier trademarks of the Complainant. There is, in other words, a pattern of bad faith conduct.

The Respondent has obviously registered these disputed domain names with the Complainant’s trademarks and activities in mind. This is evidenced by the association of the distinctive sign INTESA, to a word which describes the activities of the Complainant: “bank” (and variations in other languages) and “insurance”.

The sole objective of the Respondent is to sell the disputed domain names to the Complainant, for a price of EUR 150,000, which is clearly in excess of the out-of-pocket costs directly related to the disputed domain names. This is based on the – obviously incorrect – assumption that the Complainant would have to invest a lot of money and time in litigating this matter before a United States of America Court.

Besides, independently of the financial request of the Respondent, the Panel concurs with the Complainant when it states that one can hardly foresee a possible legitimate use in good faith of a series of disputed domain names that associate a famous trademark to a generic word which describes the activity conducted under the said trademark.

The fact that the disputed domain names are not used as such to host a webpage does not prevent a finding of bad faith: all the circumstances of the case are indicative of a bad faith passive holding, in accordance with the consensus view of UDRP panels (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2).

Accordingly, the Panel finds that the third requirement of paragraph 4(a) of the Policy is 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 names <bankintesa.net>, <bankintesa.org>, <intesabanca.net>, <intesabankasi.com>, <intesabank.net>, <intesabank.org> and <intesainsurance.com> be transferred to the Complainant.

Martine Dehaut
Sole Panelist
Date: April 18, 2014