WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Janet Morgan, Jmelones

Case No. D2014-0909

1. The Parties

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

The Respondent is Janet Morgan, Jmelones of Norwalk, California of United States of America.

2. The Domain Name and Registrar

The disputed domain name <bancaintessa.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2014. On May 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 30, 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 June 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2014.

The Center appointed Linda Chang as the sole panelist in this matter on July 11, 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

The Complainant is a leading Italian banking group, 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 owns International trademark registration No. 793367 INTESA granted on September 4, 2002, International trademark registration No. 1032908 BANCA INTESA granted on December 18, 2009, as well as community trademark registrations for INTESA, and BANCA INTESA (device).

Moreover, the Complainant is also the owner, among the others, of the following domain names bearing the sign “Banca Intesa”: <bancaintesa.com>, “.org”, “.eu”, “.info”, “.net”, “.biz”, and “.it”. All of them are now connected to the Complainant’s official website “www.intesasanpaolo.com”.

The Domain Name <bancaintessa.com> was registered on July 16, 2013 and is connected to a website graphically identical to the official site of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Domain Name exactly reproduces the trademark BANCA INTESA, with the mere addition of an “s” in the verbal portion of INTESA. The Domain Name is clearly a minor and merely descriptive variation of the cited trademarks, used by the Complainant to identify its online banking service for the enterprises.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has nothing to do with the Complainant. The Domain Name does not correspond to the name of the Respondent and, to the best of the Complainant’s knowledge, the Respondent is not commonly known as “Bancaintessa”. The Respondent has never made any fair or non-commercial uses of the Domain Name.

The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Complainant’s trademarks BANCA INTESA and INTESA are distinctive and well known all around the world. The Domain Name would not have been registered if it were not for the Complainant’s trademarks, which is a clear evidence of registration of the Domain Name in bad faith. In addition, the Domain Name is not used for any bona fide offerings. The main purpose of the Respondent is to use the website under the Domain Name for phishing financial information in an attempt to defraud the Complainant’s customers.

B. Respondent

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

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a complainant under the Policy, it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that

(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.

A. Identical or Confusingly Similar

The Panel acknowledges that the Complainant enjoys extensive trademark rights to the marks as evidenced in, inter alia, International trademark registration No. 1032908 BANCA INTESA and International trademark registration No. 793367 INTESA. The Complainant also holds Community trademark registration No. 3105277 INTESA, No. 12247979 INTESA, and No. 6661491 BANCA INTESA (device).

The Panel notes that the Domain Name consists of two parts, “bancaintessa” and “.com”. The Panel finds it an accepted principle that the addition of suffixes such as “.com” being the generic Top-Level Domain is not a distinguishing factor. The Panel views that the major part of the Domain Name is “bancaintessa”, with the addition of an “s” in the verbal portion of INTESA, is similar to the trademark BANCA INTESA. The Panel holds that the increment of “s” does not necessarily eliminate a likelihood of confusion as it is a typo squatting case where the domain name is a slight alphabetical variation from a famous mark. See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, WIPO Case No. D2001-1314; DaimlerChrysler Corporation v. Worshiping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272; Telstra Corporation Ltd v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2000-1293.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;

(ii) the fact that respondent has been commonly known by the domain name; or

(iii) 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.

As contended by the Complainant, the Respondent has not been authorized by the Complainant to use the marks in any way and the Respondent has no connection or affiliation to the Complainant. In addition, the Panel also notes that there is no indication whatsoever that the Respondent is commonly known by the Domain Name and/or is using the Domain Name in connection with a bona fide offering of goods or services.

In line with the above, the Panel holds that the Complainant has presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, and the burden of proof therefore shifts to the Respondent to prove otherwise. See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270; Chanel, Inc v. Estco Technology Group, WIPO Case No. D2000-0413; Inter-Continental Hotel Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. The Respondent however failed to do so by not responding to the contentions made by the Complainant.

The Panel therefore concludes that the Respondent does not have rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out the following circumstances which, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.

The Panel recognizes that the Complainant’s BANCA INTESA marks enjoy a high reputation around the world, which is also confirmed by prior WIPO UDRP decisions. See, e.g., Intesa Sanpaolo S.p.A. v. George Papadakos, WIPO Case No. D2008-1531. Therefore, the Panel finds that it is inconceivable that the Respondent had no actual notice of the Complainant’s trademark rights at the time of registering the Domain Name. Consequently, it is pertinent for the Respondent to provide an explanation of its choice in the Domain Name, failing which the Panel draws the conclusion that the Domain Name was registered in bad faith with intent to create an impression of an association with the Complainant and its trademarks.

The Complainant has adduced evidence to show that the Domain Name had been connected to a website graphically identical to the official site of the Complainant. The Panel agrees that it is very likely that Internet users would be misled into believing that the Domain Name is associated with the Complainant and then directed to the website associated with the Domain Name. The Panel further holds it is likely that the Respondent is using the Domain Name to phish information of the attracted Internet users. The Panel therefore determines that the present case falls within the circumstances referred to in paragraph 4(b)(iv) of the Policy.

Based on the above facts and reasons, the Panel finally concludes that it is adequate to conclude that the Respondent has registered and is using the Domain Name in bad faith.

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 Domain Name <bancaintessa.com> be transferred to the Complainant.

Linda Chang
Sole Panelist
Date: July 28, 2014