WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Angelo Tristano

Case No. D2015-0792

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 Angelo Tristano of Milan, Italy.

2. The Domain Name and Registrar

The disputed domain name <intesasanpaolo-group.com> is registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2015. On May 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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 May 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2015.

On June 8, 2015 the Center notified the parties that due to an administrative oversight, it appeared that the document entitled “Notification of Complaint and Commencement of Administrative Proceeding” was not copied to a relevant email address and that the document entitled “Written Notice” was not copied to a relevant physical and fax address.

The Center notified the Respondent of the document entitled “Notification of Complaint and Commencement of Administrative Proceeding”, and the Complaint (including annexes), allowing the Respondent a period of five (5) days in which it could indicate whether it wished to submit a response. The document entitled “Written Notice” was forwarded to the address and fax number mentioned above. The Center did not hear anything from the Respondent by the determined deadline, and so it proceeded to panel appointment.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on June 18, 2015. 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

For the purpose of this Complaint, the Complainant relies on the following earlier rights:

- International trademark registration no. 920896 INTESA SANPAOLO, granted on March 7, 2007 in connection with classes 9, 16, 35, 36, 38, 41 and 42;

- Community trademark registration no. 5301999 INTESA SANPAOLO, filed on September 8, 2006 and granted on June 18, 2007, in connection with classes 35, 36 and 38;

- Community trademark registration no. 779827 GRUPPO INTESA, filed on March 24, 1998, granted on November 15, 1999 and duly renewed until March 24, 2018, in connection with classes 9, 16, 36, 38, 41 and 42;

- Italian trademark registration no. 818811 GRUPPO INTESA, filed on December 18, 1997, granted on June 20, 2000, and duly renewed until December 17, 2017 (under registration n. 1281950), in connection with classes 9, 16, 36, 38, 41 and 42;

- Community trademark registration no. 8158883 INTESA SANPAOLO GROUP SERVICES, filed on March 16, 2009 and granted on September 24, 2009, in connection with classes 9, 16, 35, 36, 37, 38, 41 and 42;

- Community trademark registration no. 8185258 INTESA SANPAOLO GROUP SERVICES & device, filed on March 27, 2009 and granted on January 12, 2010, in connection with classes 9, 16, 35, 36, 37, 38, 41 and 42.

Moreover, the Complainant relies on several domain names comprising its marks, such as <groupintesasanpaolo.com> et al., which all redirect to the Complainant’s official website at “www.intesasanpaolo.com”.

The disputed domain name was registered on April 2, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant is the leading Italian banking group and also one of the protagonists in the European financial arena. Intesa Sanpaolo is the company resulting from the merger, which became effective on January 1, 2007, between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.

Intesa Sanpaolo is among the top banking groups in the Eurozone, with a market capitalisation exceeding EUR 52.9 billion, and the undisputed leader in Italy, in all business areas. The Complainant acts through a network of approximately 4,500 branches distributed throughout the country, with market shares of more than 13% in most Italian regions. The Complainant offers its services to approximately 11.1 million customers.

The Complainant also 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 specialised in supporting corporate customers is present in 29 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, the Russian Federation, China and India.

1. The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights

The disputed domain name is confusingly similar to the Complainant’s earlier trademarks and domain names. The disputed domain name <intesasanpaolo-group.com> is identical to the trademarks INTESA SANPAOLO, with the mere addition of the descriptive term “group”. The disputed domain name <intesasanpaolo-group.com> is also identical to the trademark GRUPPO INTESA, being the latter its translation in Italian. Likewise, the disputed domain name is also almost identical to INTESA SANPAOLO GROUP SERVICE, as it includes its main portion “Intesa Sanpaolo Group”.

The disputed domain name <intesasanpaolo-group.com> is also confusingly similar to the Complainant’s domain names cited above.

The disputed domain name <intesasanpaolo-group.com> is a minor variation of the cited trademarks and domain names, used by the Complainant to identify its banking group and the financial and banking services rendered by the same.

2. The Respondent has no rights or legitimate interests in respect of the disputed domain name

The Respondent has no relation with the Complainant. The Complainant is the sole entity entitled to authorize any use of the trademarks INTESA SANPAOLO, GRUPPO INTESA and INTESA SANPAOLO GROUP SERVICES by third parties. The Respondent has never been authorized or licensed by the Complainant to use the disputed domain name

The disputed domain name does not correspond to the Respondent’s name and, to the best of the Complainant’s knowledge, the Respondent is not commonly known by the disputed domain name.

Lastly, according to the Complainant, there is no fair or noncommercial use of the disputed domain name.

3. The disputed domain name was registered and is being used in bad faith

The Complainant’s trademarks INTESA SANPAOLO, GRUPPO INTESA and INTESA SANPAOLO GROUP SERVICES are distinctive and well known all over the world. The fact that the Respondent registered a domain name that is confusingly similar to these trademarks is evidence of the fact that the Respondent had knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name. Most probably, the disputed domain name would not have been registered if it were not for the Complainant’s trademarks.

The Respondent’s contact details as shown in the WhoIs are false. The Respondent’s address indicated in the relevant WhoIs is the registered address of the Lombardy Region building located in Milan and not a private address, while the phone number therein indicated does not exist.

According to UDRP precedent, the intentional provision of misleading or false contact information in the application for registration of a domain name is evidence of bad faith.

In light of the foregoing, the Complainant contends that the disputed domain name was registered in bad faith.

As far as use in bad faith is concerned, the disputed domain name is not used for any bona fide offering of goods or services. More specifically, there are circumstances indicating that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website, as well as that the Respondent registered the disputed domain name for the purpose of disrupting the business of the Complainant.

While the disputed domain name is not currently connected to an active webpage, the same was previously linked to a website sponsoring the Complainant’s banking and financial services, even if such website had no relationship with the Complainant or any of its affiliates. The Respondent cloned the Complainant’s official website as a clear act of sabotage against the Complainant’s business activity. As also recently published in Italian newspapers, the website connected to the disputed domain name has been deliberately used to issue a fake press statement in which the Respondent pretended to be the Complainant’s press office. Through such statement, the Respondent falsely claimed that Mr. Carlo Messina, CEO of Intesa Sanpaolo, resigned from his role because of financial irregularities. The main consequence of such act has been a fall of the Complainant’s shares in the stock market for several hours, until the Complainant itself officially revealed that the above statement was a fake. In this regard, the Complainant immediately informed the competent Prosecutor’s Office and CONSOB, the Italian Security and Exchange Commission, the Italian government authority responsible for regulating the Italian securities market.

Lately, No-TAV (a well-known Italian grassroots movement born in the 90’s, that struggles against High-Speed-Railway projects in Italy, particularly in the Susa Valley near Turin) claimed the responsibility of the above sabotage, by using the same email address from which the fake press statement was issued. Apparently, No-TAV considers the Complainant one of the most important financial lenders of the European Union’s High-Speed-Railway projects between Turin and Lyon (France) and, therefore, a threat to be fought.

As underlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 3.11,“Intentional tarnishment of a complainant’s trademark may in certain specific circumstances constitute evidence of registration and/or use of a domain name in bad faith. […] Tarnishment in this context normally refers to such conduct as linking […] wholly inappropriate information to an unrelated trademark”.

In consideration of the above, there is no doubt the Respondent engaged in tarnishment against the Complainant’s trademark and such circumstance certainly forms a basis for finding bad faith in the use of the disputed domain name.

In addition to the aforementioned circumstances, according to the Complainant, while surfing on the previous website of the disputed domain name, Internet users were confusingly led to presume that the Respondent and the Complainant were the same entity. The content of the website was highly confusing and misleading, since – as a mere example – the same offered to Internet users the possibility to subscribe as official suppliers of the Complainant, and to log in to a webpage identical to the one currently used by the Complainant itself. Therefore, it was also highly probable that the Complainant’s clients could erroneously believe that the website “www.intesasanpaolo-group.com” was one of the Complainant’s official sites and could accidentally provide the Respondent with their personal bank information.

It is then possible that one of the Respondent’s purposes was also to use the website for “phishing” financial information, in an attempt to defraud the Complainant’s customers.

Several UDRP decisions state that the “[U]se of a disputed domain name for the purpose of defrauding Internet users by the operation of a ‘phishing’ website is perhaps the clearest evidence of registration and use of a domain name in bad faith”. The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado, WIPO Case No. D2012-2093. In particular, UDRP jurisprudence considers phishing attacks as “proof of both bad faith registration and use in bad faith”. Supra.

Furthermore, the fact that the disputed domain name is currently not connected to an active webpage does not imply that <intesasanpaolo-group.com> is now used for bona fide offerings. In fact, countless UDRP decisions confirm that the passive holding of a domain name with knowledge that the domain name infringes another party’s trademark rights is evidence of bad faith registration and use. This is particularly true whenever a complainant’s mark is well-known, and there is no conceivable use that could be made of the domain name that would not amount to an infringement of the complainant’s trademark rights. These two requirements perfectly apply to the present situation where the Complainant’s trademarks are well-known, and no legitimate use of the disputed domain name is conceivable, unless previously authorized by the Complainant.

In the light of the above, the use of the disputed domain name shall be considered a use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <intesasanpaolo-group.com> is confusingly similar to the Complainant’s earlier trademark INTESA SANPAOLO. Indeed, the trademark is entirely reproduced in the disputed domain name. The only difference between the Complainant’s trademark and the disputed domain name lies in the addition of “-group” and the generic Top-Level Domain “.com”. Both these elements lack distinctive character. The “-group” indicates how the Complainant is organized and operates. The Complainant is commonly defined as “Gruppo Intesa” or “Gruppo Intesa Sanpaolo”. In this context, the Complainant has also shown that it owns Italian and Community trademark registrations for GRUPPO INTESA. Therefore, the addition of the term “-group” to the disputed domain name, rather than increasing the differences with the Complainant’s trademarks, enhances confusing similarity. As such, the disputed domain name is confusingly similar with the Complainant’s earlier trademarks.

In view of the foregoing, the Panel is satisfied that the first condition under the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, 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 the Respondent’s rights or legitimate interests to the disputed domain name:

(i) that before any notice of the dispute, the Respondent used, 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) that the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) that 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.

According to UDRP precedent, while the overall burden of proof rests with the complainant, proving a negative, as required by paragraph 4(a)(ii) of the Policy, is often practically impossible as it requires information that is often primarily within the knowledge of the respondent. Hence, prior UDRP panels have established that in order to satisfy the second requirement under the Policy it is sufficient to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to provide appropriate allegations or evidence.

In the case at issue, the Complainant pointed out that the Respondent has no relationship whatsoever with the Complainant and that the Complainant never authorized the Respondent to use the disputed domain name, nor granted the Respondent any other right to use the Complainant’s trademarks.

Furthermore, the disputed domain name <intesasanpaolo-group.com> 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 “Intesasanpaolo-Group”.

Lastly, there is no fair or legitimate noncommercial use of the disputed domain name as further discussed below.

The Respondent could have objected to the Complainant’s statements but failed to do so as he deliberately chose not to file any Response.

Considering the reputation of the Complainant’s trademarks, in the absence of any authorization from the Complainant, and the Respondent not being commonly known by the disputed domain name, the Panel finds that the Respondent could not make any conceivable legitimate or fair use of the disputed domain name.

In view of the foregoing, the Panel is satisfied that also the second requirement under the Policy is met.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove both registration and use of the disputed domain name in bad faith.

As far as registration in bad faith is concerned, there are several circumstances that lead to the conclusion that the disputed domain name was registered in bad faith.

First, the Respondent provided false contact details. The address specified in the WhoIs information is the registered address of the Lombardy Region building, located in Milan, and not a private address. Furthermore, the telephone number also specified in the relevant WhoIs information does not exist. Previous UDRP panels have established that the provision of false contact information at the time of registration evidences that the domain name was registered or maintained in bad faith.

Second, there are no doubts that the trademarks relied upon are well-known trademarks and that only the Complainant can authorize third parties to make use of its renowned trademarks. The natural consequence is that the Respondent could not ignore the existence of such renowned trademarks at the time he registered the disputed domain name, and that the unauthorized registration of <intesasanpaolo-group.com> was an abuse.

Third, in view of the Respondent’s use of the disputed domain name (see below), it is clear to the Panel that the Respondent registered <intesasanpaolo-group.com> for the specific purpose of damaging the Complainant’s name and activities.

For all the aforementioned reasons, the Panel concludes that the disputed domain name <intesasanpaolo-group.com> was registered in bad faith.

As far as use in bad faith is concerned, the Panel notes that the Complainant provided evidence that the disputed domain name led to a website containing information on the Complainant, its activities, and the value of its shares. The subject website illegitimately reproduced the Complainant’s trademark and indicated that it was the “Intesa San Paolo institutional website”, and therefore was likely to deceive consumers as to its effective origin. Indeed, the public of interest could very well perceive the “www.intesasanpaolo-group.com” website as one of the Complainant’s official websites.

The evidence included with the Complaint further shows that the Respondent used his fake website to issue a false press statement in which the Respondent pretended to be the Complainant’s press office. In this statement, the Respondent falsely claimed that the Complainant’s CEO resigned from his role due to certain financial irregularities. The main consequence of this illegitimate act has been a fall of the Complainant’s shares in the stock market for several hours, until the Complainant disowned the contents of the Respondent’s statement.

It is clear from the above that the Respondent used the disputed domain name in order to disrupt the Complainant’s activities. Said use is certainly not a bona fide use of the disputed domain name, in line with fair and legitimate commercial practices. Furthermore, the use of the disputed domain name to lead the public of reference to a deceptive website entails that the Respondent intentionally attempted to attract, for its own advantage, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

With respect to the Complainant’s claim that “one of the Respondent’s purposes was also to use the above website for phishing financial information, in an attempt to defraud the Complainant’s customers”, the Panel does not believe that the Complainant has sufficiently proved this claim. As a matter of fact, the documents provided by the Complaint, which should prove that the fake website offered to Internet users the possibility to subscribe as official suppliers of the Complainant and to log into a webpage identical to the one currently used by the Complainant itself, do not clearly demonstrate that this offer originates from the Respondent’s website rather than from the Complainant’s official website. Therefore, the Panel dismisses this claim.

With respect to the fact that the current passive holding of the disputed domain name does not exclude the Respondent’s bad faith, the Panel is perfectly in line with the Complainant’s assertions. Passive holding, in appropriate circumstances, has been considered in prior UDRP decisions as registration and use of the relevant domain name in bad faith. This is even more so in a situation like the one at issue, where the Respondent’s website was most probably shut down by the competent authorities, as a result of the cybercrime in which the Respondent was involved.

In light of the above, the Panel concludes that the Respondent used the disputed domain name in bad faith.

In view of the foregoing, the Panel is satisfied that the third element under the Policy is met.

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 <intesasanpaolo-group.com> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist
Date: June 29, 2015