WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Sallustro Giuseppe

Case No. D2016-1075

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 Sallustro Giuseppe of Milano, Italy.

2. The Domain Name and Registrar

The disputed domain name <intensasanpaolo.net> is registered with Online SAS (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On May 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2016, 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 and informing that the registration agreement was in French.

The Center sent an email to the Parties regarding the language of proceeding on June 6, 2016. The Complainant submitted a request for English to be the language of proceeding on June 8, 2016.

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 and 4, the Center formally notified the Respondent of the Complaint in both French and English, and the proceeding commenced on June 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2016.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on July 13, 2016. 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 in this proceeding is one of the leading Italian banking groups and one of the protagonists in the European financial arena. The Complainant is the company created by the merger (effective January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.

The Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding EUR 40.5 billion. The Complainant has a wide-ranging network of approximately 4,100 branches distributed throughout Italy, with market shares of more than 13 percent in most Italian regions, and offers its services to approximately 11.1 million customers. The Complainant is present in Central-Eastern Europe with a network of approximately 1,200 branches and over 8.1 million customers.

The Complainant has proven to be the owner of the INTESA SANPAOLO mark, which enjoys thorough protection through many registrations thereof worldwide.

The Complainant is inter alia the owner of:

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

European Union trademark registration no. 5301999 for the mark INTESA SANPAOLO, applied for on September 8, 2006 and granted on June 18, 2007, in classes 35, 36 and 38;

European Union trademark registration no. 5421177 for the mark INTESA SANPAOLO & device, applied for on October 27, 2006 and granted on November 5, 2007, in classes 9, 16, 35, 36, 38, 41 and 42.

Moreover, the Complainant is also the owner, among others, of the following domain names bearing the sign INTESA SANPAOLO: <intesasanpaolo.com>and <intesa-sanpaolo.com>. All of these now redirect to the Complainant’s official website at “www.intesasanpaolo.com.”

The disputed domain name <intensasanpaolo.net> was registered on February 16, 2016. The disputed domain name redirects users to a parking page.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s INTESA SANPAOLO registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name 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 obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel 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.

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their respective cases.

The language of the Registration Agreement for the disputed domain name is French. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel finds no evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English.

However, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both French and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond formally to the issue of the language of the proceeding but failed to do so;

(c) the Center has informed the Respondent that it would accept a Response in either French or English; and

(d) the Respondent appears to be located in Milan, Italy, his name suggests he is Italian, and there is no evidence that he is familiar with the French language.

Considering the above circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in French would in the circumstances of this case cause an unnecessary cost burden to the Complainant and unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; (ii) English shall be the language of the proceeding and the decision will be rendered in English.

A. Identical or Confusingly Similar

The Complainant has established rights in the INTESA SANPAOLO trademark.

The disputed domain name <intensasanpaolo.net> consists of the mark INTESA SANPAOLO, with the sole addition of the letter “n” and the generic Top-Level Domain “.net”.

The addition in the disputed domain name of the letter “n” is not enough to avoid the confusing similarity with the renowned INTESA SANPAOLO trademark.

This Panel agrees with the Complainant’s assertion that this is indeed a classic case of “typosquatting”.

Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark INTESA SANPAOLO in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.

Finally, this Panel agrees with the previous panel’s finding in Calvin Klein Trademark Trust and Calvin Klein Inc. v. Wang Yanchao, WIPO Case No. D2014-1413, that “the Complainant and its CALVIN KLEIN marks enjoy a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with men’s and women’s apparel, fragrances, accessories, and footwear products and is a registered trademark in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the CALVIN KLEIN marks [are] not one[s] that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant”.

The same concept applies to the present case: the INTESA SANPAOLO mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. This is especially true considering that the Respondent is presumably an Italian national who is also residing in Italy and as such he cannot ignore the Complainant and its renowned trademark and activities.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the INTESA SANPAOLO mark when he registered the disputed domain name.

In fact, the Complainant’s trademark is a fanciful name with no meaning. It has been registered and used for many decades and thus it long predates the disputed domain name’s registration. Therefore, in the absence of evidence to the contrary, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business, and that the Respondent must have had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name, with respect to the use of the disputed domain name.

Moreover the Panel notes the following:

An inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has never replied to the Complainant’s cease-and-desist letters. Indeed, owing to the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in the pre-action communications and in this proceeding, it is reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain names he would have responded.

Further inference of bad faith is then given by the fact that the disputed domain name represents a clear case of “typosquatting”. As observed in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011, “Typosquatting is inherently parasitic and of itself evidence of bad faith”.

Finally, the Panel finds that the passive holding of the disputed domain name is further evidence of bad faith registration and use.

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.

Therefore, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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, <intensasanpaolo.net>, be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: July 19, 2016