WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Domain Administrator, See PrivacyGuardian.org / Mesut Erdogan

Case No. D2018-0570

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 Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America (“United States”) / Mesut Erdogan of Ankara, Cankaya, Turkey.

2. The Domain Name and Registrar

The disputed domain name <intesainvestbeograd.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2018. On March 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2018, the Registrar 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 April 18, 2018, 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 March 20, 2018.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2018.

The Center appointed Torsten Bettinger as the sole panelist in this matter on April 23, 2018. 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 describes itself as the leading Italian banking group and one of the top banking groups in the Eurozone, with a market capitalization exceeding EUR 46,4 billion. It has a network of approximately 4,800 branches and a strong presence in Central-Eastern Europe with a network of approximately 1,100 branches and over 7,6 million customers. The Complainant is present in 26 countries, including the United States, Russian Federation, China and India.

One of the Complainant’s subsidiary companies is named “Banca Intesa Beograd” with headquarters in Belgrade. According to its most recent annual financial report submitted to Serbian Economic Register Agency, Banca Intesa Beograd has 3,060 employees and it posted an annual profit of RSD 8,607,525,000 (approximately EUR 75.08 million).

The Complainant is the owner, among others, of the following registrations and applications for the trademarks INTESA, INTESA INVEST BEOGRAD, and BANCA INTESA BEOGRAD (enclosed as Annex E):

- International trademark registration No. 793367 for INTESA, registered on September 4, 2002 with class 36;

- United States trademark registration No. 4196961 for INTESA, filed on June 30, 2011 and registered on August 28, 2012, for international class 36;

- Serbian trademark registration No. 74254 for INTESA INVEST BEOGRAD, filed on July 12, 2017 and registered on February 20, 2018, for classes 9, 16, 35, 36, 41 and 42;

- European Union trademark registration No. 017197443 for INTESA INVEST AD BEOGRAD, filed on September 12, 2017 and registered on January 24, 2018, for classes 9, 16, 35, 36, 41 and 42;

- Serbian trademark registration No. 74371 for INTESA INVEST AD BEOGRAD, filed on September 22, 2017 and registered on March 6, 2018, for classes 9, 16, 35, 36, 41 and 42;

- European Union trademark registration No. 004717674 for BANCA INTESA BEOGRAD, filed on November 14, 2005, and registered on October 17, 2006 for classes 36 and 38; and

- European Union trademark application No. 017471723 for figurative mark INTESA INVEST BEOGRAD filed on November 13, 2017 (and since registered March, 30, 2018) for classes 9, 16, 35, 36, 41 and 42.

In addition, the Complainant is the registered owner of the following domain names: <intesa.com>, <intesa.info>, <intesa.org>, <intesa.biz>, <intesa.us>, <intesainvest.it>, <intesainvest.eu>, <intesainvest.rs>, <bancaintesabeograd.com>, <bancaintesabeograd.net>, <bancaintesabeograd.org>, <bancaintesabeograd.biz>, <bancaintesabeograd.eu>, <bancaintesabeograd.rs>, <bancaintesabeograd.co>, <bancaintesabeograd.it>, <intesaambeograd.com>, <intesaambeograd.eu>, <intesaambeograd.rs> and <intesaambeograd.it>.

The Respondent registered the disputed domain name on November 13, 2017. The Complainant provided evidence that the Respondent has used the disputed domain name for a website which offered the disputed domain name for sale for USD 990.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is identical to the Complainant’s INTESA INVEST BEOGRAD trademark application and confusingly similar to Complainant’s INTESA trademark and BANCA INTESA BEOGRAD.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submits that:

- it has never licensed nor otherwise permitted the Respondent to use the INTESA mark or use a domain name that incorporates or is similar to the INTESA mark;

- to the best of the Complainant’s knowledge, the Respondent is not commonly known as INTESA INVEST BEOGRAD;

- the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that the Respondent was aware of Complainant’s trademarks at the time of registration of the disputed domain name as the trademark INTESA is distinctive and well known all around the world.

The Complainant further contends that the Respondent has registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant for a valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name pursuant to paragraph 4(b)(i) of the Policy, as the disputed domain name has been used to resolve to a website which offers the disputed domain name for sale for USD 990.

The Complainant argues that the fact that there has been no affirmative or direct offer to the Complainant or one of its competitors does not prevent a finding of bad faith. Furthermore, the Complaint asserts that paragraph 4(c) of the Policy does provide a non-exhaustive list of circumstances that constitute bad faith and that it is consensus view of UDRP panels that bad faith can been found where the disputed domain name corresponds to a well-known trademark and there is no conceivable use that could be made of the domain name.

The Complainant also points to the fact that the disputed domain name has been registered exactly on the same date on which the Complainant filed the application for the European Union trademark No. 017471723 for INTESA INVEST BEOGRAD.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well established that the test of identical or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc andBritish American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; see also section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the disputed domain name contains Complainant’s trademark INTESA INVEST BEOGRAD in its entirety. It has been long established under the UDRP decisions that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net”, and “.org” is typically not to be taken into account when assessing the issue of identical and confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).

For the foregoing reasons the Panel concludes that the disputed domain name <intesainvestbeograd.com> is identical to the Complainant’s trademark INTESA INVEST BEOGRAD in which Complainant has exclusive rights.

B. Rights or Legitimate Interests

The Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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 Complainant has asserted that it never licensed or permitted the Respondent to use the Complainant’s INTESA INVEST BEOGRAD trademark, the Respondent has no trademark rights that correspond to the disputed domain name, and the Respondent has not been commonly known by the disputed domain name.

Furthermore, the Complainant has provided evidence that the disputed domain name was being used for a website which contained no content but merely offered the domain name for sale for USD 990.

These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Given that the Respondent has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests, the Panel concludes that the Complainant has also satisfied the second element of the Policy set forth by paragraph 4(a)(ii).

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 the disputed domain name in bad faith pursuant to Paragraph 4(a)(iii) of the Policy:

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

(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 the Respondent’s website or location.

The Panel notes that the Respondent’s public offer of the disputed domain name for sale does not fall within the example of evidence of bad faith in paragraph 4(b)(i) of the Policy which in this Panel’s view requires a direct offer to the complainant or one of its competitors. An offer to the general public therefore falls short of the specific requirements of paragraph 4(b)(i) of the Policy.

However, whether or not paragraph 4(b)(i) applies, in circumstances such as the present case the passive holding and general offer for sale of the disputed domain name is sufficient evidence of bad faith.

Although the circumstances listed in paragraph 4(b) are all phrased in terms of affirmative actions by the Respondent, it is by now well accepted that the passive holding of a website, in certain circumstances, can constitute bad faith use under the Policy. See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3.

While panels will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:

(i) the degree of distinctiveness or reputation of the complainant’s mark,

(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use,

(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and

(iv) the implausibility of any good faith use to which the domain name may be put. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also WIPO Overview 3.0, section 3.3.)

The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.

The Complainant’s highly distinctive trademark BANCA INTESA BEOGRAD is long established and widely known. The trademark is distinctive and has no generic or descriptive meaning.

It is therefore inconceivable that that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademarks. This assumption is also supported by the fact that the Respondent registered the disputed domain name exactly on the same date the Complainant filed an application for the European Union trademark No. 017471723 for the words INTESA INVEST BEOGRAD.

Given that the Complainant’s mark INTESA INVEST BEOGRAD is solely connected with the Complainant and does not have any generic or descriptive meaning, the disputed domain name is also not susceptible to being used in a good faith generic or descriptive sense.

Therefore, though not precisely within the example of evidence in bad faith set out in paragraph 4(b)(i) of the Policy, the Panel concludes that the registration and the offering for sale to the general public for USD 990 of the disputed domain name constitutes bad faith registration and use of the domain name and that therefore the Complainant has satisfied its burden under 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 <intesainvestbeograd.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: May 4, 2018