ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Oscar Esquivel Carmona / Registration Private, Domains By Proxy, LLC
Case No. D2015-1238
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 Oscar Esquivel Carmona of Alajuela, Costa Rica / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2015. On July 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2015, 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 July 23, 2015 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 July 24, 2015.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2015.
The Center appointed Andrea Dawson as the sole panelist in this matter on August 25, 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
The Complainant is a leading Italian banking group.
The Complainant was formed as the result of a merger between Banca Intesa and Sanpaolo, two of the top Italian banking groups.
The Complainant is commonly known among its consumers as “Intesa”.
The Complainant has a strong presence in Central-Eastern Europe with a network of approximately 1,400 branches and over 8.3 million customers.
Most of the Complainant’s subsidiaries in Italy share the verbal portion “Cassa di Risparmio” (the Italian translation for “Saving Bank”), or its acronym “CR”, in their name.
The Complainant is the owner of the following trademark registrations (see Annex E of the Complaint):
International trademark registration No.793367 INTESA, registered on September 4, 2002;
International trademark registration No.831572 BANCA INTESA, registered on June 24, 2004;
Community trademark registration No.2803773 INTESA, registered on November 17, 2003;
Community trademark registration No.7580103 BANCA CR FIRENZE, registered on September 9, 2009;
Community trademark registration No.10772358 CR PISTOIA E LUCCHESIA, registered on August 30, 2012;
Community trademark registration No.7229594 CR VENETO, registered on March 31, 2009.
The Complainant is the owner of the following domain names: , ,
, , , and .
The disputed domain name was registered on November 28, 2012.
5. Parties’ Contentions
The Complainant states that it is obvious that the disputed domain name is confusingly similar to the Complainant’s trademarks, considering that it exactly reproduces the trademark.
The Complainant adds that the disputed domain name draws the attention of users to the
mark INTESA (the main portion), together with the syllable “cr”, which is an abbreviation for “Cassa di Risparmio” (“Saving Bank”) and, thus, also a direct reference to the Complainant’s financial and banking field of activity.
The Complainant further indicates that the Respondent nor anyone else has rights in the disputed domain name, since the Respondent has nothing to do with the Complainant. In fact, any use of the trademark INTESA has to be authorized by the Complainant. The Respondent has not been authorized or licensed to use the disputed domain name.
The Complainant also states that the disputed domain name does not correspond to the name of the Respondent and, to the best of its knowledge, Registration Private, Domains By Proxy, LLC (or any other underlying registrant) is not commonly known as “Intesacr”.
The Complainant indicates that the consensus view of UDRP panels is that passive holding of a domain name may, in appropriate circumstances, be consistent with a finding of bad faith. However, UDRP panels have tended to make such findings in circumstances in which, for example, 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.
The Complainant finally indicates that the disputed domain name is not used for any bona fide offerings, and that it is not connected to any active websites. The Complainant then adds that 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.
Consequently, in view of the above-mentioned circumstances, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks; the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests that the Panel order the transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Complainant has been able to demonstrate that it has rights to the trademark INTESA.
The disputed domain name consists of the term “intesa”, with the addition of the letters “cr”. It is perfectly clear in this circumstance that the addition of letters to the trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.
Furthermore, the addition of the letters used in this particular case actually only add confusion, instead of distinctiveness, since these letters, “c” and “r”, can easily provide a false message that the Respondent may be affiliated in some way with the Complainant, since the letters “cr” are an acronym for the Italian term for saving bank (Cassa di Risparmio), a service provided by the Complainant.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name, in the absence of which the panel is entitled to rely on the complainant’s prima facie case that the respondent lacks such rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; see also Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704).
The Panel has reviewed the evidence provided by the Complainant and can conclude that the Respondent was not making a legitimate use of the disputed domain name, since none of the following circumstances, in particular but without limitation, have been found by this Panel as:
The Respondent is not using or preparing to use the disputed domain name with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel was able to conclude with the evidence offered by the Complainant that the website did not resolve to any active website. (See Annex F of the Complaint).
The Respondent has not been commonly known by the disputed domain name. The Panel also notes that the Complainant has indicated that it has never authorized the Respondent to use the INTESA trademark.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the Complainant’s trademark and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademark at the time of the registration of the disputed domain name.
It is unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain name, since the Complainant owns numerous trademark registrations that are well known and such trademark is clearly a coined term since it has no meaning in any language to the knowledge of this Panel; therefore, in the Panel’s assessment, it is unlikely to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name. Furthermore the Panel finds that it is not possible to conclude that the Respondent did not have the Complainant’s trademark in mind when registering the disputed domain name, especially when the letters added after the trademark itself are the letters “c” and “r”, which to Intesa customers and/or Italian speaking Internet users, the letters “cr” refer to a banking acronym “Cassa di Risparmio”, precisely the services provided by the Complainant and is regional subsidiaries. It cannot be a mere coincidence that the disputed domain name includes the name of a bank and banking acronyms.
As the result of the above, the Panel accepts the arguments of the Complainant that the disputed domain name was registered and is being used in bad faith under the totality of the circumstances (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003),
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; consequently, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 be transferred to the Complainant.
Date: September 8, 2015