WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Ekkert Ida

Case No. D2018-2207

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 Ekkert Ida of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <3561623intesasanpaolo.info> (the “Disputed Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On September 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 2018, 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. On October 23, 2018 the Center sent an email communication in English and Russian in regard to the language of the proceedings. On October 24, 2018, the Complainant requested English to be the language of the proceedings. The Respondent did not comment on the language issue.

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, and the proceedings commenced on October 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2018.

The Center appointed Mariya Koval as the sole panelist in this matter on November 26, 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 is one of the leading banking groups, which was formed by the merger of Banca Intesa and Sanpaolo IMI in 2007. The Complainant is among the top banking groups in Europe and has a strategic international presence, with more than 1,000 branches and 7.6 million customers and an international network of specialists in support of corporate customers across 26 countries. Today the Complainant is one of the leaders in Italy in all business areas (retail, corporate, and wealth management) which offers its services to 11.9 million customers through a network of approximately 4,800 branches distributed throughout the country with market shares no lower than 16% in most Italian regions.

The Complainant owns numerous registrations for the INTESA SANPAOLO trademark (the “INTESA SANPAOLO Trademark”) around the world, including, but not limited to:

- International registration No. 920896, registered on March 7, 2007 in respect of goods in classes 9, 16 and services in classes 35, 36, 38, 41 and 42;

- European Union Trademark No. 005301999, registered on June 18, 2007, in respect of services in classes 35, 36 and 38;

- European Union Trademark No. 005421177, registered on November 5, 2007, in respect of goods in classes 9, 16 and services in classes 35, 36, 38, 41 and 42.

The Complainant, having a significant online presence, operates a large number of domain names with incorporation of the INTESA SANPAOLO Trademark, namely:

- <intesasanpaolo.com> - registered on August 24, 2006
- <intesasanpaolo.org> - registered on September 8, 2006
- <intesasanpaolo.eu> - registered on August 26, 2006
- <intesasanpaolo.info> - registered on September 8, 2006
- <intesasanpaolo.net> - registered on September 1, 2006
- <intesasanpaolo.biz> - registered on September 8, 2006
- <intesa-sanpaolo.com> - registered on August 26, 2006
- <intesa-sanpaolo.org> - registered on November 13, 2006
- <intesa-sanpaolo.eu> - registered on September 2, 2018
- <intesa-sanpaolo.info> - registered on November 13, 2006
- <intesa-sanpaolo.net> - registered on November 13, 2006
- <intesa-sanpaolo.biz> - registered on November 13, 2006

The Disputed Domain Name was registered on July 29, 2018. At the date of this decision, the Disputed Domain Name resolves to a page which warns users that there is a “Deceptive site ahead” and that “attackers on 3561623intesasanpaolo.info may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Disputed Domain Name is almost identical to its INTESA SANPAOLO Trademarks. The Complainant further contends that the Disputed Domain Name reproduces its Trademark in its entirety with the mere addition of the numbers “356123” and that such difference is clearly a minor variation of the Complainant’s INTESA SANPAOLO Trademark.

The Complainant also alleges that the Respondent has no rights in the Disputed Domain Name since the Respondent has not been authorized or licensed to use the Complainant’s Trademark and the Respondent is not commonly known by the Disputed Domain Name.

The Complainant further asserts that the Disputed Domain Name was registered in bad faith in view of the fact that the INTESA SANPAOLO Trademark is distinctive and well-known around the world. The Complainant also asserts that the fact the Respondent has registered the Disputed Domain Name, which is confusingly similar to the Complainant’s Trademark, indicates that the Respondent had knowledge of the Complainant’s Trademark at the time of its registration.

Also the Complainant’s supports its assertions regarding registration of the Disputed Domain Name in bad faith by the fact that the Disputed Domain Name is not used for any bona fide offerings, even more it has been used (at the time of sending a cease and desist letter to the Respondent by the Complainant’s representative) for redirecting Internet users to a webpage that reproduced the graphic and layout of the Complainant’s competitor ING Direct’s home banking webpage, that, in its turn, is a “phishing”.

The Complainant asserts that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, 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 his website.

Finally, the Complainant contends that it sent a cease and desist letter to the Respondent on August 7, 2018 with request to immediately shut down the website connected to the Disputed Domain Name, however the Respondent did not reply to the letter that also supports bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(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 by the Respondent in bad faith.

6.1. Language of Proceedings

Paragraph 11 of the Rules sets out that the language of the proceeding shall be the language of the Registration Agreement unless the Panel in its discretion determines otherwise.

The Registrar has confirmed that the language of the Registration Agreement is Russian.

The Complainant filed the Complaint in English and requested English be the language of this administrative proceeding on the following grounds:

- the Complainant is an Italian company, while the Respondent is a Russian private person. Consequently, the present Complaint was written in English, an international language comprehensible to a wide range of Internet users worldwide;

- the Disputed Domain Name was connected to a webpage reproducing the graphic and layout of the Complainant’s competitor ING Direct’s home banking webpage (Annex F of the Complaint) with Italian texts and contents that make it clear that the Respondent is confident in other languages than Russian.

The Respondent, having received communication of this proceeding in both English and Russian, did not make any submissions with respect to the language of the proceeding and did not file any response.

According to paragraph 10(c) of the Rules “the Panel shall ensure that the administrative proceeding takes place with due expedition”.

Having examined all the circumstances of this case and taking into consideration the fact that neither the Complainant nor its legal representatives have knowledge of the Russian language and also the fact that the Respondent did not participate in this proceeding in any way, requesting the Complainant to translate the Complaint into Russian would result in unfair significant delay of the proceeding and additional costs to the Complainant. In light of the foregoing the Panel determines that English be the language of this administrative proceeding.

6.2. Substantive Matters

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established its rights in the INTESA SANPAOLO Trademark due to long use and various registrations in various jurisdictions. Previous UDRP panels have also acknowledged the INTESA SANPAOLO Trademark as well-known, see e.g., Intesa Sanpaolo S.p.A. v. Croitoru Daniel, WIPO Case No. D2012-1113; Intesa Sanpaolo S.p.A. v. ZhangXin, WIPO Case No. D2016-2643.

The Disputed Domain Name incorporates the Complainant’s INTESA SANPAOLO Trademark in its entirety with addition of the numbers “3561623”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

The Panel considers that addition of the numbers “3561623” to the Complainant’s well-known Trademark does not eliminate the confusing similarity between the Disputed Domain Name and the Complainant’s Trademark. The generic Top-Level-Domain (“gTLD”) “.com” is not generally taken into account for the purposes of assessing confusing similarity under the Policy.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s INTESA SANPAOLO Trademark. Consequently, the Panel concludes that the Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

According to section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

- there is no any evidence that the Respondent, being a natural person, is commonly known by the Disputed Domain Name;

- the Respondent has never obtained a license or authorization from the Complainant to use its well-known INTESA SANPAOLO Trademark;

- the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s Trademark. Conversely, according to the evidence, presented by the Complainant (Annex F to the Complaint), at the time of sending the cease and desists letter by the Complainant’s representative to the Respondent, the Disputed Domain Name resolved to the home banking webpage of one of the Complainant’s competitors. Presumably, the main purpose of the Respondent was to use the website under the Disputed Domain Name for stealing personal information from the Internet users. Currently, the Disputed Domain Name resolves to a “deceptive” website. Therefore, it would appear that the Disputed Domain Name has been used for a phishing or malware website. This cannot in any case be considered as use or preparations for use of the Disputed Domain Name in connection with a bona fide offering of goods or services.

The Panel considers it is obvious that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Name, taking into account the notoriety and reputation of the Complainant’s INTESA SANPAOLO Trademark and the fact that the Respondent registered the Disputed Domain Name only in 2018.

In view of the foregoing, the Panel finds that the Respondent has no rights in the Disputed Domain Name and that the Complainant fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In this case, the Respondent has registered the Disputed Domain Name, which completely incorporates the Complainant’s INTESA SANPAOLO Trademark with the numbers “3561623” that obviously creates a likelihood of confusion making the Internet users think that the Disputed Domain Name is related to the Complainant. Therefore, taking into account the notoriety and reputation of the Complainant’s Trademark and that the Disputed Domain Name was registered 10 years after the Complainant’s first trademark registration, the registration of the Disputed Domain Name is clearly intended to mislead and divert consumers to the website under it.

The Respondent’s establishment of a phishing website under the Disputed Domain Name, which, in turn, completely incorporates the Complainant’s Trademark, is a demonstrative example of bad faith under the Policy, see e.g. Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471 (The un-opposed allegation of phishing, and the evidence submitted in support of phishing, combined with the likelihood of confusion, is sufficient evidence of bad faith).

According to section 3.1.4 of the WIPO Overview 3.0 panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. In this case the Disputed Domain Name is confusingly similar to the Complainant’s well-known Trademark and was obviously registered to attract, for commercial gain, the Internet users to the website under it by creating a likelihood of confusion with the Complainant’s Trademark and business.

Furthermore, the Respondent did not respond to the Complainant’s cease and desist letter, that also evidences the Respondent’s bad faith registration and use of the Disputed Domain Name, see e.g. Fluor Corporation v. Xin Meng, Mengxin, WIPO Case No. D2010-1052.

At the date of this decision, the website under the Disputed Domain Name resolves to a “deceptive website”. Therefore, taking into account all the circumstances of this case and the well-known status of the Complainant’s INTESA SANPAOLO Trademark and consequently its high distinctive nature, the Panel concludes that the current use (and previous use) of the Disputed Domain Name by the Respondent also supports the finding of the Respondent’s bad faith.

The Panel considers it is obvious that the Respondent, having registered and used the Disputed Domain Name, which is confusingly similar to the Complainant’s well-recognized Trademark, primarily intended to disrupt the Complainant’s business. In view of the absence of any evidence to the contrary and that the Respondent did not file any rebutment, the Panel concludes the Respondent has registered and is using the Disputed Domain Name in bad faith.

In light of the above the Panel holds that the Complaint fulfils the third condition of paragraph 4(a) 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, <3561623intesasanpaolo.info> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: December 10, 2018