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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Banca Intesa S.p.A v. Roshan Wickramaratna

Case No. D2006-0215

 

1. The Parties

The Complainant is Banca Intesa S.p.A, Milan, Italy, represented by Studio Legale Perani, Italy.

The Respondent is Roshan Wickramaratna, Den Bosch, Netherlands.

 

2. The Domain Name and Registrar

The disputed domain name <bancaintesa-online.com> is registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2006. On February 20, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On February 21, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2006.

The Center appointed Stefan Naumann as the Sole Panelist in this matter on April 1, 2006. 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

A. Complainant

On February 15, 2006, Respondent registered the domain name <bancaintesa-online.com>. Within 48 hours, Complainant filed a complaint with the Center.

Complainant declares that it is a leading Italian banking group and a protagonist in the European financial field.

Complainant owns the following five trademarks amongst others:

- Italian trademark BANCA INTESA (number 818 814) filed on December 18, 1997, and currently registered;

- Community trademark BANCA INTESA (number 779 793) filed on March 24, 1998, and currently registered;

- Italian trademark INTESA & device (number 816 033) filed on April 9, 1998, and currently registered;

- Community trademark INTESA (number 2 803 773) filed on August 7, 2002, and currently registered;

- United States trademark INTESA (number 2 894 502) filed on April 23, 2003, and currently registered;

The “Banca Intesa” trademarks designate products and services in classes 9, 16, 36, 38, 41 and 42.

Complainant argues that Respondent’s domain name is confusingly similar to Complainant’s “Banca Intesa” trademarks, and that the addition of the common or descriptive term “online” does not influence the assessment of similarity. According to Complainant, Respondent has no rights or legitimate interest in the domain name <bancaintesa-online.com> because Respondent has not and cannot possibly demonstrate any of the circumstances enumerated under Paragraph 4(c) of the Policy. In particular, the domain name is not used for a good faith offering of goods or services, Respondent was not known by the name Banca Intesa prior to the registration of the domain name, and Respondent is not authorized or licensed to use Complainant’s trademarks.

Complainant does not expressly set forth why it believes that Respondent registered the domain name in bad faith. Instead, Complainant appears to consider that Respondent registered the domain name in bad faith because he uses it in bad faith.

B. Respondent

The Respondent did not reply to Complainant’s claims.

 

6. Discussion and Findings

Complainant has established that it has acquired trademark rights in the term “Banca Intesa” and that these rights are prior to the registration of the litigious domain name.

A. Identical or Confusingly Similar

Under general trademark law principles, the addition of common or descriptive terms to a distinctive sign does not diminish the risk of confusion. In the present matter, Respondent added the term “online” to the term “Bancaintesa” which is phonetically identical and visually identical except for a space between “banca” and “intesa” to the Complainant’s BANCA INTESA trademarks.

The Panel agrees with Complainant that the domain name <bancaintesa-online.com> is confusingly similar to Complainant’s BANCA INTESA trademarks, and considers that the addition of the descriptive term “online” does not diminish the distinctiveness of the term BANCA INTESA within the disputed domain name. Likewise, the absence of a space between the terms “banca” and “intesa” in no way diminishes the risk of confusion where the terms are used as a domain name.

The Panel therefore finds that the domain name <bancaintesa-online.com> is confusingly similar to Complainant’s Banca Intesa trademarks.

B. Rights or Legitimate Interests

In order to establish that he has legitimate rights in the domain name <bancaintesa-online.com>, Respondent could attempt to demonstrate his preparations to use, or actual use of the domain name, or of a name corresponding to the domain name, in connection with a bona fide offering of goods or services, or that he has been commonly known by the domain name or is making a legitimate non-commercial or fair use thereof without intent of commercial gain and without misleadingly diverting consumers or tarnishing the trademarks. As the Respondent failed to submit a Response, none of these elements have been shown to exist.

On the other hand, the evidence submitted by Complainant shows that Respondent registered the domain name on February 15, 2006, and on the same day set up a website that imitates Complainant’s website and requests users to provide information about their bank account, passwords etc. In the absence of any indication to the contrary, this suggests that Respondent could be attempting to lure internet users into thinking that they are dealing with the Complainant.

The Panel therefore finds that the Respondent has no right or legitimate interest in the domain name <bancaintesa-online.com>.

C. Registered and Used in Bad Faith

For Complainant to prevail, it must be shown that the domain name at issue was registered and used in bad faith.

In the present matter, the use of the term “bancaintesa-online” for a website that imitates the online banking website of Complainant, and that attempts to persuade users to provide information about their bank accounts and passwords under the pretense of preventing fraud, is clearly a bad faith use with the meaning of the Rules. This use could potentially constitute a criminal violation, but this question is outside the scope of the present administrative proceedings.

As the bad faith use began on the same day on which the domain name was registered, the Panel concludes that Respondent both registered and used the domain name <bancaintesa-online.com> in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <bancaintesa-online.com> be transferred to the Complainant.

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Stefan Naumann
Sole Panelist

Dated: April 14, 2006