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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Banca Intesa S.p.A. v. Moshe Tal

Case No. D2006-0228

 

1. The Parties

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

The Respondent is Moshe Tal, Emeryville, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <online-bancaintesa.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 22, 2006. On February 22, 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 27, 2006, the registrar, Melbourne IT confirmed inter alia, that it is the current registrar of the domain name <online-bancaintesa.com> and that the disputed domain name is registered in the Respondent’s name. It also provided the contact details for the administrative 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 March 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2006.

The Center appointed Pravin Anand as the sole panelist in this matter on April 7, 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

The facts stated in the Complaint by the Complainant Banca Intesa S.p.A are as follows:

1) Banca Intesa S.p.A is a leading Italian banking group and also one of the prominent banking institutions in the European Banking arena. The Complainant was incorporated in 1998, as a result of the integration of Cariplo and Banco Ambrosiano Veneto. In 2001, Banca Commerciale Italiana merged with Banca Intesa and the new entity was called INTESABCI. On December 17, 2002, the Complainant was renamed BANCA INTESA.

2) The Complainant has a significant domestic presence and a system of alliances aimed at managing specific international business areas. The Complainant has more than 57,000 employees and 3,720 branch offices in Italy and around the world and 13 million clients worldwide.

3) The Complainant is the owner of several trademark registrations and applications for BANCA INTESA and INTESA. The Complainant’s registered trademarks are as follows:

- BANCA INTESA Italian trademark registration no. 818814 filed on December 18, 1997, and granted on June 20, 2000, in classes 9, 16 and service mark classes of 36, 38, 41 and 42.

- BANCA INTESA European Community trademark registration no. 779793 filed on March 24, 1998, and granted on November 15, 1999, in classes 9 and 16 and service mark classes 36, 38, 41 and 42.

- INTESA & device Italian trademark registration no. 816033 filed on April 9, 1998, and granted on May 30, 2000, in classes 9 and 16 and service mark classes 36, 38, 41 and 42.

- INTESA European Community trademark registration no. 2803773 filed on August 7, 2002, and granted on November 17, 2003, in service mark class 36.

- INTESA United States trademark registration no. 2894502 filed on April 23, 2003, and granted on October 19, 2004, in service class 36.

4) According to Banca Intesa 2005 half-yearly result, dated September 5, 2005, the Complainant has engaged in a range of commercial activities in various countries.

From the above and also the evidence filed by the Complainant it becomes apparent that the Complainant is a leading banking group in Italy and one of the most prominent banking institutions in the European Union.

Further other than the particulars of the Whois search conducted for the domain name <online-bancaintesa.com> on February 21, 2006, of Internic and on the MelbourneIT database (as provided in Annex A of the Complaint) there is no evidence in the case file concerning the background of the Respondent and his business.

 

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are summarized briefly hereunder:

1) The Complainant has rights in the trademark and service marks BANCA INTESA and INTESA. Additionally the domain name <online-bancaintesa.com> is identical in parts and confusingly similar as a whole to the Complainant’s trademark and service mark BANCA INTESA and INTESA.

2) Additionally the domain name <online-bancaintesa.com> is very similar to the address for Banca Intesa’s official website “www.bancaintesa.it”.

3) The sole difference is in the presence of the prefix “online” which is devoid of any distinctive power and if adopted in connection with a domain name increases the confusion on the Internet.

4) The Respondent is not the owner of a trademark corresponding to the disputed domain name. The Complainant has a worldwide trademark watching service on the words “banca intesa” and “intesa” and no trademark covering the words “banca intesa” and “intesa” in the name of the Respondent has been detected.

5) Further the domain name does not correspond to the business name of the Respondent and the Respondent is not commonly known as “ONLINE- BANCAINTESA”.

6) The Respondent has registered and used the domain name in bad faith as:

- The Respondent has attempted to attract Internet users, for commercial gain to its website, by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of the website.

- The disputed domain name <online-bancaintesa.com>, which is linked to a website, shows a page which is almost identical to the home page of Banca Intesa’s official website and is a slavish copy of the Complainants website. It is the Complainants contention that the sole purpose of this is to collect the data of people who reach the website.

- Further the Complainant states that since it has-been a victim of Phishing recently and that the Respondent has also registered the disputed domain name as a “Phishing” scheme to induce and divert Complainants legitimate customers to the Respondents website to steal their money.

B. Respondent

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

 

6. Discussion and Findings

The Complainant has to prove each of the following elements:

1) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2) That the Respondent has no rights or legitimate interests in respect of the domain name; and

3) That the domain name has been registered and used in bad faith.

In the case of a default by a party, Paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement, under the Rules, the Panel shall draw such inferences there from, as it considers appropriate.

In this case, the Respondent has not submitted a Response and the Panel will therefore have to operate on the basis of factual circumstances in the Complaint as well as the evidence to support it.

Accordingly the Panel finds that:

A. Identical or Confusingly Similar

The Complainant has exclusive right in the trademark BANCA INTESA and INTESA. Further the addition of the generic term “online” to Complainant’s trademarks does not make the domain name dissimilar to the trademarks in which the Complainant has rights. See Prada S.A. v. Danielle Terraglia, WIPO Case No. D2004-0870 and Dr. Grandel GmbH v. Drg Randel Inc, WIPO Case No. D2005- 0829.

Further the addition of the hyphen “-” between the generic term “online” and the Complainant’s trademark is of no significance. See Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923.

Internet users will pay little or no regard as to the term “online” or the addition of the hyphen when comparing it to the Complainant’s trademark.

Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainants trademark

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name as:

i) The Respondent is not known by the business name “Banca Intesa” or “Intesa” and the disputed domain name does not correspond to a trademark registered in the name of the Respondent.

ii) The Respondent (as a business, individual or other organization) has not been commonly known by the domain name.

iii) The Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain and is misleadingly diverting consumers.

As the Respondent has not presented any evidence rebutting this prima facie showing the Panel finds that the Respondent does not have any rights or legitimate interest in the domain name.

C. Registered and Used in Bad Faith

The Complainant has grounds for the Panel to ascertain that the disputed domain name was registered and is being used in bad faith:

i) It has been contended by the Complainant that the domain name at issue was registered and is being used in bad faith to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainants mark as to it’s source, sponsorship, affiliation, or endorsement.

ii) The website to which the disputed domain name <online-bancaintesa.com> resolves to is very similar to the Complainant’s official website “www.bancaintesa.it”.

iii) The text on the website to which the disputed domain name

<online-bancaintesa> resolves, gives an impression that it is in some way related to the official website of the Complainant and entices the Internet user to access the website of the disputed domain name and to enter his personal information in order to gain access to the banking facility which is being operated by the Complainant.

iv) Further the Complainant alleges that the Respondent’s conduct amounts to “Phishing”. It appears that the Respondent is engaged in “Phishing”. The expression “Phishing” comes from the word “fishing” whereby bait is set in the hope that a fish will bite it. See National Association of Software and Service Companies v. Ajay Sood. (2005) F.S.R. 38.

v) The Complainant has been a victim of various “Phishing” attacks in recent history. Also the website to which the disputed domain name

<online-bancaintesa.com> resolves, states “INTESA ONLINE: CLIENT VERIFICATION ONLINE. Intesa online is the easier and faster way to enter in Bank, through Internet, Mobile, Phone and Bancomat. Due to the last criminal activities carried out on our Web site, we start a verification program of the clients for the security of our system and you client. Therefore, we ask you to enter in your client for verify your authenticity for the security of your client and of the others”.

vi) “Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user Ids, passwords, etc. A fake website is created that is similar to that of a legitimate organization, typically a financial institution such as a bank or insurance company and this information is used for identity theft and other nefarious activities. See Halifax Plc. v. Sontaja Sanduci, WIPO Case No. D2004-0237 and also CarrerBuilder LLC v. Stephen Baker, WIPO Case No. D2005-0251.

vii) Additionally the Panel believes that “Phishing” in this current instance would amount to bad faith as affecting or tarnishing the image of the organization whose name, website design and layout has wrongly been used. See also National Association of Software and Service Companies v. Ajay Sood. (2005) F.S.R. 38.

The following circumstances collectively as well as severally establish that the domain name is registered and used in bad faith:

- The Respondent has attempted to attract for commercial gain visitors to his website by creating a likelihood of confusion with the Complainants trademark.

- The website to which the disputed domain name resolves, is a slavish copy of the Complainants official website.

- The Respondent appears to be engaged in Phishing.

The Panel therefore finds that the domain name has been registered and used in bad faith.

 

7. Decision

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

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Pravin Anand
Sole Panelist

Dated: April 21, 2006