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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Caribbean Online International Ltd.

Case No. D2007-0816

 

1. The Parties

The Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, represented by Studio Legale Perani, Italy.

The Respondent is Caribbean Online International Ltd., Nassau, Bahamas.

2. The Domain Names and Registrar

The disputed domain names <bacaintesa.com> and <bancintesa.com> are registered with DomainDoorman, LLC and Capitoldomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2007. On June 20, 2007, the Center transmitted by email to DomainDoorman, LLC and Capitoldomains, LLC a request for registrar verification in connection with the domain names at issue. On June 26, 2007, DomainDoorman, LLC and Capitoldomains, LLC transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. 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 June 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 19, 2007.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on July 31, 2007. 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

The Complainant is a leading Italian Banking Group, which is also internationally active. It is the owner of many trademark registrations, incorporating the name Intesa. As evidenced by copies of the registration certificates, it is in particular the owner of the following trademark registrations:

- Community Trademark registration No. 779793 BANCA INTESA, registered on November 15, 1999 in connection with goods of classes 9, 16, and services of classes 36,38,41 and 42;

- International registration No. 831572 BANCA INTESA, dated June 24, 2004, designating more than 50 countries, including the United States of America, for the following services of class 36: “Insurance, financial affairs, monetary affairs, real estate affairs”.

The Complainant is also the owner of the domain name <bancaintesa.com>, which leads visitors to the home page of Banca Intesa.

B. Respondent

The Respondent registered on January 9, 2007, the domain name <bacaintesa.com> and on February 21, 2007, the domain name <bancintesa.com>. The domain names are connected to (similar) websites that offer links to different goods and services, including links to banking and financial services of competitors (as evidenced by copies of the respective websites).

5. Parties’ Contentions

A. Complainant

The Complainant submits to be the leading Italian banking group and also to belong to the top banking groups in the Euro zone. Therefore it considers its trademark BANCA INTESA to be amongst the most well-known trademarks in the banking field.

The Complainant considers the domain names of the Respondent to be misspellings of its trademark, which differ only by one letter from the trademark BANCA INTESA.

It concludes that the Respondent is engaging in “typosquatting”, a practice that consists in the registration of a domain name which is a slight alphabetical variation of a famous mark. The Complainant therefore submits that (1) the domain names <bacaintesa.com> and <bancintesa.com> are identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain names; (3) the domain names were registered and are being used in bad faith.

B. Respondent

The Respondent has failed to submit any statement. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of the Complainant’s submissions, and all inferences that can reasonably be drawn there from (Rule 14(b) or the Policy).

6. Discussion and Findings

A. Identical or Confusingly Similar

The domain names <bacaintesa.com> and <bancintesa.com> are not identical with the mark BANCA INTESA in which the Complainant has rights. However, the only difference in each case is that one letter of the word “banca” is omitted, thus creating the impression that they are misspellings of the Complainant’s mark (the generic “tld” indicator “.com” cannot be taken into consideration when judging confusing similarity). The omission respectively of the letter “n” in “baca” and the omission of the letter “a” in “banc” is likely to be overlooked and, in view of the close similarity of both words to the common Italian word (for: bank) “banca”, in oral communication the domain names will likely be confused in pronunciation with the Complainant’s mark. Based on general principles of confusing similarity of marks, the domain names <bacaintesa.com > and <bancintesa.com> are therefore nearly identical and clearly confusingly similar to the mark BANCA INTESA, in which the Complainant has rights. Also, when taking into account the particularities of the Internet, confusion will arise. The domain names are typographical variations of the Complainant’s mark and domain name, which are likely to be erroneously typed by Internet users who intend to accede the Complainant’s website under its domain name <bancaintesa.com> and are mistyping it. In view of the use of the domain names made by the Respondent (see above 4B), the Respondent’s domain names < bacaintesa.com > and < bancintesa.com > direct such users to websites offering links, amongst others, to financial services of competitors. Such use is likely to mislead customers into believing that the Respondent is somehow associated with the Complainant (such as affiliated, sponsored or otherwise endorsed).

That such misspelling or typographical variation of a mark is confusingly similar to the Complainant’s mark has repeatedly been held in decisions under the Policy (e.g. Alta Vista Company v. O.F.E.Z., WIPO Case No. D2000-1160; Daimler Chrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover, WIPO Case No. D2000-1272; Dow Jones & Company Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2001-0302).

B. Rights or Legitimate Interests

“Intesa” is not a common word, in which the Respondent might have a legitimate interest. It is a name of the Complainant, which is the distinctive part of its trademark BANCA INTESA. The Respondent has no evident connection or affiliation with the Complainant, who has not consented to the Respondent’s use of the domain names, which are so similar that they give the impression to be a misspelling the Complainant’s mark. The Respondent does not make any use of the domain names for its own legitimate commercial or non-commercial activities, if any. As said before, Respondent’s domain names <bacaintesa.com> and <bancintesa.com> lead to websites, which offer links to different products and services, including financial services of competitors. Such use which as a kind of “postal address” links the visitor to other websites offering competitive products has repeatedly been held not to be a bona fide offering of goods or services. Even if the Respondent does not use its domain names to promote commercial activities of its own, the Panel is satisfied that such use cannot be considered to be non-commercial. It would make no sense for the Respondent to provide links to other websites, if it where not to attract a fee, the more as such arrangements are common. Finally, for the same reason that the Respondent does not promote its own commercial activities, the Respondent has not been able to become known under these domain names.

In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests vis-а-vis the Complainant in the domain names <bacaintesa.com> and <bancintesa.com>.

C. Registered and Used in Bad Faith

For the Complainant to succeed, the Panel must be satisfied that the domain names have been registered and are being used in bad faith.

The Respondent has apparently not attempted to sell the domain names to the Complainant. However, it uses them in a manner which must be considered to be use in bad faith, and at the same time that use is a strong indication that the Respondent has registered its domain names in bad faith.

The Panel finds that the Respondent in all likelihood had knowledge of the Complainant’s mark BANCA INTESA, when it registered the domain names <bacaintesa.com> and <bancintesa.com>. Such conclusion cannot only be drawn from the actual use that the Respondent is making of its domain names, but also from the fact that it chose two apparent misspellings of the Complainant’s mark and domain name <bancaintesa.com>. It cannot reasonably be imagined that the Respondent chose for its domain name a combination of the Complainant’s name Intesa and the spellings “baca” and “banc” instead of the Italian word “banca”, if it had not known the Complainant’s mark and domain name (the very existence of the Complainant’s domain name prevented the Respondent from registering <bancaintesa.com>). This alone is already an indication of registration in bad faith. Taking into account the use which the Registrant is making of its domain names, as described before, and in the absence of any submission of the Respondent to the contrary, the Panel is satisfied that the Respondent has registered the domain names in bad faith, i.e. in order to be able to make that use of its domain names.

As said before, the Respondent has been using the domain names <bacaintesa.com> and <bancintesa.com> as a link to websites which provides as a kind of postal address links to other websites, in order to direct visitors, who are mistyping the Complainant’s domain name, to these websites. By such use the Respondent intentionally attempts to attract Internet users to an on-line location, which creates a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that location. The fact that such confusion may be dispelled, and replaced by annoyance or disgust once the nature of the site is revealed, does not negate the fact of initial confusion, as rightly has been concluded in the decision Royal Bank of Canada v. Personal, WIPO Case No. D2001-0761.

In the absence of any submission of the Respondent, the Panel has no doubt that the Respondent makes that use of his domain names for commercial gain. Thus it is pursuing an activity, sometimes called “typosquatting” (see the above cited decision Dow Jones&Company, Inc. v. John Zuccarini, WIPO Case No. D2001-0302), which must be considered to be bad faith under the Policy. Even if item 4(b)(iv) of the Policy refers to the website or other location of the Respondent, whilst the Respondent uses its domain names primarily in order to revert the visitor to other websites, the Panel considers the circumstances of the case to be evidence of registration and use in bad faith, at least comparable to the circumstances listed in item 4(b)(iv) of the Policy. If one considers the websites, which are appearing when an Internet user types one of the Respondent’s domain names, to be “an other on-line location”, the Respondent’s activity clearly is covered by item 4(b)(iv). Be it as it may, the circumstances as listed in item 4(b)(i) to (iv) are not exhaustive and the Panel is satisfied that the pattern developed by the Respondent is evidence of registration and use in bad faith.

An additional aspect, confirming the conclusion that the Respondent acted in bad faith, is the fact that the Respondent has been part of New Chapter Inc. v. Carribean On line International Ltd, WIPO Case No. D2006-1251; HBH, Limited Partnershipv. Carribean Online International Ltd, WIPO Case No. D2006-1454 and Credit Industriel et Comercial en abrйgй CIC v. Carribean Online International Ltd, WIPO Case No. D2007-0423, where the Panels ordered the transfer of the disputed domain names, detecting bad faith in the registrations. Particularly in the latter case, the Respondent registered as in the present case two misspellings of the Complainant’s trademark.

Such frequent speculation in domain names is further evidence of bad faith (see e.g. Expedia Inc. v. European Travel Network, WIPO Case No. D2001-0329; Allianz AG and Dresdner Bank AG v. MIC, WIPO Case No. D2001-1298).

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 names <bacaintesa.com> and <bancintesa.com> be transferred to the Complainant.

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Gerd F. Kunze
Sole Panelist

Dated: August 10, 2007