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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Maison Tropicale S.A.

Case No. D2007-1396

1. The Parties

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

The Respondent is Maison Tropicale S.A., (Intesesanpaolo-Com-Dom), Anguilla.

2. The Domain Name and Registrar

The disputed domain name <intesesanpaolo.com> is registered with DomainDoorman, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2007. On September 24, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On September 27, 2007, DomainDoorman, LLC transmitted by email to the Center its verification response 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 September 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2007.

The Center appointed P-E H Petter Rindforth as the sole panelist in this matter on October 29, 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.

The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel is conducted in the English language.

4. Factual Background

The Complainant is an Italian banking group formed by the merger of January 1, 2007 between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A.

The Complainant is the owner of the following trademarks including INTESA SANPAOLO:

- Community trademark No. 5301999 INTESA SANPAOLO (word) in classes 35, 36 and 38. Filed on September 8, 2006 and registered on June 18, 2007

- Community trademark No. 5344544 GRUPPO INTESA SANPAOLO (word) in classes 35, 36 and 38. Filed on September 28, 2006 and registered on July 6, 2007

- Community trademark No. 5302377 BANCA INTESA SANPAOLO (word) in classes 35, 36 and 38. Filed on September 8, 2006 and registered on July 6, 2007

- International trademark registration No. 920896 INTESA SANPAOLO (word) in classes 9, 16, 35, 36, 38, 41 and 42, registered on March 7, 2007 and designating over 50 countries.

Copies of the Certificates of registration and printouts from OHIM’s official database are provided as Annex C of the Complaint.

The Respondent registered the disputed domain name on May 4, 2007. No detailed information is provided about the Respondent’s activities, apart from what is mentioned below by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant claims to be the leading Italian banking group and one of the protagonists in the European financial arena. The Complainant has a market capitalisation exceeding 70 billion euro, and an average market share in Italy of approximately 20% in all business areas. The Complainant’s international network specialised in supporting corporate customers is present in 34 countries, in particular in the Mediterranean area and those areas where Italian companies are most active, such as the United States of America, the Russian Federation, China and India.

The Complainant argues that the disputed domain name is almost identical to the trademark INTESA SANPAOLO, with the only difference that the domain name at issue uses the letter “e” instead of the letter “a” in the middle of the mark. The Complainant therefore concludes that the Respondent is engaging in typosquatting and refers to (among others), Intesa Sanpaolo S.p.A. v. VPDD UBGM LTD, WIPO Case No. D2007-0553, where the Panel ordered the transfer of the disputed domain names in a case very similar to the present one, stating that “Complainant contends (and the Panel accepts as uncontroverted) that the Disputed Domain Names are confusingly similar to Complainant’s Trademark. Specifically, Complainant contends that <intesasanpalo.com>, <intesasanpaol.com>, <intesasanpolo.com>, <intesasapaolo.com>, <intesasnpaolo.com> and <itesasanpaolo.com> are each a mis-spelling of Complainant’s Trademark, differing by only one letter from the Trademark. (…) The Panel considers that Respondent is engaging in “typosquatting”.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent has no corresponding trademark or trade name rights, is not commonly known as <intesesanpaolo.com> and the domain name is not used for any bona fide offerings.

Finally, the Complainant states that the disputed domain name is both registered and used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. The domain name is connected to a website sponsoring banking and financial services. The Complainant points to the fact that the Respondent has already been part of several UDRP cases (a list of those is provided as Annex H of the Complaint), and concludes that this is further evidence of bad faith.

The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of the trademark INTESA SANPAOLO, registered as a Community Trademark as well as an International Registration according to the Madrid Agreement and the Madrid Protocol (Annex C of the Complaint).

The disputed domain name <intesesanpaolo.com> is almost identical to the Complainant’s trademark, with the only difference that the middle “a” in the trademark is missing and replaced in the domain name by the letter “e”.

The relevant part of the domain name is “intesesanpaolo”. The addition of the generic top-level domain “.com” is insufficient to distinguish the domain name from the Complainant’s mark.

The Panel considers INTESA SANPAOLO as a distinctive trademark, and the minor difference between the mark and the disputed domain name is not enough to change the impression of the domain name being confusingly similar to the Complainant’s trademark.

The Panel therefore concludes that <intesesanpaolo.com> is confusingly similar to the Complainant’s trademark INTESA SANPAOLO.

B. Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency), WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).

By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name.

The Complainant contends that the Respondent is using the disputed domain name to operate a website that displays third-party hyperlinks, some of which resolve to websites in direct competition with the Complainant. Such use cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy, see TM Acquisition Corp. v. Gary Lam, NAF Case No. FA280499, holding Respondent’s use of the disputed domain name for a commercial web directory website linking users to competing services did not constitute a bona fide use or fair use pursuant to the UDRP, see also Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, “Bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.”

Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant claims to be one of the top banking groups in Europe, but offers no documentation in support of this statement.

However, the Complainant’s two worded trademark is distinctive and the fact that the Respondent has registered a domain name that is almost identical therewith indicates that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name.

The domain name was registered shortly after the merger between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A. The presumably sponsored banking service links on the corresponding website of the disputed domain name is a clear indication of bad faith, and so is the fact that the language of the site is Italian. To the Panel, this is convincing evidence that the Respondent had prior knowledge of the Complainant’s trademark, country of origin and business.

A further element to consider is the fact that the Respondent has demonstrated a pattern of engaging in bad faith registration and use of domain names violating third party’s rights (see Educational Testing Service v. Caribbean Online International Ltd., Keyword Marketing, Inc., Maison Tropicale S.A. and Wan-Fu China, Ltd., WIPO Case No. D2007-0500; Shaw Industries Group Inc. and Columbia Insurance Company v. Maison Tropicale S.A., WIPO Case No. D2007-0548; Sociйtй des Bains de Mer et du Cercle des Йtrangers а Monaco v. Maison Tropicale S.A., WIPO Case No. D2007-0604, holding that “the Respondent’s use of the Domain Name as a referral portal to redirect Internet users to third parties’ sites, very likely for the purpose of collecting referral or click-through fees, has been held by panels as clear evidence of bad faith use of a domain name”; and Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955, stating that “the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s services and to obtain information about Complainant’s activity, to another variety of banking and financial goods and services by creating a likelihood of confusion with the Complainant’s trademarks and business”).

Accordingly, this Panel concludes that the domain name is both registered and used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) of the Policy.

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, <intesesanpaolo.com> be transferred to the Complainant.


P-E H Petter Rindforth
Sole Panelist

Dated: November 12, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1396.html

 

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