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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. Marco Schiappacassa

Case No. D2008-0788

 

1. The Parties

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

The Respondent is Marco Schiappacassa, Rimini, Italy

 

2. The Domain Name and Registrar

The disputed domain names are <bancasanintesa.com>, <sanintesa.info>; <sanintesa.mobi> and <sanintesa.org> (hereinafter collectively the “Domain Names”).

They are all registered with GoDaddy.com, Inc. (hereinafter the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2008. On May 20, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with each of the Domain Names.

On May 21, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of all Domain Names 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 May 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2008.

The Center appointed Anna Carabelli as the sole panelist in this matter on July 2, 2008. 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 among the top banking groups in Europe as a result of the merger between two major Italian banks (Banca Intesa and Sanpaolo IMI) announced in August 2006 and accomplished in January 2007 (see Annexes C, D and E to the Complaint).

The Complainant has provided evidence of a number of trademark registrations incorporating the words INTESA, BANCA INTESA and SAN PAOLO in connection with various products and services, including banking and insurance services, namely:

- Community trademark registration No. 2803773 INTESA, filed on August 7, 2002 and granted on November 17, 2003, in connection with the services of class 36;

- Italian trademark registration No. 818814 BANCA INTESA, filed on December 18, 1997 and granted on June 20, 2000, in connection with products of classes 9 and 16 and services of classes 36, 38, 41 and 42;

- Community trademark registration No. 779739 BANCA INTESA, filed on March 24, 1998 and granted on November 15, 1999, in connection with products of classes 9 and 16 and services of class 36;

- Community trademark registration No. 5302377 BANCA INTESA SANPAOLO, filed on September 8, 2006 and granted on July 6, 2007, in connection with services of classes 35, 36 and 38;

- Community trademark registration No. 122309 SANPAOLO, filed on April 1, 1996 and granted on May 25, 1998, in connection with the services of class 36.

Upon the announcement of the merger in August 2006, the company resulting therefrom was referred to as SANINTESA in part of specialized press (Annexes F, M and N), this name being a combination of the words SAN and INTESA which are included in the names and trademarks of the two merging companies, respectively SAN PAOLO IMI and BANCA INTESA.

On October 13, 2006, the Respondent registered the domain name <bancasanintesa.com> which, until March 19, 2008 was connected to a web page containing several links to web sites sponsoring banking and financial services, also offered by Complainant’s direct competitors (Annex G)

On early March, 2008, the Complainant sent the Respondent Mr. Schiappacassa a cease and desist letter requesting that the domain name <bancasanintesa.com> be transferred to the Complainant (Annex H). On March 24, 2008, the Respondent replied that the domain name <bancasanintesa.com> was not infringing on the Complainant’s trademark rights; however the Respondent was available to consider a “fair” proposal taking into account all expenses borne by the Respondent “for the registration of the domain name, the web space, handling of the server, electronic post and renewal of related services” (Annex I).

Following the above correspondence, the domain name <bancasanintesa.com> is presently connected to a page with the heading “BANCA SANINTESA – BANCA DELL’INTESA SANITARIA” (literally “bank of the health-care arrangement”) containing various generic information on health-care (Annex J).

On March 21, 2008, the Respondent registered three additional domain names containing the name “SANINTESA”, i.e: <sanintesa.info>, <sanintesa.mobi> and <sanintesa.org>. The above domain names are connected to web pages containing several links to web sites sponsoring banking and financial services, also by Complainant’s direct competitors (see printouts of web pages corresponding to the above mentioned Domain Names, dated May 15, 2008- Annex K).

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the Complainant is the owner of several trademark registrations for the names INTESA and SANPAOLO;

- the Domain Names are confusingly similar to the Complainant’s trademarks, being a combination of the trademarks BANCA INTESA SANPAOLO, INTESA and SANPAOLO, as confirmed by the fact that upon the announcement of the merger between Banca Intesa and San Paolo IMI, the company that would result therefrom was referred to as SANINTESA in part of specialized press;

- the Respondent has no rights in or to the Domain Names under none of the circumstances indicated in paragraph 4(c) of the Policy;

- the Domain Names were registered and are being used in bad faith;

- the Respondent registered the domain name <bancasanintesa.com> on October 13, 2006, two months after Banca Intesa and Sanpaolo IMI had announced their forthcoming merger (August 24, 2006), confirmed by the subsequent press release of August 26, 2006 and various articles referring to the resulting company as SANINTESA. In the light of the above, it is clear that the Respondent registered the Domain Names in order to resell or rent them to the owner of legitimate rights on the relative trademarks. This is also confirmed by the fact that the Respondent refused to transfer to the Complainant the Domain Name <bancasanintesa.com> against the mere reimbursement of the registration fees;

- the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site;

- as a matter of fact the Domain Names are connected to a web page containing several links to web sites sponsoring banking and financial services also offered by the Complainant’s competitors, except for the domain name <bancasanintesa.com> which, following the Complainant’s cease and desist letter of early March, 2008, is now reverting to a web page containing nonsense information about a nonexistent Banca dell’Intesa Sanitaria.

In support of its contentions the Complainant refers to previous Panel decisions.

Consequently, the Complainant requests the transfer of the Domain Names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to the complainant’s trademark or service mark; and

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

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

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which if proved by the respondent, shall be evidence of the respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The SANINTESA Domain Names are a combination of the words SAN and INTESA that are incorporated in the Complainant’s trademarks BANCA INTESA SANPAOLO, INTESA and SANPAOLO and are therefore confusingly similar thereto. The circumstance that upon the announcement of the merger between Banca Intesa and San Paolo IMI, the resulting company was referred to as SANINTESA in part of the specialized press only corroborates this conclusion.

As regards the Domain Name <bancasanintesa.com> the Panel further notices that the addition of the word “banca” is directly related to the Complainant’s business thus strengthening the likelihood of its being confused with the Complainant’s trademarks.

Based on the above the Panel finds that this element has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

Clearly, the Respondent has never been authorized by the Complainant to register the Domain Names. The Complainant also contends that the Respondent is not commonly known by the Domain Names.

The Domain Names are mainly used to redirect internet users to other websites through a web page containing links to web sites sponsoring banking and financial services also offered by the Complainant’s competitors (Annex K). The Panel agrees that such use cannot constitute a use in connection with a bona fide offering of goods and services since the Respondent is using the Domain Names to intentionally attract for commercial gain Internet users by trading on the goodwill associated with the Complainant’s trademark.

Likewise the current use of the Domain Name <bancasanintesa.com> cannot amount to a bona fide offering of goods and services since such Domain Name corresponds to a web page (Annex J) where various generic information on health-care are merely posted without any apparent logic or reason or relation to the actual offer of goods or services, under the heading of a seemingly non-existing entity “BANCA SANINTESA – BANCA DELL’INTESA SANITARIA”

The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many WIPO decisions, in such a case the burden of proof shifts onto the respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683; Audi AG v. Dr. Alireza Fahimipour WIPO Case No. DIR2006-0003).

The Respondent has failed to submit an answer to the Complaint.

In the light of the above, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Based on the evidence submitted by the Complainant, the Panel concluded that it is inconceivable that the Respondent, when registering the Domain Names, was unaware of the Complainant’s rights in the marks SAN PAOLO, INTESA and BANCA INTESA SAN PAOLO and had an intent to use them in good faith.

Consequently, the Panel finds that the Domain Names were actually registered in bad faith. In the case in hand the impending merger between SAN PAOLO IMI and BANCA INTESA was widely publicized and referred to as SANINTESA in various articles of the specialized press. The Respondent registered the Domain Name <bancasanintesa.com> on October 13, 2006 just after many of the press release/articles announcing such merger. Therefore in the Panel’s view the Respondent had knowledge that a trademark right might soon have arisen through use or registration of the name SANINTESA by the Complainant and intended to take advantage of such rights. The fact that the above name has not been registered and used as a trademark by the Complainant is not relevant since the Domain Names incorporate portions of each of the Complainant’s registered trademarks SAN PAOLO, INTESA and

BANCA INTESA SAN PAOLO.

The Respondent has also been using the Domain Names in bad faith to intentionally attract Internet users for commercial gain. As a matter of fact, the SANINTESA Domain Names correspond to a web page containing various links sponsoring banking and financial services, also by Complainant’s direct competitors (see Annex K). In doing so the Respondent is clearly trading on the goodwill associated with the Complainant’s brand and mark. Such a conduct where the Respondent sought or realized commercial gain indicates the Respondent’s bad faith as stated in many previous WIPO decisions (Deutsche Telekom AG v. Gary Seto, WIPO Case No. D2006-0690; Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; Cox Radio, Inc. v. Domain Administrator, WIPO Case No. D2006-0387; Gianfranco Ferrй S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Scania CV AB (Publ) v. Unaci, Inc., WIPO Case No. D2005-0585; Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589; Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383.)

As regards the Domain Name <bancasanintesa.com> (corresponding to a web page where various generic information on health-care are merely posted without any apparent logic, reason or relation to the actual offer of goods or services, under the heading of a non-existing “BANCA SANINTESA – BANCA DELL’INTESA SANITARIA”) the Panel notices that such a use implemented by the Respondent after receipt of a cease and desist letter by the Complainant appears to be a mere ruse which corroborates rather than denies the above considerations.

 

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 <bancasanintesa.com>, <sanintesa.org>, <sanintesa.info> and <sanintesa.mobi> be transferred to the Complainant.


Anna Carabelli
Sole Panelist

Dated: July 11, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2008/d2008-0788.html

 

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