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Banca Intesa S.p.A., v. Unasi Inc. [2005] GENDND 1590 (28 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Intesa S.p.A., v. Unasi Inc.

Case No. D2005-0847

1. The Parties

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

The Respondent is Unasi Inc., Panama.

2. The Domain Name and Registrar

The disputed domain name <wwwbancaintesa.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2005.  On August 9, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue.  On August 9, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com 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 August 16, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2005.

The Center appointed C. K. Kwong as the sole panelist in this matter on September 14, 2005. 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, Banca Intesa S.p.A. is, and was at the material times, the applicant or registered owner of a family of trade marks in over 80 jurisdictions worldwide, consisting of or otherwise embodying the word(s) BANCA INTESA and INTESA whether on their own or in conjunction with other words and/or devices. These registrations include, in particular, the following:

(a) Registration no. 818814 for the mark BANCA INTESA in Italy in respect of certain goods and services under Classes 9, 16, 36, 38, 41 and 42 as of June 20, 2000;

(b) Registration no. 779793 for the mark BANCA INTESA in the European Union in respect of certain goods and services under Classes 9, 16, 36, 38, 41 and 42 as of November 15, 1999;

(c) Registration no. 13554201 for the mark BANCA INTESA in Panama in respect of certain services under Class 36 as of March 18, 2005;

(d) Registration no. 816033 for the mark INTESA and device in Italy in respect of certain goods and services under Classes 9, 16, 36, 38, 41 and 42 as of May 30, 2000;

(e) Registration no. 28037773 for the mark INTESA in the European Union in respect of certain services under Class 36 as of November 17, 2003;

(f) Trade mark no. 126770/01 for the mark INTESA in Panama in respect of certain services under Class 36 as of the April 29, 2004; and

(g) Registration no. 2894502 for the mark INTESA in the United States of America in respect of certain services under Class 36 as of October 19, 2004.

According to the 2004 half-yearly results of the Complainant dated September 6, 2004, the Complainant is engaged in a wide range of commercial activities covering, inter alia, various types of consumer, corporate and private banking services in and outside of Europe (including countries in Latin America, namely Argentina, Brazil, Chile, Columbia, Uruguay, Paraguay and Panama indirectly through related or associated companies).

From the evidence filed by the Complainant, it appears that it is one of the leading banking groups carrying on business in Italy with a very wide customer base and many branches using the trade mark BANCA INTESA in the course of its business.

The uncontradicted evidence produced by the Complainant shows that the filing and/or registrations of the marks BANCA INTESA and INTESA occurred before the registration of the domain name <wwwbancaintesa.com> on April 19, 2005.

Other than the particulars shown on the print out of the database search conducted by the Complainant on July 26, 2005, of the Internic and DotRegistrar databases (as provided in Annex A of the Complaint), there is no evidence in the case file concerning the background of the Respondent and its business.

5. Parties’ Contentions

A. The Complainant

The Complainant has made the following contentions:

The Complainant has rights in the trademarks BANCA INTESA and INTESA. Furthermore, the domain name <wwwbancaintesa.com> is identical to the trade mark BANCA INTESA and very similar to the trade mark INTESA.

The said domain name is virtually identical to the Complainant’s official website at “www.bancaintesa.it” with the only differences being the omission of the dot immediately before “bancaintesa” and the replacement of the word “it” by “com”.

The acronym “www” stands for “World Wide Web” which, by its nature, is indistinctive in the context of the domain name. The addition of such acronym to the trademark BANCA INTESA does not render it different from the Complainant’s mark and, since the domain name incorporates the Complainant’s mark, it is identical or confusingly similar to the Complainant’s trademark.

According to the Complainant’s worldwide trade mark watching service, the Respondent has no trade mark registration covering the words BANCA INTESA or INTESA which corresponds to the domain name in question.

The domain name in question does not correspond to the business name of the Respondent, being Unasi.

The Respondent is not commonly known as “wwwbancaintesa”.

The domain name was registered by the Respondent in bad faith because:

(a) the registration of the disputed domain name constituted “typosquatting” as the domain name consists simply of a typographical error;

(b) the domain name is linked to the website “www.wwwpffbank.com” which contains links to the website of direct competitors of the Complainant and promotes their financial and banking services, illustrating that the Respondent’s registration of the domain name was primarily for the purpose of disrupting the Complainant’s business, as provided under paragraph 4(b)(iii) of the Policy;

(c) the use of the domain name constitutes an attempt to attract, for commercial gain, Internet users to other websites in the financial and banking fields and these consumers are likely to be confused into believing that the Complainant is endorsing the Respondent’s website which would amount to bad faith according to paragraph 4(b)(iv) of the Policy;

(d) the diversion of Internet users to another website should be considered to be done in bad faith in any case, even though there is no direct damage to the Complainant, on the basis that there has been a “free ride” on, and profit made from, the Complainant’s reputation in its mark; and

(e) the re-direction of Internet users to the web pages linked to the domain name must be considered to be in bad faith because it was an attempt (i) to prevent the Complainant from reflecting the BANCA INTESA and INTESA trade marks in a corresponding domain name and (ii) to unfairly attract Internet traffic to the website.

B. The Respondent

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

6. Discussion and Findings

In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “If a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.  Paragraph 5(e) of the Rules further provides that, “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.

The Panel has also reminded itself that the failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, who is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therin. See The Vanguard Group, Inc. v. Lorna King, WIPO Case No. D2002-1064 (<vanguard.com>); Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (<berlitzsucks.com>).

The said three elements are now considered as follows.

A. Identical or Confusingly Similar

On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trade mark BANCA INTESA and also, to the extent necessary, the trade mark INTESA by reason of the facts recited in section 4 above.

Furthermore, the Panel finds that the domain name in dispute is substantially identical or confusing similar to the Complainant’s said trade mark BANCA INTESA despite the fact that the Complainant’s mark consists of the two words BANCA and INTESA which are separated by a space while there is no space separating any of the letters making up “bancaintesa” in the disputed domain name. As it is not possible to have a space in a domain name this difference is not significant. Internet users will not pay regard to the acronym “www” which stands for “World Wide Web” and the generic top level domain “.com” when comparing it to a trade mark. The incorporation of the marks BANCA INTESA and INTESA in their entirely renders the domain name confusingly similar to these marks. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

B. Rights or Legitimate Interests

The Complaint has asserted that the Respondent has no rights or legitimate interests in the domain name.

The Complainant has to establish a prima facie case showing that the Respondent has no right or legitimate interest in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once having done that, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the domain name.

In the present case, the Complainant has asserted that the worldwide trade mark watching service commissioned by it was not able to detect any trade mark with the words BANCA INTESA or INTESA in the name of the Respondent.  Further, the name of the Respondent is Unasi Inc., which does not correspond with the domain name. The Respondent, from the evidence available to the Panel, does not appear to be commonly known as “wwwbancaintesa”.

In the absence of any response from the Respondent, the prima facie case established by the Complainant has not been rebutted. This prima facie case is further supported by the following facts:

(a) the Complainant’s BANCA INTESA and INTESA marks have been registered in many countries worldwide including Panama, where the Respondent resides, and the United States of America, where the Registrar is situated;

(b) the Respondent has not come forward to prove that it has become known under the disputed domain name or indeed explained at all why it was necessary for it to include the BANCA INTESA element in the domain name;

(c) the Complainant has not authorised the Respondent to use the domain name;

(d) despite the use of the domain name by the Respondent to divert Internet users to the website “www.wwwpffbank.com”, where there are links related to banking and financial services provided by others, there is no bona fide offering of goods or services by the Respondent itself.

C. Registered and Used in Bad Faith

It is alleged that the Respondent has registered and used the domain name in bad faith.

In the Panel’s view, paragraph 4(b) of the Policy provides for four situations under which a conclusive presumption of registration and use in bad faith on the part of the Respondent will be invoked but specifically provides that the circumstances under which bad faith can be proved are without limitation. The presumptions under paragraph 4(b) of the Policy are not exhaustive evidence of the way in which registration and use of a domain name in bad faith must be proved.

The Panel considers that the presumption under paragraph 4(b)(i) is not invoked because there is simply no evidence to suggest that the Respondent is selling or otherwise transferring the domain name registration to the Complainant or its competitor for valuable consideration.

There is no sufficient evidence to invoke the presumption under paragraph 4(b)(ii) of the Policy that the Respondent is engaged in a pattern of conduct to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name.

There is no sufficient evidence to invoke the presumption under paragraph 4(b)(iii) of the Policy that the Respondent has registered the domain name primarily to disrupt the business of the Complainant, which is in competition with the business of the Respondent.

Although the Respondent has apparently not used the domain name for promoting the goods or services of the Respondent itself, it has used the domain name to divert Internet users to the website at “www.wwwpffbank.com”.

Annex J of the Complaint shows various “Sponsored Links” from the website linked to the domain name which may lead to the websites of various banks and other institutions providing financial or related services as well as websites in the popular categories of travel, financial planning, business and finance, health and beauty and health products.

In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain. The deliberate use of the acronym “www” before “bancaintesa” will lead those Internet users who mistype the Complainant’s domain name through the omission of the dot after “www” in a moment of haste or carelessness, to go the Respondent’s domain name which in turn will divert the users to “www.wwwpffbank.com”. Similar circumstances were discussed in Ticketmaster Corporation v. Woofer Smith, WIPO Case No. 2003-0346.

The choice of “bancaintesa” by the Respondent appears not to have been made for a legitimate reason in view of the fame of the BANCA INTESA trade mark and trade name as demonstrated by the Complainant’s worldwide registrations and active activities in Italy and Europe.

It appears, therefore, that the Respondent used the domain name to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or a product or service on the online locations where the domain name leads. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has been invoked and that the domain name has been registered and is being used in bad faith under paragraph 4(a) of the Policy.

There are also additional factors illustrating the bad faith of the Respondent as follows:

(a) the Complainant’s trade name and trade mark are widely known.  The trade marks BANCA INTESA and INTESA have been registered extensively throughout the world, including in Italy, where the Complainant is situated, the European Union, where some of the websites linked to the domain name through the “Sponsored Links” link appear to be situated, Panama, where the Respondent has an address, and the United States of America, where the Registrar is situated.  On the other hand, there is no evidence from the Respondent to dispute that it was aware of the existence of the Complainant’s mark; and

(b) there is no explanation given by the Respondent as to why this particular name was chosen and no legitimate reason is apparent from the evidence before the Panel.

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 <wwwbancaintesa.com> be transferred to the Complainant.

C. K. Kwong
Sole Panelist

Dated: September 28, 2005