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Banca Intesa S.p.A. v. SIA Bouns [2005] GENDND 2081 (29 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Intesa S.p.A. v. SIA Bouns

Case No. D2005-1135

1. The Parties

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

The Respondent is SIA Bouns, Latvia.

2. The Domain Name and Registrar

The disputed domain name <bancaintesait.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 October 31, 2005. On November 1, 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 November 1, 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 November 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2005.

The Center appointed Professor Teruo Doi as the Sole Panelist in this matter on December 15, 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 facts stated in the Complaint are as follows

(1) Banca Intesa is the leading Italian banking group and also one of the protagonists in the European financial arena. It was incorporated in 1998, as the result of the integration between Cariplo and Banco Ambrosiano Veneto. In 2001, Banca Commerciale Italiana (known as “COMIT”) merged in Banca Intesa and the new entity was named INTESABCI. On December 17, 2002, the Complainant has been renamed BANCA INTESA. The Complainant is the first important answer in Italy to the changes in the competitive banking and financial scenario characterized by few large players in Europe with a significant domestic territorial presence and a system of alliances aimed at managing specific international business areas. With more than 57,000 employees, 3,720 branches and city offices in Italy and all around the world and almost 13 million clients (of which approximately 6.3 million individuals), the Complainant is the top Italian banking group and one of the key players on the European scenery.

(2) The Complainant is the owner of several trademark registrations and applications for “BANCA INTESA” and “INTESA”. The Complainant’s registered trademarks relevant to this case include the followings:

- BANCA INTESA Italian trademark registration No. 818814, filed on December 18, 1997, and granted on June 30, 2000, for products in classes 9 and a6 and for services in classes 36, 38, 41 and 42;

- BANCA INTESA Community trademark registration No. 779793, filed on March 24, 1998, and granted on November 15, 1999, for products in classes 9 and 16 and for services in classes 36, 38, 41 and 42;

- INTESA & Device Italian trademark registration No. 816033, filed on April 9, 1998, and granted on May 30, 2000, for products in lasses 9 and 16, and for services in classes 36, 38, 41 and 42.

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

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

(3) The ownership issue concerning the trademarks for “INTESA” has recently been considered by the WIPO Case No. D2000-1452, in Banca Intesa S.p.A. v. Amministrazione Webdomains and Edizioni Blu S.r.l. A copy of the WIPO Panel decision is attached to the Complaint (Annex F).

5. Parties’ Contentions

A. Complainant

On the basis of the facts stated above, the Complainant requests the Administrative Panel to issue a decision that the Domain Name, <bancaintesait.com>, be transferred to the Complainant, in accordance with Paragraph 4(b)(1) of the Policy, on the following grounds:

(1) The Domain Name at issue is confusingly similar to the Complainant’s trademark: The Domain Name at issue, <bancaintesait.com>, is identical or very similar to the Complainant’s trademarks “BANCA INTESA” and “INTESA”. The Respondent’s domain name, <bancaintesait.com>, is virtually identical to the address for Banca Intesa’s official Website at “www.bancaintesa.it” (Annex G). The sole differences consist in the presence of the suffix “IT” in the domain name <bancaintesait.com> which seems to be an abbreviation of Italy or Information Technology. This means that the portion “IT” of the domain name <bancaintesait.com> is devoid of any distinctive power. Additionally, the most relevant portion of the domain name at stake is clearly represented by the trademark “BABCA UBTESA”. Lastly, it is an established case law that if a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (See, Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525) (Annex H).

(2) The Respondent has no rights or legitimate interests in respect of the domain name: The Respondent has no rights in the Domain Name since it does not correspond to a trademark registered in the name of SIA Bouns. The Complainant has a worldwide trademark watching service on the words BANCA INTESA or INTESA, and no trademark covering the words BANCA INTESA or INTESA, in the name of the Respondent, has been detected.

The Domain Name at issue does not correspond to the business name of the Respondent and, according to our knowledge, SIA Bouns is not commonly known as “BANCAINTESAIT”.

(3) The Domain Name at issue was registered and is being used in bad faith: The Domain Name at issue, <bancaintesait.com>, was registered for the purpose of disrupting the business of a competitor, and, using the Domain Name, the Respondent 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, <bancaintesat.com>, is linked to the aforesaid website, as shown by its copy (Annex I). The website shows a home page and other web pages which make reference to banking and financial services offered by companies which are direct competitors of the Complainant. More particularly, the home page contains links to several banks such as Fineco, Sella, Santander (Banca Finconsumo). Through the above links, other web pages appear with some additional links to websites owned by the Complainant’s competitors. In fact, there are links to the websites “www.fineco.it”, “www.sella.it”, “www.finconsumo.it” and so on, which obviously promote and offer financial and banking services. In the light of actual use of the Domain Name at issue by the Respondent, the Complainant deems that the Domain Name at issue is registered primarily for the purpose of disrupting the Complainant’s business. As stated above, the website “www.bancaintesait.com” and the linked websites operate in the same field of business as the Complainant and, therefore, in direct competition with the Complainant. It is clear that the registration and use of a domain name, which is very similar to a trademark, for the purpose of directing traffic to a competing website constitutes a disruption of the business of a competitor within the scope of paragraph 4(b)(iii) of the Policy.

The use of the Domain Name at issue constitutes an attempt to attract, for commercial gain, Internet users to other websites. The Complainant operates primarily in the financial and banking fields, all around the world, with the trademarks BANCA INTESA and INTESA. In the light of the above, any consumer looking for the Complainant’s services on the web is likely to be confused by the Respondent’s use of the Internet website “www.bancaintesait.com” and may reasonably believe that the Complainant is endorsing the Respondent’s website or that the Complainant does not have a website. This represents a clear evidence of the domain name use in bad faith under paragraph 4(b)(iv) of the Policy. Prior WIPO Domain Name Panel decisions are in agreement with the Complainant’s assertion of bad faith on the part of the Respondent as shown by the following cases:

- WIPO Case No. D2001-0063: Express Messenger Systems, Inc. v. Golden State Overnight Delivery Service, Inc. (Annex J) (holding that “Respondent registered and has used the disputed domain name <calovernight.com> to direct Internet users to its own website that provides services directly competing with those of Complainant. The Panel determines that Respondent intentionally registered and used this disputed domain name for the purpose of commercial gain by seeking to attract Internet users to its own website by creating confusion as to Complainant’s affiliation with or sponsorship of Respondent’s websites. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy…”);

- WIPO Case No. D2003-0346: Ticketmaster Corporation v. Woofer Smith Annex K) (holding that “….The Respondent deliberately seeks to disrupt the business of Ticketmaster by directing consumers seeking Ticketmaster’s website and services to a Ticketmaster competitor, <ticketvault.com> and also seeks commercial gain through the use of the TICKETMASTER Mark. Thus, the Respondent’s registration and use of the Disputed Domain Name constitutes use in bad faith within the meaning of UDRP Sections 4 (b)(iii) and (iv).”).

Even if the Respondent is in the position to show that the use of the Domain Name is not finalized to directly damaging the Complainant, the cited use should be considered, in any case, to be done in bad faith as stated by the Panel decision in the following case:

- WIPO Case No. D2003-0327: AT&T Corp. v. Amjad Kausar (Annex L) (holding that “….Each of the disputed domain names is presently being used in bad faith. The use of the names, in each case, does not appear to be directed to inflicting any deliberate damage on the Complainant. However it does appear in each case that the use is calculated to “free-ride” on and profit from the Complainant’s reputation in its mark. In the context of the Respondent’s lack of interest in the domain names and the apparent commercial benefit the Respondent derives from association and confusion with the Complainant via the domain names, it seeks the resolution of the domain names to such sites is solely motivated by profit …”).

Furthermore, the passive attitude that the Respondent has adopted having regard to the web page linked to the Domain Name at issue, by just redirecting the Internet users to the web pages linked to the web page “www.sella.it”, must be considered as a behavior in bad faith under two points of view: (i) as an attempt to prevent the Complainant from reflecting the BANCA INTESA and INTESA trademarks in a corresponding domain name and (ii) as an attempt to unfairly attract Internet traffic to the website linked to the Domain Name at issue by using the Complainant’s trademark. Regarding the Respondent’s passive behavior as an evidence of his bad faith, we want to recall the following case:

- WIPO Case No. D2000-0823: El Rincon del Vago, S.L. y otros v. NETTIKA, S.L (Annex M) (holding, in Paragraph 6.3.3 (d) that “….the mere redirecting of a web page without contents (in the present case, “www.bancaintesait.com”) to a website really operative (“www.sella.it”) has been repeatedly considered as a lack of use and, consequently, as a use in bad faith”.)

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements is present:

(i) 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

(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.

The Panel notes that the Respondent has failed to respond to the Complaint within the stipulated time and, as such, does not contest the facts asserted by the Complainant in the Complaint. Accordingly, the Panel finds that:

A. Identical or Confusingly Similar

The Domain Name at issue, <bancaintesait.com>, is identical or confusingly similar to the Complainant’s trademarks “BANCA INTESA” and “INTESA” registered and used by the Complainant throughout the world including Italy, European Community and United States. It must be noted that the Domain Name at issue includes the word “intesa”, being the dominant part of the Complainant’s trademarks, and the word “banca” representing the Complainant’s business and the word “it” being an abbreviation of the country name Italy or information technology. Thus, eliminating these non-distinctive elements, the Panel finds that the Domain Name at issue is confusingly similar to the Complainant’s trademarks. This finding is well-supported by the WIPO Domain Name Panel decisions cited in the Complaint, including WIPO Case No. D2000-1452, Banca Intesa S.p.A. v. Amministrazione Webdomains and Edizioni Blu S.r. l., cited by the Complainant (Annex F).

B. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name, because there is no evidence to show that the Respondent, whose trade name is SIA Bouns, has been or is commonly known by the Domain Name, or that the Respondent has acquired any trademark rights in the Domain Name, neither has the Complainant authorized or permitted the Respondent to use the word “Banca Intesa” or “Intesa” for its Domain Name.

Based on the case file, the Complainant has met the second element of test.

C. Registered and Used in Bad Faith

The Domain Name at issue has been registered and is being used in bad faith by the Respondent on the following grounds:

It is clearly established by the Complainant that the Domain Name at issue was registered and is being used by the Respondent to attract Internet users to its website, by creating confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website. The website to which the Domain Name at issue is linked shows a home page and other web pages which make reference to banking and financial services offered by the Complainant’s competitors.

The Complainant correctly asserts that the Domain Name at issue was registered and is being used by the Respondent primarily for the purpose of disrupting the business of the Complainant and intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s competitors (Paragraph 4(b)(iii) and (iv)).

7. Decision

For all the foregoing reasons, the Panel hereby orders, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, that the Domain Name <bancaintesait.com> be transferred to the Complainant.

Teruo Doi
Sole Panelist

Dated: December 29, 2005