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Thierry Mugler S.A.S v. John Mugler [2005] GENDND 71 (26 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banca Intesa S.p.A., v. Bayo Olatiregun/John Ado

Case No. D2004-0954

1. The Parties

The Complainant is Banca Intesa S.p.A., (“Banca Intesa”) of Milan, Italy, represented by Studio Legale Perani of Milan, Italy.

The Respondent is Bayo Olatiregun/John Ado of Sarasota, Florida, United States of America.

2. The Domain Names and Registrars

The disputed domain names are <bancadelintesa.com>, <bancadelintesa.info> and <bancadelintesa-uk.com>, which are registered with eNom, Sipence, Inc. and the NameIT Corporation d/b/a Aitdomains.com, respectively.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2004. On November 15, 2004, the Center transmitted by email to eNom, Sipence, Inc. and The NameIT Corporation d/b/a Aitdomains.com a request for registrar verification in connection with the domain names at issue. On November 16, 2004, the NameIT Corporation d/b/a Aitdomains.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name <bancadelintesa-uk.com> and providing the contact details for the administrative, billing, and technical contact. On November 16, 2004, eNom transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain names <bancadelintesa.com> and <bancadelintesa.info> would remain under Registrar Lock throughout the proceeding. In addition to eNom partial response, the Center made WHOIS printouts, which showed that the disputed Domain Names were registered with eNom, and that Respondent, Bayo Olatiregun/John Ado, was the current registrant of the disputed Domain Names.

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 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2004.

The Center appointed Luis H. de Larramendi as the sole panelist in this matter on December 29, 2004. 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.

On December 29, 2004, a supplemental filing was transmitted to the panelist and he decided to accept it and take it into account.

4. Factual Background

4.1.- Banca Intesa is an important Italian financial entity and occupies first position in the ranking of banks for 2004, in Italy. Among others, it owns various marks for banking activities and related goods and services, of which the following should be highlighted:

- Italian registration No. 818814 BANCA INTESA;

- Italian registration No. 816033 INTESA (device);

- Community registration No. 779793 BANCA INTESA;

- Community registration No. 2803773 INTESA;

- Community registration No. 1237205 INTESA BANCA INTESA (device).

Although some of these marks were not originally owned by Banca Intesa, its current ownership is evidenced by the documentation which the Complainant submitted in its supplementary brief of December 14, 2004, and the very fact that its ownership has already been acknowledged by a WIPO administrative panel in a decision rendered in Banca Intesa S.p.A. v. Amministrazione Webdomains and Edizioni Blu s.r.l., WIPO Case No. D2000-1452 <bancaintesa.com> on February 5, 2001.

4.2.- Two different names are given as owners of the domain names the transfer of which the Complainant requests. These names apparently correspond to individuals and are specifically the following:

- John Ado and;

- Bayo Olatiregun.

The <bancadelintesa-uk.com> registration stands in the name of Bayo Olatiregun whereas John Ado is shown as owner of <bancadelintesa.com> and <bancadelintesa.info>.

The same contact details are on record with the respective registrars for both John Ado and Bayo Olatiregun:

[street name and number], Sarasota Florida, [zip code] United States of America.

The same telephone number is likewise listed.

4.3.- The sites accessed through the <bancadelintesa.com> and <bancadelintesa-uk.com> domain names refer to two banking entities, one located in Italy and the other in the United Kingdom, offering financing and banking services on the Web.

The entities referred to in these websites are legally non-existent, at least in the terms and at the addresses mentioned on the websites, as is evidenced by the certificates issued by the corresponding Italian and British public entities.

4.4.- The website accessed through <bancadelintesa.info> contains an Internet search engine which facilitates, promotes and effects commercial activities and which contains a section called “Financial Planning.”

4.5.- The database of the United States Patent and Trademark Office lists no BANCA DEL INTESA trademark.

5. Merits of a joint decision in a single proceeding on the Complaint against the <bancadelintesa.com>, <bancadelintesa.info> and <bancadelintesa-uk.com> domain names.

Before proceeding with the formal course of this decision, it is necessary to rule on a preliminary question concerning whether or not the Panel can accept the Complainant’s request against the three different domain names in question despite the fact that two different persons are shown as owners.

The Panel takes a positive decision in relation to this aspect in view of the following:

- The appearance of identity and/or relation between John Ado and Bayo Olatiregun offered by the fact that both give the same contact details, including the same telephone number;

- The fact that all the domain names refer to a single term: BANCA DEL INTESA;

- The existence of the precedent cited in the Complaint, namely the decision rendered in Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 <adobeacrobat.com> and <acrobatreader.com>, and the well-founded reasons set out therein.

The Panel, therefore, decides to proceed to examine the Complaint as it refers to all of the domain names invoked by the Complainant therein, and accepts, for the purpose of this proceeding, that the two individuals are in fact the same person/entity.

6. Parties’ Contentions

A. Complainant

1.- The Complainant, Banca Intesa, is a reputed entity in the Italian market and its repute extends throughout the world.

2.- The marks owned by Banca Intesa and its very name are confusingly similar to the <bancadelintesa.com>, <bancadelintesa-uk.com> and <bancadelintesa.info> domain names in view of the identical nature of the ‘banca’ and ‘intesa’ elements and the irrelevance of ‘del’ which is a mere preposition meaning “of” in Italian.

3.- Banca Intesa is present on the Internet through <bancaintesa.it>.

4.- As a result of all the foregoing, the disputed domain names must be considered confusingly similar to the trademarks in which Banca Intesa has rights.

5.- Neither John Ado nor Bayo Olatiregun (in the event that they are different persons) are known as, nor do they have rights in, the term ‘banca del intesa,’ a term which appears in no database in the United States (nor has the Complainant detected the term in its worldwide watch of the word ‘intesa’). Neither do companies with the same name as those mentioned on the respective websites which give their addresses in Italy and in the United Kingdom exist legally.

6.- The domain names were registered and are being used in bad faith both as a means to disrupt the business of a competitor and as instruments to attract trade and economic activity to their websites to the detriment of Banca Intesa.

B. Respondent

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

7. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the <bancadelintesa.com>, <bancadelitensa-uk.com> and <bancadelitensa.info> domain names are confusingly similar to the trademark rights which the Complainant holds in the term BANCA INTESA and others including the word INTESA and, consequently, the requirements established under paragraph 4(a)(i) of the Policy have been met.

B. Rights or Legitimate Interests

The Panel finds that neither John Ado nor Bayo Olatiregun have legitimate rights or interests in the term ‘banca del intesa’ or in its variations and, therefore, they have no rights in the disputed domain names.

The Panel, likewise, finds that the circumstances evidenced in the Complaint lead one to suspect that the activity engaged in on the “www.bancadelintesa.com” and “www.bancadelintesa-uk.com” websites may be indicative of criminal activity for which the disputed domain names are instruments, something which evidences lack of standing as well as the applicability of the requirements set out under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The very nature of the activities carried out under the <bancadelintesa.com> and <bancadelintesa-uk.com> domain names evidences bad faith in registering them and that their intention is to attract visitors to the websites for commercial gain to the detriment and harm of the Complainant, Banca Intesa.

Therefore, it is likewise found that the requirements set out in paragraph 4(a)(iii) of the Policy have been met.

The use of <bancadelintesa.info> for commercial gain is found to be parasitical of the Complainant’s economic activity, prospering under its cover. This, placed in relation to its owner’s simultaneous activity in relation to the <bancadelintesa.com> and <bancadelintesa-uk.com> domain names constitutes reason to find that this requirement has been met as regards the <bancadelintesa.info> domain name as well.

8. 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 <bancadelintesa.com>, <bancadelintesa-uk.com> and <bancadelintesa.info> be transferred to the Complainant.

Luis H. de Larramendi
Sole Panelist

Dated: January 12, 2005