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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intesa Sanpaolo S.p.A. v. Andrey A Barchenkov
Case No. D2007-0087
1. The Parties
The Complainant is Intesa Sanpaolo S.p.A., Torino, Italy, represented by Studio Legale Perani, Italy.
The Respondent is Andrey A Barchenkov, Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <intesa-trade.com> is registered with OnlineNic,
Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2007. On January 25, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On January 26, 2007 OnlineNic, Inc. d/b/a China-Channel.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 January 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on February 22, 2007.
The Center appointed Dennis A. Foster as the sole
panelist in this matter on March 8, 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.
4. Factual Background
The Complainant is a large well-known banking and financial institution based in Italy and operating throughout Europe and in other countries worldwide. It owns valid European Community registrations for both the trademarks “INTESA” and “INTESA TRADE” (Registration No. 2803773, November 17, 2003; and Registration No. 1282201, September 29, 2000).
The Respondent registered the disputed domain name
on September 26, 2006. The Respondent operates the name to redirect Internet
users to a website that is apparently affiliated with the Respondent and offers
services that directly compete with some of those offered by the Complainant.
5. Parties’ Contentions
The Complainant, as the leading Italian banking group, was incorporated in 1998 as a result of the merger between Cariplo and Banco Ambrosiano Veneto. After the merger with Banca Commerciale Italiana on December 17, 2002, the Complainant was renamed “Banca Intesa”. Recently, on January 1, 2007, the Complainant merged with Sanpaolo IMI, and its name changed to “Intesa Sanpaolo.”
- According to the Complainant, it is among the top banking groups in Europe (market capitalisation exceeding €70 Billion Euros) and the undisputed leader in Italy, averaging a market share of approximately 20% in all banking business areas (retail, corporate and wealth management) in Italy. With a network of approximately 5,500 branches serving approximately twelve million customers in Italy, and a network of approximately 1,400 branches and over six million customers in Central-Eastern Europe, the Complainant also provides international banking services to corporate customers in 34 countries. As a result, the Complainant’s “INTESA” mark is one of the most well-known trademarks internationally in the fields of banking and financial services.
- The Complainant owns a securities trading company named “Intesa Trade” that operates on all significant international stock markets.
- The Complainant owns European Community trademarks for both “INTESA” (Registration No. 2803773; granted on November 17, 2003) and “INTESA TRADE” (Registration No. 1282201; granted September 29, 2000), as well as the country domain name <intesatrade.it>.
- The disputed domain name is identical to the Complainant’s trademark “INTESA TRADE.”
- The disputed domain name redirects Internet users to a website owned by a Russian company that is engaged in the securities trading business, as is the Complainant’s subsidiary. The domain name of the Respondent’s e-mail address redirects to the very same website.
- The Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no valid trademark corresponding to the name. There is no evidence that the Respondent is commonly known by a similar name. The services offered by the Respondent at the disputed domain name do not constitute a bona fide offering.
- The disputed domain name was registered and is being used in bad faith. The circumstances indicate that, by using the domain name, 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 Respondent did not reply to the Complainant’s
6. Discussion and Findings
To comply with paragraphs 4(a)(i-iii) of the Policy, prevail in this administrative proceeding, and gain possession of the disputed domain name, <intesa-trade.com>, the Complainant must prove the following:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Panel has been furnished with conclusive evidence (see Annex D) that the Complainant owns a valid European Community trademark in the name “INTESA TRADE” (Registration No. 1282201, September 29, 2000). Since the Complainant has used the mark in commerce for the duration of the present decade, the Complainant has clearly satisfied the first element required under paragraph 4(a)(i) of the Policy.
The disputed domain name <intesa-trade.com>
differs from the Complainant’s mark by only the addition of a hyphen between
the words and the gTLD, “.com” at the end. Innumerable prior ICANN
panels have held that such minor differences are immaterial in establishing
confusing similarity between a domain name and a trademark, and the Panel adopts
this reasoning in finding confusing similarity in this case. See, for example,
Valeant Pharms. Int’l v. Carpela, WIPO
Case No. D2005-0786 (September 2, 2005); and Health Devices Corp. v.
Aspen S T C, NAF Case No. FA158254 (July 1, 2003).
Per the foregoing, the Panel decides that the Complainant has sustained its burden to prove that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Having established its trademark rights to a mark
nearly identical to the disputed domain name, the Complainant has implied that
it has not sponsored, endorsed or otherwise authorized the Respondent to use
that mark in connection with a domain name. Since the Respondent failed to file
a Response, the Panel is entitled to conclude that the Complainant’s implied
assertions are correct (See, Talk City, Inc. v. Michael Robertson, WIPO
Case No. D2000-0009 (February 29, 2000)). As a result, the Panel determines
that the Complainant has established a prima facie case that the Respondent
has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has not put forth a suitable rebuttal
to this prima facie case, and the Panel cannot on its own detect one
from the record. Consulting paragraph 4(c) of the Policy for guidance in constructing
such a rebuttal, the Panel finds no evidence in the filings that the Respondent
or a company of his is commonly known by a name corresponding to the disputed
domain name (paragraph 4(c)(ii)), or that the Respondent is making a non-commercial
or fair use of the name (paragraph 4(c)(iii)). Moreover, while the Respondent
may have been using the disputed domain name for an offering of services prior
to being notified of the claim against him, that offering is not a bona fide
offering within the meaning of paragraph 4(c)(i) of the Policy because it involves
the solicitation of customers for services similar to those offered by the Complainant
– i.e., use of the Complainant’s trademark unfairly as a lure for
its rivals does not constitute a bona fide offering. The Panel finds
plenty of support for this position in many prior UDRP cases, such as Abbott
Laboratories v. United Worldwide Express Co., Ltd., WIPO
Case No. D2004-0088 (April 7, 2004); and Reed Elsevier Properties, Inc.
et al v. Weekly Publishers, NAF Case No. FA151536 (May 5, 2003).
As reasoned above, the Panel concludes that the Complainant has demonstrated that the Respondent lacks rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Panel accepts the Complainant’s assertion that the Respondent is using the disputed domain name, which is nearly identical to the Complainant’s valid trademark, to redirect Internet users to a website offering services directly competitive with the Complainant’s business. That use places the Respondent’s actions firmly within the criteria cited in Policy paragraph 4(b)(iv) as sufficient to sustain a finding of bad faith registration and use of a domain name, to wit: 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 .
Furthermore, as the Complainant argues, many previous
Policy panels have found that employment of a disputed domain name for redirection
to a website that provides services or products that compete directly with those
offered by a complainant is sufficient evidence for a finding of bad faith registration
and use. See, for example, Baudville, Inc. v. Henry Chan, WIPO
Case No. D2004-0059 (April 5, 2004); and Marriott International, Inc.
v. Kyznetsov, NAF Case No. FA95648 (October 24, 2000).
Accordingly, the Panel decides that the Complainant has satisfied its obligation
to show that the disputed domain name was registered and is being used by the
Respondent in bad faith.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain name <intesa-trade.com> be transferred to the Complainant.
Dennis A. Foster
Date: March 22, 2007