Decisión del Panel Administrativo nº D2015-1606 of WIPO Arbitration and Mediation Center, November 20, 2015 (case Intesa Sanpaolo S.p.A. v. Domains Admin, New Media Nexus)
| Resolution Date | November 20, 2015 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer |
| Dominio | Generic Domains |
The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Perani Pozzi Associati – Studio Legale, Italy.
The Respondent is Domains Admin, New Media Nexus of Sydney, Australia, internally represented.
The disputed domain name [eurizon.capital] (“Disputed Domain Name”) is registered with Uniregistrar Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 9, 2015. On September 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 10, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on September 21, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2015.
On October 10, 2015, the Respondent submitted an informal communication. On October 12, 2015, the Respondent expressed an interest in settlement and in accordance with the Complainant’s request for suspension on October 13, 2015, the Center suspended the administrative proceeding on October 13, 2015. Upon the Complainant’s request on October 26, 2015, due to failed settlement attempts the proceeding was reinstituted on October 26, 2015. On November 2, 2015, the Respondent submitted the Response.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 6, 2015. 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 November 9, 2015, the Center received unsolicited Supplemental Submissions from the Complainant, which were forwarded to the Panel. The Center then received the Supplemental Submissions from the Respondent on November 13, 2015, which were forwarded by the Center to the Panel. After having considered the Supplemental Submissions by both Parties, the Panel finds that neither raises any additional evidence or arguments outside of what has (or could have) been submitted in the Complaint and the Response. The Panel will therefore not accept either Parties’ unsolicited Supplemental Submissions and will proceed to decide the case based solely on the Complaint and the Response.
The Complainant is a well-known Italian bank, which was formed on January 1, 2007 following the merger of Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two well-known Italian banking groups. Eurizon Capital SGR is the asset management company within the Complainant’s group of companies. The Complainant holds registered trade mark rights in the EURIZON CAPITAL mark and EURIZON FINANCIAL GROUP mark in various jurisdictions through a number of International and Community registrations. The Complainant also owns and uses numerous domain names that incorporate the EURIZON CAPITAL mark.
The Respondent registered the Disputed Domain Name on July 19, 2014. The Respondent is an Internet marketing company that operates primarily in Australia and the United States of America (“United States”). The Respondent is in the business of acquiring domain names either for subsequent development, for use in paid-search advertising or for resale.
The Disputed Domain Name currently resolves to a parking page.
The Complainant’s contentions can be summarised as follows:
(a) Eurizon Capital SGR is the asset management company within the Complainant’s group of companies, and was established in 1988. The Complainant is the owner of the registered trade mark rights in the EURIZON CAPITAL mark and EURIZON FINANCIAL GROUP mark, including:
(i) International Trade Mark Registration No. 914064 for EURIZON FINANCIAL GROUP mark, registered on January 11, 2007, in class 36, which also covers Australia;
(ii) European Community Trade Mark Registration No. 5283460 for EURIZON CAPITAL mark, registered on June 21, 2007, in class 36; and
(iii) Italian Trade Mark Registration No. 1235936 for EURIZON CAPITAL mark, registered on January 11, 2010, in class 36.
The Complainant and its subsidiaries also hold several domain names that incorporate the EURIZON CAPITAL mark. Therefore, the Respondent must have been aware of the Complainant’s EURIZON CAPITAL mark and EURIZON FINANCIAL GROUP mark at the time it registered the Disputed Domain Name.
(b) The Disputed Domain Name is confusingly similar to the Complainant’s EURIZON CAPITAL mark and EURIZON FINANCIAL GROUP mark.
(c) the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorized the Respondent to use the Disputed Domain Name, and the Respondent is in no way related to the Complainant. The Respondent’s name also does not correspond to the Disputed Domain Name, and there is no evidence that the Respondent is commonly known by the name “eurizon”. In addition, there is no fair or noncommercial use of the Disputed Domain Name.
(d) the Respondent registered the Disputed Domain Name in bad faith as:
(i) the Complainant’s EURIZON CAPITAL mark and EURIZON FINANCIAL GROUP mark are distinctive and well-known around the world, and the Respondent must have therefore had knowledge of the Complainant’s marks as the Disputed Domain Name is confusingly similar to them;
(ii) the Disputed Domain Name is being used by the Respondent to intentionally attract users to its parking page for commercial gain, by creating a likelihood of confusion with the Complainant’s marks and diverting traffic away from the Complainant’s websites; and
(iii) the Disputed Domain Name resolves to a website that sponsors banking and financial services, which may compete with the Complainant’s services and may mislead its clients or result in the loss of potential clients.
(e) The Complainant has been a part of numerous UDRP cases where panels have ordered the transfer
or cancellation of domain names in favour...
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