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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Intesa Sanpaolo S.p.A. v. RareNames, WebReg

Case No. D2007-0671

 

1. The Parties

The Complainant is Intesa Sanpaolo S.p.A. of Torino, Italy, represented by Studio Legale Perani, Italy.

The Respondent is RareNames, WebReg of Washington DC, United States of America, represented by Lowrie, Lando & Anastasi, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <in-biz.com> is registered with TierraNet d/b/a DomainDiscover.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2007. On May 8, 2007, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On May 8, 2007, TierraNet d/b/a DomainDiscover 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced May 24, 2007. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 13, 2007. The Response was filed with the Center on June 13, 2007.

The Center appointed Brigitte Joppich, David E. Sorkin and Luca Barbero as panelists in this matter on July 16, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

 

4. Factual Background

The Complainant is a leading Italian banking group with a market capitalisation exceeding EURO 70 billion, offering its services to approximately 12 million customers. It has an average market share in Italy of approximately 20% in all industries. Moreover, an international network specialised in supporting corporate customers is present in 34 countries, amongst them the United States of America. The Complainant is the owner of two IN-BIZ trademarks, i.e. Community trademark registrations no. 002296176 (word mark) with a priority of July 9, 2001 and no. 002493799 (figurative mark) with a priority of November 19, 2001, both registered for services in international classes 36 and 38 (the “IN-BIZ Marks”).

The Respondent is in the business of registering domain names and sometimes selling them to the general public. The disputed domain name was first registered on August 26, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(i) The domain name exactly reproduces the Complainant’s IN-BIZ Marks.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name as the Respondent has not registered a trademark IN-BIZ, as the domain name does not correspond to the name of the Respondent, as the Respondent is not commonly known as “IN-BIZ”, and as the contested domain name is not used for any bona fide offering of goods or services.

(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith as the website at “www.in-biz.com” displays links to banking and financial services. The Complainant also states that it could not find any other possible legitimate use of the disputed domain name and maintains that the sole further aim of the Respondent might be to resell the domain name to the Complainant, the asking price being at least US$ 1,000 and possibly more than US$ 10,000. Finally, the Complainant notes that the Respondent already lost several domain names as a result of proceedings under the Policy.

B. Respondent

The Respondent states in general that the disputed domain name is a common phrase widely used by numerous parties, consisting of two short, common words in a common phrase to which no single party has exclusive rights. It maintains that it had no knowledge of the IN-BIZ Marks, did not register the domain name to sell it to the Complainant, to disrupt the Complainant’s business or to prevent the Complainant from acquiring a domain name reflecting its trademark. The Respondent considers the public offer for sale of a domain name comprising a common word as a bona fide business activity that is in this case part of the Respondent’s legitimate business at “www.buydomains.com”. On the website at the disputed domain name, the Respondent offers information relating to subjects of general interest to business owners and potential business owners, such services not being related to the services identified by the Complainant. Moreover, the Respondent has not offered to sell the domain name to the Complainant.

In particular, referring to paragraph 4(a) of the Policy, the Respondent contends the following:

(i) While the Respondent accepts that the IN-BIZ word mark is identical to the disputed domain name, it argues that the IN-BIZ figurative mark is neither identical with nor confusingly similar to <in-biz.com> and that the second and the third of the three elements specified in paragraph 4(a) of the Policy are not given in the present case either.

(ii) The Respondent contends that it does have rights and legitimate interests in respect of the domain name which incorporates merely common words. The phrase “in-biz” is by no means exclusively associated with the Complainant’s business. The mere ownership of a common word or phrase domain is supposed to establish in itself its owner’s rights and legitimate interests. The use of the disputed domain name by the Respondent in connection with Internet advertising for a variety of subjects of interest to business owners and individuals considering starting a business took place before any notice of the dispute and is reflecting the descriptive meaning of the domain name. The offer of the disputed domain name for sale constitutes a bona fide offering of goods or services under these circumstances.

(iii) The Respondent further contends that the domain name was neither registered nor being used in bad faith for the following reasons: The Respondent did not register or acquire the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant. Neither registration nor general offers to sell domain names which consist of generic, common or descriptive terms can be considered as acts of bad faith. The domain name was not registered by the Respondent with the Complainant’s trademark in mind, which is required to prove bad faith under the Policy. The mere offer for sale of a domain name does not establish bad faith under the Policy but, rather, is proof of the Respondent’s legitimate interests. The Respondent registered the domain name because it had expired and incorporates short, common words in a common phrase referring to business. The Respondent did not register the domain name in order to prevent the owner of the mark from reflecting it in a corresponding domain name, and it was not registered for the purpose of disrupting the business of a competitor. Finally, the Respondent is not creating any likelihood of confusion with the business of the Complainant.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark; 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.

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the IN-BIZ Marks. As the Complainant owns a word mark IN-BIZ as well as a figurative mark IN-BIZ, the Panel need not make a finding regarding identity or confusing similarity of the latter with the disputed domain name.

Furthermore, it is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity or similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

The Panel finds that the domain name is therefore identical to a trademark in which the Complainant has rights and the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Respondent has been arguing in favor of a use of the domain name in connection with a bona fide offering of services before any notice to the Respondent of this dispute. The question to be decided by the Panel in this case therefore is whether the activities of the Respondent, i.e. using an allegedly common phrase domain name, by linking to third party advertising services related to the descriptive meaning of the domain name, and by offering the disputed domain name for sale to the general public, are to be considered as having been carried out in good faith and conveying rights or legitimate interests on the Respondent.

There is no indication before the Panel that the Respondent became aware of this particular dispute prior to receiving a copy of the Complaint on May 24, 2007. The Panel is therefore satisfied that the activities to be discussed took place before any notice of the dispute to the Respondent.

- The Respondent can only claim rights or legitimate interests if it has been acting bona fide, i.e. in good faith. The arguments provided by the Complainant in this regard do not support an inference that the Respondent did indeed know of the Complainant or its IN-BIZ Marks. In the circumstances of this case and particularly in view of the sworn affidavit submitted by the Respondent, the Panel is convinced that the Respondent, in all likelihood, acted in good faith.

- The term “biz” is, as the Respondent points out, a common abbreviation of the word “business”. “In biz” therefore stands for “in business.” The Respondent has shown that many enterprises other than the Complainant rely on these words to describe their activities as well. “In biz” must, as a result, be considered as a common phrase domain name. Common words and descriptive terms are legitimately subject to registration as domain names on a “first come, first served” basis (cf. Asphalt Research Technology, Inc. v. National Press & Publishing, Inc., WIPO Case No. D2000-1005).

- Here the advertising services provided by the Respondent on the website at the disputed domain name do not justify a decision against a finding of legitimate interests. Firstly, the links are not specifically aiming at the Complainant’s area of business (e.g. by linking to Complainant’s competitors) but are all related to business affairs in general, except for a category named “lifestyle”, which may, however, reasonably be considered as an add-on for business people. The domain name is therefore used by the Respondent in its descriptive sense. Such use must be considered as legitimate (cf. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031 with further references).

- The offer to sell the disputed domain name to the general public does not prevent a finding of legitimate interests either, as the sale of domain names constitutes a bona fide offering of goods and services where the respondent is unaware of third parties’ rights in a mark (Micron Technology, Inc. v. Null International Research Center, WIPO Case No. D2001-0608).

- Finally, while the Respondent may have lost other domain names in previous cases decided under the Policy, this of itself does not warrant a conclusion that the Respondent necessarily lacks legitimate interests in the present case. Each case must be examined on its merits, and while a party’s prior conduct may be a relevant factor, the few cases quoted by the Complainant in the present proceedings are not of themselves sufficient to persuade this Panel that Respondent has engaged in a pattern of registering domain names in order to sell them to trademark owners or to trade off the goodwill of trademark owners.

Accordingly, the Panel finds that Respondent has rights to and legitimate interests in respect of the domain name at issue.

As the Complainant has failed to prove the second of the three requirements, the Panel has no need to determine further issues in order to decide this case.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: July 30, 2007