The Complainants are Intesa Sanpaolo S.p.A. of Torino and Cassa di Risparmio di Terni e Narni S.p.A of Terni, Italy, represented by Perani Pozzi Tavella, Italy.
The Respondent is Carit Inc., Singapore.
The disputed domain name <carit.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2010. On March 5, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 6, 2010, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 31, 2010.
The Center appointed David J.A. Cairns as the sole panelist in this matter on April 8, 2010. 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.
The Complainants are two Italian corporations. Intesa Sanpaolo S.p.A is a leading Italian banking group with a network of branches and subsidiaries throughout Italy and with approximately 11 million customers. It has an international network specialising in supporting corporate customers with a presence in thirty-four countries.
Cassa di Risparmio di Terni (also known as ‘CARIT') was incorporated in 1846 and subsequently merged to form Cassa di Risparmio di Terni e Narni. Cassa di Risparmio di Terni e Narni is a now a regional bank and part of the Intesa Sanpaolo group.
Cassa di Risparmio di Terni e Narni is the registered owner of the Italian trademark registration Nº 1114377 for the word and design mark CARIT, based on an original filing date of July 19, 1994.
Intesa Sanpaolo S.p.A is the registered owner of the <carit.it> domain name. The word CARIT appears as a trademark on the homepage of this website, although not in exactly the same form as the registered CARIT trademark.
The Respondent registered the disputed domain name on February 20, 2008. The Panel visited the website at the disputed domain name on April 9, 2010. The landing page consists of a single statement: “This domain is for sale—Limited offer USD 4,850 (This price is strictly non-negotiable) with Escrow.com.”
The Complainant states that the disputed domain name exactly reproduces the acronym and trademark CARIT and therefore is identical to a trademark in which the Complainants' have rights.
The Complainants state that the Respondent has no rights of legitimate interest in the disputed domain name. The Respondent is Carit Inc. and the registered address is in Singapore but a search in the database of the Singapore Company Registry shows that Carit Inc does not exist and the address also appears to be false. Further, the domain name is simply for sale and is not being used for any bone fide purpose.
The Complainants state that the disputed domain name was registered and is being used in bad faith. The Complainants rely particularly on paragraph 4(b)(i) of the Policy and state that the disputed domain name is being offered for sale at a price that exceeds out-of-pocket costs. The provision of false contact information is further evidence of bad faith.
The Respondent did not reply to the Complainants' contentions.
The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.
Paragraph 4(a) of the Policy requires the Complainants to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.
The Panel accepts that the Complainant Cassa di Risparmio di Terni e Narni S.p.A. owns the Italian registration for the CARIT trademark referred to above.
The CARIT trademark registration includes a design element. The significance of the design elements of a registered trademark for the purposes of the comparison required under the first element of the Policy was considered in Mondial Assistance S.A.S. v. Compana LLC, WIPO Case No. D2007-0965, where the Panel stated:
“There is the question of the significance of the design elements of a registered trademark for the purposes of determining confusing similarity under the Policy. As a matter of logic, the design element is a part of the ‘trademark or service mark in which the complainant has rights' for the purposes of paragraph 4(a) of the Policy, and therefore should be considered for the purposes of determining ‘confusing similarity'. However, there is no doubt that the practice of panels has often been to concentrate only on the word element of the trademark for the purposes of comparison with the disputed domain name.”
In the present case the design elements relate to the stylised form of the first three lettters of the trademark. Given the relative level of significance of the word and design elements of the registration, confirmed by the evidence of the Complainants' use of the CARIT trademark without the design elements (for example, in the <carit.it> domain name, and on the landing page of the website at this address), the Panel considers that in this case it is appropriate to disregard the design element of the registration. The Panel therefore finds that the disputed domain name is identical to the CARIT trademark, and the first element of the Policy is satisfied.
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent owns or has contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorised or licensed by the Complainants to use the CARIT trademark or to register and use the disputed domain name; (iii) the evidence of proposed use of the disputed domain name points to commercial gain through resale, and so the Panel concludes that the circumstances described in paragraph 4(c)(i) and (iii) of the Policy do not exist in the present case.
The Respondent is called Carit Inc., raising the possibility that it is commonly known by the disputed domain name withing the meaning of paragraph 4(c)(ii) of the Policy. However, apart from the disputed domain name registration itself there is no verification that Carit Inc. exists or that this is the Respondent's true name. Indeed, the Complainants have submitted evidence that there is no company of this name registered in the Singapore Company Registry, and has pointed to other inaccurate information in the registration details to suggest the registration information might be false. In these circumstances the Panel is not satisfied that the Respondent is commonly known by the disputed domain name, and therefore paragraph 4(c)(ii) of the Policy has no application.
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have acquired rights or legitimate interests in respect of the domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainants state that the Respondent is guilty of bad faith within the meaning of paragraph 4(b)(i) of the Policy in that it acquired the disputed domain name primarirly for the purpose of selling the disputed domain name to the Complainants for valuable consideration in excess of its out-of-pocket costs.
The disputed domain name is currently offered for sale at a price that substantially exceeds the Respondent's likely out-of-pocket costs, and it can be concluded that the disputed domain name was registered and is being used for the purpose of commercial sale. It has not been specifically offered to the Complainants or a competitor of the Complainants, but rather to Internet users at large. There is no evidence that the Respondent knew of the Complainants' rights prior to this proceeding. However, after receiving notice of this proceeding the Respondent has continued to offer the domain name for sale at the same price, and has not provided any bona fide explanation for the registration of the disputed domain name. The Panel concludes that the Respondent acted at the time of and since registration with an indifference to possible trademark rights in the disputed domain name and with the intention of commercial gain in spite of any trademark rights, and that this constitutes bad faith within the meaning of the Policy.
There is also corroborative evidence of indifference to the legitimate rights of others in the disputed domain name and of bad faith in the provision of inaccurate contact information.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 name <carit.com> be transferred to the Complainant Cassa di Risparmio di Terni e Narni S.p.A.
David J.A. Cairns
Dated: April 16, 2010