{
    "case_number": "CAC-UDRP-101433",
    "time_of_filling": "2017-02-13 10:40:43",
    "domain_names": [
        "BANKSANPAOLO.COM"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Intesa Sanpaolo S.p.A."
    ],
    "complainant_representative": null,
    "respondent": [
        "Pearson Solutions Inc. - Freyr Thorsson"
    ],
    "respondent_representative": "Core Holdings Legal Department - Latam",
    "factual_background": "The Complainant is a leading Italian banking group and also one of the protagonists in the European financial arena. Intesa Sanpaolo is the company resulting from the merger (effective as of January 1, 2007) between Banca Intesa S.p.A. and Sanpaolo IMI S.p.A., two of the top Italian banking groups.\r\n\r\nThe Complainant is among the top banking groups in the euro zone, with a market capitalisation exceeding 36,3 billion euro, and the undisputed leader in Italy, in all business areas (retail, corporate and wealth management). \r\n\r\nThe Respondent, Pearson Solutions Inc.-Freyr Thorsson, acts on behalf of Core Holdings Ltd which sponsors a charity under the legal name of „Banco San Paolo de Alimentos“ (San Paolo Food Bank). The said charity was conceived in 2014 under the guidance of several Catholic institutions in Latin America, and especially in the Republic of Colombia. As a project, it is directly sponsored by 3 major nonprofit Catholic organizations headquartered in Colombia and a private, for profit, organization established in the island of Curacao, Netherlands Antille. \r\n\r\nOn December 28, 2016, the Respondent registered the domain name <banksanpaolo.com> and uses the domain to carry out a food bank project.\r\n\r\nOn January 31, 2017, the Complainant has sent a cease and desist letter to the Respondent and the Respondent did not comply with the Complainant’s request. \r\n\r\nIn March 2017, the Respondent and the Complainant tried to settle the matter amicably. However, they have failed to finalize the settlement process and on the date of March 30, 2017 the Respondent has submitted its Response petition.  \r\n",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the disputed domain name.",
    "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\n1.\tThe Domain Name is identical or confusingly similar to the EU and IR trademarks of the Complainant and also to the Complainant’s registered domain names bearing the “INTESA SANPAOLO” phrase within.\r\nThe Complainant provides a list of its registered trademarks and domain names and claims that the disputed domain name <banksanpaolo.com> exactly reproduces the trademarks “BANCA INTESA” and “BANCA INTESA SANPAOLO” while it is highly similar to the other trademark registrations owned by the Complainant. \r\n\r\n2.\tThe Respondent has no rights or legitimate interests in the Domain Name. \r\nThe Complainant claims that the domain name at stake does not correspond to the name of the Respondent and it is not commonly known as “BANKSANPAOLO” and not any fair or non-commercial uses of the Respondent have been found.\r\n\r\n3.\tThe Domain Name has been registered and is being used in bad faith. \r\nThe Complainant referred to the deliberate provision of false\/misleading services and “phishing“ financial information. Not complying with the Complainant’s settlement request after receiving the cease and desist letter was also shown as an activity of bad faith. \r\n\r\n\r\nRESPONDENT:\r\n\r\n1.\tAs concerns the purported identicalness or confusing similarity of the Domain Name to the trademark of the Complainant: \r\n\r\nThe Respondent alleged that the Complainant has not proved that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights since the Complainant’s registered trademarks all include the distinctive “INTESA” phrase and none of them consists of the “SANPAOLO” phrase itself but only alongside with the “INTESA” phrase. Moreover, the incorporation of the phrase “BANK” shall also not be taken into account as a fact increasing confusing similarity since it is used by the Respondent in the same way with the dictionary meaning of the phrase “BANK”. \r\n\r\n2.\tAs concerns the Respondent's purported lack or rights or legitimate interests: \r\n\r\nFirstly, the Respondent stated that the term “San Paolo”, meaning “Saint Paul” in English, refers to a public term and therefore the Complainant may not have universal monopoly on the subject term. Secondly, considering that the Respondent is providing information regarding a food bank project under a religious catholic identity, the Respondent has legitimate interest on use of the phrase “BANKSANPAOLO”. Moreover, the Respondent is a non-profit making company and does not have any commercial gain from its services provided under the <banksanpaolo.com> domain name. \r\n\r\n3.\tAs concerns the purported bad faith at registration and use of the domain name:  \r\n\r\nThe Respondent alleged that, in registering the Domain Name, it was motivated by an independent intent, unrelated to the Complainant. The Respondent did not intent to attract internet users to its website. To the contrary, the Respondent did its best to dispel any possible confusion about the source of the website and increased its security after a hacker activity was reported. The Complainant nowhere argues that Respondent is its „competitor“. The Respondent claims that it had no knowledge of the Complainant at the time it registered the Domain Name. The Complainant offers no facts, evidence, or case support that the Respondent, would have had either actual or constructive knowledge of the Complainant at the time it registered the Domain Name. Finally, not responding to the cease and desist letter does not show bad faith of the applicant. \r\n\r\n4.\tReverse domain name hijacking:\r\n\r\nThe Respondent states that it duly carried out its duties and also pursued a peaceful settlement attempt in good faith which allegedly failed due to the Complainant. The Respondent claims that it is the Complainant who is acting in bad faith. \r\n",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy).",
    "no_rights_or_legitimate_interests": "The Complainant has not, to the satisfaction of the Panel, shown that the Respondent has no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).",
    "bad_faith": "The Complainant has not, to the satisfaction of the Panel, shown that the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).",
    "procedural_factors": "The Panel is satisfied that all procedural requirements under the UDRP Policy were met and there is no other reason why it would be inappropriate to provide a decision.",
    "decision": "Rejected",
    "panelists": [
        "Mrs Selma Ünlü"
    ],
    "date_of_panel_decision": "2017-04-19 00:00:00",
    "informal_english_translation": "The Complainant has submitted evidence, which the Panel accepts, showing that it is the registered owner of the following “INTESA“, “INTESA SANPAOLO“, “SANPAOLO IMI & device“, “BANCA INTESA SANPAOLO“ and “BANCA INTESA“ trademarks in several classes and domain names bearing “INTESA SANPAOLO“ phrase.\r\n\r\n-International trademark registration n. 920896 “INTESA SANPAOLO”, granted on March 07, 2007 in classes 9, 16, 35, 36, 38, 41 and 42;\r\n\r\n-EU trademark registration n. 005301999 “INTESA SANPAOLO”, granted on June 18, 2007, in classes 35, 36 and 38;\r\n\r\n-EU trademark registration n. 005421177 “INTESA SANPAOLO & device”, granted on November 5, 2007, in classes 9, 16, 35, 36, 38, 41 and 42\r\n\r\n-International trademark registration n. 793367 “INTESA”, granted on September 4, 2002 and duly renewed until September 4, 2022, in connection with class 36;\r\n\r\n-EU trademark registration n. 002803773 “INTESA”, granted on November 17, 2003 and duly renewed until August 7, 2022, in connection with class 36;\r\n\r\n-US trademark registration n. 4196961 “INTESA”, granted on August 28, 2012, in connection with class 36;\r\n\r\n- International trademark registration n. 714661 “SANPAOLO IMI & device”, granted on May 27, 1999 and duly renewed until May 27, 2019, in classes 9, 35, 36 and 42;\r\n\r\n-EU trademark registration n. 001182716 “SANPAOLO IMI & device”, granted on July 19, 2000 and duly renewed until May 24, 2019, in classes 9, 35, 36 and 42;\r\n\r\n-International trademark registration n. 831572 “BANCA INTESA”, granted on June 24, 2004 and duly renewed, in class 36;\r\n\r\n-EU trademark registration n. 005302377 “BANCA INTESA SANPAOLO”, granted on July 6, 2007 and duly renewed, in classes 35, 36 and 38.\r\n",
    "decision_domains": {
        "BANKSANPAOLO.COM": "REJECTED"
    }
}