{ "case_number": "CAC-UDRP-102267", "time_of_filling": "2018-12-18 09:15:31", "domain_names": [ "SHORTINGINTESASANPAOLO.COM", "SHORTINTESASANPAOLO.COM" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Intesa Sanpaolo S.p.A." ], "complainant_representative": "Perani Pozzi Associati", "respondent": [ "Robert Sloan" ], "respondent_representative": "A.J. Monaco Esq.", "factual_background": "The Complainant is the leading Italian banking group and is prominent in the European financial arena.\r\n\r\nThe name of the Complainant, Intesa Sanpaolo, comes from the merger on 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\nIntesa Sanpaolo is also among the top banking groups in the euro zone.\r\n\r\nThe Complainant has a network of approximately 4,400 branches and 11,9 million customers in 25 countries.\r\n\r\nThe Complainant is the owner of the following among other registrations for the trademark INTESA SANPAOLO:\r\n\r\n- International trademark registration n. 920896 for INTESA SANPAOLO, registered on March 7, 2007 and duly renewed, in classes 9, 16, 35, 36, 38, 41 and 42, covering also Australia, China, United States of America, Japan, Russian Federation and many others;\r\n\r\n- EU trademark registration n. 5301999 for INTESA SANPAOLO, applied for on September 8, 2006, registered on June 18, 2007 and duly renewed, in classes 35, 36 and 38;\r\n\r\n- EU trademark registration n. 5421177 INTESA SANPAOLO & device, applied for on October 27, 2006, granted on November 5, 2007 and duly renewed, in classes 9, 16, 35, 36, 38, 41 and 42.\r\n\r\n(hereinafter collectively referred to as \" the INTESA SAN PAOLO trademarks\").\r\n\r\nThe Complainant is also the owner of the following among other domain names that include the trademark INTESA SANPAOLO: , , , , and and also , , , , and (\"the Intesa San Paolo domain names\"). All of them are now connected to the official website of the Complainant at http:\/\/www.intesasanpaolo.com.\r\n\r\nOn August 9, 2018, the Respondent registered the domain names and (hereinafter collectively referred to as \" the disputed domain names\").\r\n\r\nThe Complainant is concerned about the existence of the two disputed domain names and that they refer to alleged shorting of shares in the Complainant. The Respondent maintains that the registration of the domain names is protected as an exercise in free speech. The Complainant has therefore filed the present Complaint and has requested the transfer of the disputed domain names to itself.", "other_legal_proceedings": "None of which the Panel is aware.", "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant has made the following contentions.\r\n\r\nThe Complainant is the owner, among other trademarks, of the INTESA SAN PAOLA trademarks and is the registered domain name holder of the Intesa San Paola domain names. \r\n\r\nOn August 9, 2018, the Respondent registered the domain names and (\"the disputed domain names\").\r\n\r\nTHE DISPUTED DOMAIN NAMES ARE IDENTICAL AND\/OR CONFUSINGLY SIMILAR\r\n\r\nThe disputed domain names are almost identical to the Complainant’s trademarks, as they exactly reproduce the wording INTESA SAN PAOLO with the addition respectively of the descriptive words “shorting” and “short” (a finance expression meaning “short sale”).\r\n\r\nConsidering the banking and financial context in which the Complainant operates, it is undeniable that the disputed domain names will appear to be even more confusingly similar to the business carried out under the INTESA SAN PAOLO, trademarks, as they will be interpreted by internet users as a reference to the Complainant’s activity in the financial market.\r\n\r\nThe disputed domain names are therefore either identical to the INTESA SAN PAOLO trademarks or alternatively confusingly similar to them.\r\n\r\n\r\nTHE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAMES\r\n\r\nThe Respondent has no rights to the disputed domain names, since Robert Sloan has nothing to do with Intesa Sanpaolo. In fact, any use of the INTESA SAN PAOLO trademarks has to be authorized by the Complainant. Nobody has been authorized or licensed by the Complainant to use the INTESA SAN PAOLO trademarks in the disputed domain names.\r\n\r\nThe Respondent is not commonly known by the disputed domain names and, to the best of the Complainant's knowledge, Robert Sloan is not commonly known as “SHORTINGINTESASANPAOLO” and\/or “SHORTINTESASANPAOLO”.\r\n\r\nThe Respondent has not engaged in any fair or non-commercial use of the disputed domain names, as can be seen from the websites at www.shortingintesasanpaolo.com and www.shortintesasanpaolo.com.\r\n\r\n\r\nTHE DISPUTED DOMAIN NAMES WERE REGISTERED AND ARE USED IN BAD FAITH\r\n\r\nThe INTESA SAN PAOLO trademarks are distinctive and well-known all around the world. The fact that the Respondent has registered two domain names that are confusingly similar to them indicates that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain names.\r\n\r\nIn addition, if the Respondent had carried out even a basic Google search in respect of the wording INTESA SAN PAOLO, the same would have yielded obvious references to the Complainant. The Complainant submited an extract of a Google search in support of its allegation. This raises a clear inference of actual knowledge of the Complainant’s trademarks on the part of the Respondent. Therefore, it is more than likely that the disputed domain names would not have been registered if it were not for Complainant’s trademarks and the Respondent's knowledge of them. This is clear evidence of registration of the domain names in bad faith.\r\n\r\nIn addition, the disputed domain names are not used for any bona fide offerings. More particularly, there are present circumstances indicating that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website (par. 4(b)(iv) of the Policy).\r\n\r\nFirst of all, several offerings of services can be detected, but not in good faith: in fact, the domain names are connected to a website sponsoring, among others, banking and financial services, for whom the Complainant’s trademarks are registered and used.\r\n\r\nConsequently, Internet users, while searching for information on the Complainant’s services, are confusingly led to the websites of the Complainant’s competitors, sponsored on the websites connected to the disputed domain names.\r\n\r\nTherefore, the Complainant submits that the Respondent has registered and is using the disputed domain names in order intentionally to divert traffic away from the Complainant’s website.\r\n\r\nThese submissions are consistent with and supported by previous UDRP decisions to the effect that the registration and use of a domain name to re-direct internet users to websites of competing organizations constitutes bad faith registration and use under the Policy, namely Encyclopedia Britannica Inc. v. Shedon.com, WIPO Case No. D2000-0753; YAHOO! INC. v. David Murray, Case No. D2000-1013; Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319; Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768; Oly Holigan, L.P. v. Private, Case No. FA0011000095940; Marriott International, Inc. v. Kyznetsov, Case No. FA0009000095648; Zwack Unicom Ltd v. Duna, WIPO Case No. D2000-0037; Schneider Electric SA v. Ningbo Wecans Network Technology Co., Ltd, Ningbo Eurosin International Trade Co., Ltd., Case No. D2004-0554; Microsoft Corporation v. StepWeb, Case No. D2000-1500; Baudville, Inc. v. Henry Chan, Case No. D2004-0059; and National City Corporation v. MH Networks LLC, Case No. D2004-0128.\r\n\r\nThe use of the disputed domain names, which has allowed access to the websites of the Complainant’s competitors, also through the Complainant’s trademark, causes, as well, great damage to the latter, due to the Respondent misleading the Complainant's present clients and to the loss of potential new clients. So, the Respondent’s conduct is even worse (see WIPO Decisions n. D2000-1500, Microsoft Corporation v. StepWeb, and D2001-1335, The Vanguard Group, Inc v. Venta). \r\n\r\nThe Respondent’s commercial gain is evident, since it is obvious that the Respondent’s sponsoring activity is being remunerated.\r\n\r\nMoreover, it is no coincidence that this speculation has involved a big financial institution such as Intesa Sanpaolo. In fact, the diversion practice in the banking realm is very frequent due to the high number of on line banking users. In fact, it has also to be pointed out that the Complainant has already been part of other UDRP cases where the Panelists ordered the transfer or the cancellation of disputed domain names, finding bad faith in the registration of the domain names. \r\n\r\nIn the light of the above, the disputed domain names have been registered and used in bad faith third and thus the final element necessary for finding that the Respondent has engaged in abusive domain name registration and use has been established.\r\n\r\n\r\nRESPONDENT:\r\nThe Respondent has made the following contentions.\r\n\r\n\r\nPRELIMINARY STATEMENT\r\n\r\nBy way of preliminary statement, Respondent Bob Sloan states as follows.\r\n\r\nComplainant Intesa Sanpaolo (“Intesa”) is abusing this forum and tribunal in a blatant effort to preemptively suppress speech that it finds inconvenient. The disputed domain names complained of, and (the “Domain Names”), were registered on behalf of an affiliate of S3 Partners (“S3”), an American financial technology company. See https:\/\/www.s3partners.net\/ S3 is in the business of providing information to investors. Specifically, Respondent acquired the Domain Names for the purpose of S3’s business of providing and aggregating commentary, data and analytics concerning the performance of Intesa’s stock. Intesa is a publicly traded company, and Respondent has the absolute right to comment on Intesa’s performance and stock prospects under the laws of the United States, the European Union, Italy and the Czech Republic.\r\n\r\nAs S3 and Intesa are involved in entirely different businesses, there is no likelihood that the public will be confused by the Domain Names and Intesa has not provided a shred of evidence that a single consumer has been so confused. Moreover, the terms “SHORT” and “SHORTING” are obvious indicators for “short selling,” which is the process by which a trader profits when a security’s price declines. It is absurd to suggest that Intesa has a legitimate interest in protecting a domain name that promotes information relating to short selling its stock, or that the public is likely to be confused by the Domain Names.\r\n\r\nEach of these points is explored further below.\r\n\r\nTHE DISPUTED DOMAIN NAMES HAVE NOT BEEN REGISTERED IN BAD FAITH\r\n\r\nNO LIKELIHOOD OF CONFUSION EXISTS\r\n\r\nFounded in 2003, S3 Partners is a financial technology company. See https:\/\/www.s3partners.net\/ S3’clients use its software, data and analytics for better outcomes in their investment processes, risk management, counterparty relationships, and investor relations. S3’s data and analytics are available to over 600,000 market professionals via Bloomberg and Reuters. See https:\/\/www.s3partners.net\/ Importantly, S3 also provides all NASDAQ listed companies with short interest analytics. See https:\/\/shortsight.com\/ .\r\n\r\nComplainant Intesa Sanpaolo, on the other hand is a major Italian bank, with business units including commercial banking, corporate and investment banking, and wealth and asset management. See https:\/\/www.group.intesasanpaolo.com\/ and https:\/\/en.wikipedia.org\/. See also Complaint (“Intesa Sanpaolo is among the top banking groups in the euro zone.”).\r\n\r\nIn other words, the two companies are in entirely different business, and do not compete with each other. Respondent and S3 can neither divert business, not gain a competitive advantage, over Intesa. \r\n\r\nAnd although the Domain Names do not currently resolve to S3 webpages, all currently active S3 webpages contain prominent Intellectual Property Disclaimers in their Terms of Service that are meant to ensure that there is no confusion as to the sponsorship of the websites. These disclaimers prominently demonstrate that the webpages were created and maintained by S3, and that any company names mentioned therein (such as Intesa) are the intellectual property of their holders, who do not endorse any information or opinions expressed on the webpage. See https:\/\/shortsight.com\/ .\r\n\r\n\r\nTHE DISPUTED DOMAIN NAMES ARE NEITHER IDENTICAL NOR CONFUSINGLY SIMILAR TO THE PROTECTED MARK\r\n\r\nWhile the Domain Names complained of, and , do contain Complainant’s name, they are neither identical to nor confusingly similar to Complainant’s website www.intesasanpaolo.com. The Domain Names are not close misspellings or close variations of the type for which this tribunal has found infringement because it is unlikely that the public will be confused by the dissimilar Domain Names. For example, potentially infringing domain names would be , or . Either of these examples could potentially confuse the public as to the source of the domain name. However, this tribunal has found that Domain Names that are neither identical or confusingly similar do not constitute infringement. See SANATORIUMS.COM s.r.o. v. Organization Book sanatorium s.r.o., Case No. 102204 (CAC Dec. 5, 2018); AMUNDI S.A. v. Autorenwerft GmbH, Case No. 102063 (CAC Oct. 1, 2018); Fitness People B.V. v. Fit2B LLC, Case No. 101571 (CAC Aug. 3, 2017).\r\n\r\nHere, on the other hand, the Domain Names begin with the words “SHORT” or “SHORTING.” These words are an obvious indicator of short selling, which is the process by which a trader profits when a security’s price declines. As mentioned above, S3 provides all NASDAQ listed companies with short interest analytics. See https:\/\/shortsight.com\/ Complainant Intesa obviously wishes to see the price of its stock increase. It is therefore absurd for Intesa to argue that the public is likely to be confused, and believe that Intesa is the source of information pertaining to short selling of its own stock.\r\n\r\nIt is equally absurd for Intesa to argue that members of the public, when searching for information regarding the services offered by Intesa, would conduct a search using the words “SHORT” or “SHORTING.” Nor is an internet search for Intesa likely to lead the public to the complained of Domain Names. The evidence bears this out. A Google search for “Intesa SanPaolo does not suggest “Short” or “Shorting” as searches “related to Intesa SanPaolo.” Nor do the complained of Domain Names appear within the first ten pages of results from a Google search for “Intesa SanPaolo.” \r\n\r\nMoreover, the fact that Complainant has not provided a shred of evidence that a single person has been confused by the Domain Names only underscores the fact that they are not confusingly similar to the Complainant’s mark.\r\n\r\nRESPONDENT HAS THE ABSOLUTE RIGHT TO PROVIDE COMMENTARY REGARDING COMPLAINANT AND THE PERFORMANCE OF COMPLAINANT’S STOCK\r\n\r\nIntesa’s sole grounds for seeking to seize Respondent’s property is the fact that Intesa’s name is used in the complained of Domain Names. Yet it is beyond cavil that this fact alone is not dispositive, and that Respondent may fairly use Intesa’s name and mark. See SANATORIUMS.COM s.r.o. v. Organization Book sanatorium s.r.o., Case No. 102204 (CAC Dec. 5, 2018); AMUNDI S.A. v. Autorenwerft GmbH, Case No. 102063 (CAC Oct. 1, 2018); Fitness People B.V. v. Fit2B LLC, Case No. 101571 (CAC Aug. 3, 2017).\r\n\r\nMoreover, as described above, S3 is in the business of compiling data and providing analysis to aid in making investment decisions. As such, S3 possesses the fundamental free speech right to comment on Intesa regardless of whether Intesa finds that commentary objectionable or inconvenient. See Constitution of the United States of America, Amendment 1 (“Congress shall make no law…abridging the freedom of speech, or of the press…”; Charter of Fundamental Rights of the European Union, Article 11 (“Everyone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers.”); Constitution of the Italian Republic, Article 21 (“Anyone has the right to freely express their thoughts in speech, writing, or any other form of communication.”); Czech Republic Charter of Fundamental Rights and Basic Freedoms, Article 17, Paragraph 2 (“Everyone has the right to express their opinion in speech, in writing, in the press, in pictures, or in any other form, as well as freely to seek, receive, and disseminate ideas and information irrespective of the frontiers of the state.”\r\n\r\nTHE DISPUTED DOMAIN NAMES ARE INACTIVE AND DO NOT LEAD TO A WEBSITE SPONSORING BANKING OR FINANCIAL SERVICES\r\n\r\nBecause it knows that the Domain Names are not being used in bad faith, Intesa pretends that the Domain Names resolve to a website “sponsoring, among others, banking and financial services.” This contention is false. The Domain Names are inactive, and they resolve to a “parked” webpage hosted by GoDaddy. Neither Respondent nor S3 receives any compensation whatsoever from Go Daddy for the parked website, and Intesa provides no evidence otherwise. Nor does any person or entity affiliated with or controlled by Respondent or S3 receive any compensation for the parked website. Nor does Respondent or S3 – or any of their affiliates – control GoDaddy, which controls the “parked” website. Moreover, it appears that GoDaddy suggests that people who search for “short” or “shorting,” also frequently search for such terms as “buy stock,” “trading stocks,” and “dividend stocks,” which supports Respondents’ contention that people who search for “short” or “shorting” are not likely to be searching for the products that Intesa offers.\r\n\r\nMoreover, as this tribunal has stated, “The concept of “passive holding” of a domain name requires [Complainant] to prove cumulative circumstances found to be indicative of bad faith.” EUTELSAT S.A. v. kesk, Case No. 102237, (CAC Jan. 4, 2019). The burden of proof is on the Complainant to demonstrate bad faith, and the Panel must examine all circumstances. Id. In the EUTELSAT decision, this Tribunal enumerated several factors that a panel must take into account when involving a case concerning a “lack of active use.” “Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant’s concealment of its identity” Id. citing Telstra Corporation Ltd. v. Nuclear Marchhmallows, WIPO decision D2000-0003. Taking those factors into account, this tribunal still rejected EUTELSAT’s complaint under circumstances wherein the complained of domain name was actually confusingly similar to EUTELSAT’s. Id.\r\n\r\nHere, S3 has never offered to sell the Domain Names to Intesa, and has no intention of ever doing so. Moreover, S3 has responded to this Complaint, and the domain name has not been registered anonymously. Moreover, as noted above, the Domain Names – which again are not confusingly similar to Intesa’s – simply resolve to a “parked” website over which Respondent has no control. As such, given this Tribunal’s prior EUTELSAT precedent, this Panel must find that Complainant has failed to carry its burden to establish bad faith on the part of Respondent.\r\n\r\nShould S3 eventually decide to sell its data and analysis concerning the short selling of Intesa’s stock, any such activity would fall squarely within the doctrine of nominative fair use. Cf. YETI Coolers, LLC v. Asbille, Tony \/ Global Star Medical, FA 1606001677837 (Forum July 5, 2016). Finally, Intesa’s annexation of a lengthy list of cases with which it has been involved is evidence of nothing more than Intesa’s litigiousness.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or 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, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy). ", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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 UDRP were met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "The Hon. Neil Brown, QC" ], "date_of_panel_decision": "2019-01-24 00:00:00", "informal_english_translation": "It has been established by evidence that the Panel accepts that the Complainant is the owner of several trademarks referred to in more detail below and defined as \"the INTESA SAN PAOLO trademarks.\"", "decision_domains": { "SHORTINGINTESASANPAOLO.COM": "TRANSFERRED", "SHORTINTESASANPAOLO.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }