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WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Servizi Interbancari S.p.A., a corporation organized and existing under the laws of Italy, with its principal place of business at Via delle Quattro Fontane, 22, 00184 Rome, Italy.

The Respondent is Andrea Picaro, El Cimiterio 1029, Caracas, DF 30000, Venezuela.

This dispute concerns the domain names identified below:

<cartasi.net>
<cartasi.org>

The Registrar is Network Solutions, Inc.

The Complaint, dated July 9, 2001, was received in hardcopy by the WIPO Arbitration and Mediation Center (hereinafter "the Center") on July 12, 2001. The Complaint duly certified that the Respondent was properly served.

On July 13, 2001, the Center acknowledged receipt of the Complaint. On July 17, 2001, the Center sought Registrar Verification, which was received on July 18, 2001.

On July 24, 2001, WIPO duly formally notified the Respondent by FedEx and e-mail. The e-mail to cartasi098@hushmail.com, as found in the WHOIS, appears to have been received.

No response having been received, the Center notified the Respondent of his default on August 15, 2001.

The Sole Panelist, Howard P. Knopf, was appointed on August 29, 2001, after having declared his impartiality and accepted the Center's invitation.

The language of the proceedings is English.

This is a default proceeding. Since nothing submitted by the Complainant has been challenged, the Panelist will take as a fact that for which satisfactory evidence has been presented that can be accorded sufficient weight.

On this basis, the basic facts are as follows:

·The Complainant has trademark registrations in Italy for CARTASI and CARTASI & Design dating from 1991, in respect of banking and credit card services (International Class 36, Insurance and Financial).

·The Respondent, apparently an individual located in Venezuela, registered the domain names in question on or about November 11, 1999, and now uses them to link directly to a third party website that appears to be offering on line cash transfer services.

The following are the Parties' contentions, together with brief comments on the evidence or lack thereof in support.

A. Complainant

The Complainant states that is has trade-mark rights that include Italian registrations for CARTASI, namely Italian service marks for CARTASI, Registration Nos. 0555513 for CARTASI and design, Registration No. 0555985, for International Class 36 in connection with banking services including, without limitation, the granting and management of credit card services. Copies of documents in Italian purporting to substantiate these registrations are included in Exhibit D. A third Italian registration referred to in the Complaint, namely No. 00605051, does not appear to be substantiated by the filed documentation.

The Complainant further contends that CARTASI is a strong and famous mark and is a "global brand" that has been used in connection with a wide range of banking and credit card related services. The Complainant alleges that CARTASI is Italy's most important credit card, with over seven million cardholders in Italy and is famous throughout the world. However, there is no evidence whatsoever referred to or filed to substantiate these statements.

With respect to the Respondent’s rights or legitimate interest or lack thereof in the domain names in question, the Complainant contends that:

Upon information and belief, Respondent can demonstrate no use of the domain names or names corresponding thereto in connection with a bona fide offering of goods or services, Respondent has not been commonly known by the domain names, and Respondent has made no use whatsoever, let alone legitimate non-commercial or fair use, of the domain names. [Emphasis added]

No actual evidence of this allegation or the basis for the information and belief is provided.

The Complainant also contends in this context and the context of bad faith that the Respondent’s domain names "hyperlink" to a third party website, namely <neteller.com>, which "appears to be offering online cash transfer services" and provides a copy of what purports to be the home page of <neteller.com> (Exhibit "E"), and alleges that <neteller.com> is registered to one Smithwyck Financial Corp. of Toronto, Canada, and provides a copy of a WHOIS search in substantiation of this allegation (Exhibit "F").

There is no evidence provided as to when the Respondent actually began to use the domain names in question, or to make them operative for hyperlinking purposes or when and how the Complainant became aware of this registration or use. This use was clearly sometime following the registration of these domain names, which appears from the WHOIS report filed (Exhibit "A") to be November 11, 1999. There is no evidence or even any mention of any communication or attempted communication at any time between the Complainant and the Respondent.

The Complainant alleges that <cartasi.net> and <cartasi.org> "incorporate wholesale Complainant’s valuable, famous, and strong CARTASI brand as well as the CARTASI name".

Complainant goes on to allege, upon "information and belief" that the disputed domain names "are intended to refer to CARTASI, and are confusingly similar".

The Complaint contends that it had prior common law rights in the trademark CARTASI. The Complainant does not say where or when such rights might have existed. Also in this context, the Complaint alleges that:

Upon information and belief, Respondent’s purpose in registering CARTASI.NET and CARTASI.ORG was to capitalize on the fame and goodwill associated with the CARTASI trademarks and to sell them to Complainant or others for a significant profit. [Emphasis added]

There is no evidence provided on this point or as to the basis of information and belief.

As to bad faith, the Complainant alleges that that:

Respondent registered and is using the domain name CARTASI.NET and CARTASI.ORG in bad faith, with full knowledge of the world-famous strength of the CARTASI trademark. Upon information and belief, Respondent’s wholesale incorporation of Complainant’s famous and distinctive trademarks and names into the contested domain names is a willful and intentional bad faith attempt to ransom the domain names, for commercial gain, by selling them for a price grossly out of proportion to the cost of registration. This is per se bad faith under paragraph 4(b)(i) of the Policy. [Emphasis added]

B. Respondent

As indicated, this is a default proceeding. The Respondent has made no submissions.

The Complainant must prove that:

(i) the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the Respondent's domain name has been registered and is being used in bad faith.

The ICANN UDRP Rules 14(a) and 15(a) require the Panelist, in a default proceeding, to proceed on the basis of the Complaint, the statements in it and the documents filed.

With respect to the Complainant's trademark rights, for the following reasons the Panelist accepts, with some reluctance, the documentation in Italian as evidence of registration of the service marks as alleged, except for one alleged registration (No. 00605051) for which the filed documentation appears to be incomplete.

It is not completely clear as to whether ICANN UDRP Rule 11 read as a whole requires that documents (in contrast to the Complaint itself) MUST be submitted in the language of the proceedings or whether the Panelist can simply so order. The Complaint was filed, quite properly, in English according to Rule 11 of the ICANN Rules, since the registration agreement, being with Network Solutions, Inc., filed as Exhibit "B", is in English. As noted, the trademark registration material was filed in Italian. ICANN UDRP Rule 11(a) provides:

This would seem to suggest – although it is not absolutely clear (cf. WIPO Decision D2001–0566) – that a Respondent or Panel can insist that documentsmust be submitted in the language of the Registration Agreement, which is English in this case.

However, it does not appear that documents submitted in a language other than that of the administrative proceeding are per se inadmissible. The next sub paragraph deals specifically with documents. Rule 11(b) provides that a Panel can require that the evidence be translated into the language of the proceedings:

However, since the matter is proceeding by default and the Respondent has obviously not made any submissions on the point, and since the Panelist has some knowledge of the Italian language, the documents will be accepted in Italian simply as some evidence that the Complainant has registered trademark rights for CARTASI and CARTASI & Design in Italy for banking and credit card related services.

The Panelist accepts that the domain names in question (apart from the .NET AND .ORG suffixes) are identical to the Complainant's alleged trademarks.

However, the Panelist must disregard the allegation that the trademark is "famous throughout the world" and is a "global brand", since there is no evidence whatsoever provided of this. Mere statements made by the Complainant's lawyers are not evidence. If the trademark is as famous as alleged and is a global brand, it would surely have been easy to provide copies of advertisements in international publications or other evidence such as annual reports to minimally substantiate this in the usual way. Furthermore, there is no evidence provided or any mention of any trademark registrations or applications in countries other than Italy, which might have been expected in the case of a trademark allegedly "famous throughout the world".

In the absence of proof of a mark being internationally famous, and even when this is the case, there is no obvious reason why a trademark registration in one country should necessarily block entitlement to a gTLD domain name to other parties anywhere in the world. This is not the ICANN policy. Such a policy would have been easy enough to state. However, such a rule would be clearly unacceptable for many reasons, not the least of which is that any trademark registration, obtained anywhere, could then trump any subsequently obtained domain name, even if registered and used in good faith. One of the many difficulties with such a result is that all domain name registrants, even those acting in the best of faith, would be vulnerable unless they had undertaken world wide-trademark searches and avoided any confusing result. This is a very expensive and very uncertain process in terms of results for anything other than "direct hits". Needless to say, such searches do not even purport to address common law rights, if and where these may exist. Moreover, trademark rights still are fundamentally national in scope.

Absent any evidence, there is no reason to assume that the Respondent, apparently situate in Venezuela, would have been or should have been aware of the trademarks registered in Italy. Although not mentioned by the Complainant, the Panelist is aware of the <younggenius.com> decision (WIPO Case No. D2000-0591) in which a Swedish trademark registration for YOUNG GENIUS and a Swedish country code registration for <younggenius.se> (which was being used for a site involving educational software for young children) resulted in a finding against the American registrant of <younggenius.com> which was being used to link to a pornographic website.

In the instant case, no evidence has been provided of any domain name, whether a gTLD or a ccTLD, leading to a website operated by the Complainant for which CARTASI forms all or part of the domain name or in which CARTASI is even a featured element in the content of the website that might have been found by the Respondent with a simple Internet search. Nor is there any other evidence to suggest that the Respondent would have had or should have constructive notice, much less actual notice, of CARTASI as a trademark. Such evidence was provided in the <younggenius.com> case. It is not for the Panel to find such evidence, if it exists, or to consider how it may help the Complainant, if the Complainant does not even refer to it.

The Panelist cannot accept the mere allegation, based solely upon unspecified information and belief that the Respondent has no rights in the domain name CARTASI. No evidence of any attempt to investigate the affairs of the Respondent has been filed, as is frequently done in these types of cases. There is no evidence as to whether CARTASI is a coined word or, if not, whether it has any meaning or secondary meaning in Spanish or any other major language other than Italian. It is common knowledge that both CARTA and SI are common dictionary words in both Italian and Spanish.

As indicated, there is no evidence that the trademark is known outside of Italy, much less famous, other than unspecified information and belief. However, despite the failure of the Complainant's lawyers to undertake the usual and often minimal investigations to raise at least a prima facie case with direct evidence as to the Respondent's lack of legitimate interest, the Complainant can benefit in this instance from the evidence provided that the disputed domain names are being used to hyperlink [sic] to the website <neteller.com>.

The allegation that the Respondent uses the domain names to "hyperlink" [sic] to another website, namely <neteller.com>, is supported by evidence in the form of the <neteller.com> home page (Exhibit "E"). There is also a copy of a WHOIS report for <neteller.com> (Exhibit "F"), which indicates ownership by an apparent third party. The fact that the domain names in question takes the browser directly to the <neteller.com> website linkage was confirmed online by the Panelist on or about September 11, 2001. Technically, this is an example of "diverting" rather than hyperlinking but the distinction is of no consequence in the present context. The allegation that the Respondent is using the disputed domain names to "hyperlink" to a website that appears to offers cash transfer services and some other financial services might belong more properly under the rubric of bad faith than to the alleged lack of legitimate interest on the part of the Respondent.

However, the home page of <neteller.com> indicates that this is an active and functioning web site that offers cash transfer and other financial services, which appear to potentially overlap with the credit card and banking services for which the Complainant has trademark registrations in Italy. There is no indication of any connection whatsoever to the Respondent, either on its face or through the information provided in the filed WHOIS searches. These searches indicate that the owner of <netleer.com> is a firm in Toronto, Canada known as Smithwyck Financial Corporation, with no apparent connection to the Respondent, who is apparently an individual in Venezuela. Thus, the Respondent is not using the domain names in any manner that would potentially constitute an answer under Paragraph 4(c) of the UDRP Policy. In fact, the inference would be quite the contrary, especially in view of Paragraph 4(c)(iii):

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. [Emphasis added]

While this is not conclusive direct evidence of the lack of legitimate interest by the Respondent, these circumstance constitute at least some evidence that initially satisfies the onus on the Complainant to lead evidence on this issue and calls for a response by the Respondent. Since none has been provided, the Panel draws the inference that the Respondent does not have any legitimate interest in the disputed domain names.

The allegations concerning bad faith are hereby quoted once again in full:

Respondent registered and is using the domain name CARTASI.NET and CARTASI.ORG in bad faith, with full knowledge of the world-famous strength of the CARTASI trademark. Upon information and belief, Respondent’s wholesale incorporation of Complainant’s famous and distinctive trademarks and names into the contested domain names is a willful and intentional bad faith attempt to ransom the domain names, for commercial gain, by selling them for a price grossly out of proportion to the cost of registration. This is per se bad faith under paragraph 4(b)(i) of the Policy. [Emphasis added]

The allegation that the Respondent registered its domain names with "full knowledge of the world famous strength of the CARTASI trademark", even if supported by evidence, is not clearly relevant, much less dispositive, to the issue of bad faith as set forth in Paragraph 4(b) of the ICANN UDRP. It could be relevant, if not per se dispositive, if there was sufficient evidence that the Complainant's trademarks are internationally famous. But there is no such evidence in this instance, after disregarding the bare and unsupported statements of the Complainant's lawyer.

The Complainant makes a serious and specific allegations that the Respondent made an attempt to "ransom the domain names, for commercial gain, by selling them for a price grossly out of proportion to the cost of registration". (emphasis added). The Complainant's explicit argument relies solely on Paragraph 4(b)(i) of the ICANNN Rules, which covers:

The bad faith allegation of an attempt to "ransom" is explicitly based upon unspecified information and belief. Not an iota of actual evidence of the intent to "ransom" is furnished, such as e-mail correspondence or a memorandum, much less an affidavit, of an employee of the Complainant or an investigator who might have had actual knowledge of such matters. Indeed, there is no mention whatsoever of any contact between the Complainant and the Respondent during the almost two years from the time of registration by the latter to the bringing of this case.

However, the evidence with respect to the <neteller.com> website suggests that there is another possible basis on which bad faith that can be found under Paragraph 4(b). For example, in the recent decision <wwwroyalbank.com> WIPO Case No. D2001-0761 mentioned above, the diverting by a defaulting Respondent of the disputed domain names to various pornographic and other unsavory sites was found to constitute bad faith under ICANN UDRP Policy Paragraph 4(b)(iv), i.e.

In the present instance, the diverting is even more potentially pernicious in some respects than a link to a pornographic website, since it leads directly to a functioning website, namely <neteller.com>, that appears to offer services which could overlap with the services and channels of trade of the Complainant and could confuse someone looking for the Complainant.

The Complaint does state that:

The evidence presented suggests that the operators of <neteller.com> may be somehow profiting from the diversion from the disputed domain names. The <wwwroyalbank.com> decision noted above indicates that directions of traffic to third parties are probably provided for a fee. It would have been greatly preferable to have some direct evidence on this issue. Nonetheless, although the evidence provided is minimal, it does call for response and none has been given. Therefore, bad faith can and, indeed must, be inferred from this evidence and the lack of response to it. See ICANN UDRP Rules Paragraphs 14 and 15.

It is not for the Panel to conduct an investigation, to gather evidence or to devise other theories or arguments that might help a party to a UDRP dispute. ICANN UDRP Rule 14(a) provides that:

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.

Rule 15(a) provides that:

(a) A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. [Emphasis added]

This Panelist takes these two rules, read together, along with general principles of arbitral law and natural justice, to mean that, where due process has been followed (i.e. in terms of service of the Complaint and other procedural requirements), an undefended Complaint should succeed if the statements in it and the documents filed as evidence even minimally make out a case under the ICANN Policy and Rules. This is how the rules are written. However, Complainants do not prevail merely by default under the ICANN Policy and Rules. There must be some evidence to support all of the three main elements to be proven.

Overall, the present case as presented is barely documented in terms of evidence and is almost devoid of argument. No previous decisions were referred to. Translations of the trademark documents should have been provided. While there is evidence on the first essential point (i.e. confusion with a trademark in which the Complainant has rights), there is minimal evidence on the second point (lack of legitimate interest by the Respondent in the domain name) and there is simply no evidence on the key point of bad faith by means of an "attempt to ransom". There is some, albeit minimal, evidence that could sustain a finding of bad faith on other grounds as noted above.

The Complainant's case as presented is marginal. The Complainant's lawyers have made a number of allegations, including that of world wide fame of the trademarks and an attempt to "ransom" that are clearly unsupported by the evidence presented. Among other things, this approach put the merits and the outcome of the case at risk. However, fortunately for the Complainant, this is a default situation and the marginal and minimal evidence furnished and statements made shifted the burden to the Respondent to answer. Since there has been at least a minimum of evidence and no response, and the UDRP Rules permit the Panel in such circumstances to draw negative inferences if appropriate, the Complainant will prevail in this instance, despite the presentation of the Complaint.

For the foregoing reasons, the Panel hereby orders that the domain names <cartasi.net> and <cartasi.org> be transferred to the Complainant.

Howard P. Knopf
Sole Panelist

Dated: September 24, 2001