PIRELLI & C. S.p.A. v. Domain Drop S.A.
Claim Number: FA0706001021045
Complainant is PIRELLI & C. S.p.A. (“Complainant”), represented by Cristina
Cazzetta, of PORTA, CHECCACCI & ASSOCIATI S.p.A.,
Via Trebbia 20,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pirellifil.com>, registered with Belgiumdomains, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July
3, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 23, 2007
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@pirellifil.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pirellifil.com> domain name is confusingly similar to Complainant’s PIRELLI FILM mark.
2. Respondent does not have any rights or legitimate interests in the <pirellifil.com> domain name.
3. Respondent registered and used the <pirellifil.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pirelli & C. S.p.A., is a multinational
corporation based in
Respondent registered the <pirellifil.com> domain name on March 22, 2006. Respondent’s domain name resolves to a
website featuring links to Complainant’s own website at the
<pirellifilm.com> domain name, as well as links to various third-party
websites, some of which are in direct competition with Complainant. Respondent has also been the respondent in
several previous UDRP decisions in which the disputed domain names in those
cases were transferred from Respondent to the respective complainants. Implus Footcare LLC v. Domain Drop S.A., FA 741848 (Nat. Arb.
Forum
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad
faith.
The Panel first finds that Complainant’s registration of the PIRELLI FILM mark with the IPO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant alleges that Respondent’s <pirellifil.com> domain name is confusingly similar to
Complainant’s PIRELLI FILM mark. The
Panel agrees, as the disputed domain name simply deletes the letter “m” from
the end of the mark and adds the generic top-level domain (“gTLD”) “.com” onto
the mark. Previous panels have found,
and this Panel so finds, that the mere deletion of a letter from a mark does
not negate any confusing similarity between the mark and a corresponding domain
name. Moreover, the addition of a gTLD
to a mark is irrelevant to the Policy ¶ 4(a)(i)
analysis, as a top-level domain is a required element of all domain names. Thus, the Panel finds that the <pirellifil.com> domain name is
confusingly similar to Complainant’s PIRELLI FILM mark pursuant to Policy ¶ 4(a)(i). See Compaq
Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <pirellifil.com> domain name. Under Policy ¶ 4(a)(ii), the initial burden of proof lies with Complainant to show that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, however, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. In the present case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Based on Respondent’s failure to respond to the Complaint,
the Panel presumes that Respondent lacks rights or legitimate interests in the <pirellifil.com> domain
name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“Given Respondent’s failure to submit a substantive answer in a timely
fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
Pursuant to Policy ¶ 4(c)(ii), Complainant alleges that Respondent is not commonly known by the <pirellifil.com> domain name, which indicates that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent’s WHOIS information does not indicate, and there is no further evidence in the record to suggest, that Respondent is commonly known by the disputed domain name. In addition, Respondent is not authorized or licensed by Complainant to use the PIRELLI FILM mark for any purpose. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the <pirellifil.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Furthermore, Respondent’s <pirellifil.com> domain name resolves to a website containing
links to Complainant’s own website at the <pirellifilm.com> domain name,
as well as links to Complainant’s direct competitors. The Panel presumes that Respondent accrues
click-through fees when Internet users click on these links. This does not qualify as either a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb.
Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the
complainant’s marks to send Internet users to a website which displayed a
series of links, some of which linked to the complainant’s competitors, was not
a bona fide offering of goods or services); see also Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <pirellifil.com> domain name to display links to the websites of Complainant’s direct competitors. This constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a company financially linked to the complainant’s main competitor, registered and used the domain name in question to disrupt the complainant’s business).
As mentioned previously, the website that resolves from Respondent’s <pirellifil.com> domain name, which is confusingly similar to Complainant’s PIRELLI FILM mark, contains links to Complainant’s own website and the websites of its direct competitors. The Panel presumes that Respondent benefits commercially when users click on these links, which indicates that Respondent is capitalizing on the likelihood that users will become confused as to Complainant’s affiliation with the website. This is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
In addition, Respondent has been the respondent in several
previous UDRP decisions in which the disputed domain names in those cases were
transferred from Respondent to the respective complainants. Implus Footcare LLC v. Domain Drop S.A., FA 741848 (Nat. Arb.
Forum
The Panel thus finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pirellifil.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 10, 2007
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