Pirelli & C. S.p.A. v. p Zero
Claim Number: FA0710001087132
Complainant is Pirelli
& C. S.p.A. (“Complainant”),
represented by Anna Maria Bardone, of Porta, Checcacci & Associati S.p.A., Via Trebbia 20,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <p-zero.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mark McCormick, Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2007.
On October 1, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <p-zero.com> domain name is registered with Tucows Inc. and that the Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on October 26, 2007.
A timely additional submission was received from Complainant on October 31, 2007. A timely additional submission was received from Respondent on November 5, 2007.
On November 6, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts rights in the PZERO mark by reason of numerous trademark registrations and contends that the disputed <p-zero.com> domain name is confusingly similar to its mark. Complainant alleges that Respondent has no rights or legitimate interests in the <p-zero.com> domain name and is not commonly known by the name. Complainant also accuses Respondent of using hyperlinks to the domain name to divert Internet users to competitors of Complainant, which is not a bona fide offering of goods and services. Complainant alleges Respondent registered and is using the domain name in bad faith for his commercial benefit in receiving “click-through” fees to websites offering services like those of Complainant, taking advantage of the confusion between Complainant’s mark and the disputed name and disrupting Complainant’s business.
Respondent admits that the <p-zero.com> domain name is confusingly similar to Complainant’s PZERO mark. He contends that he originally registered the <p-zero.com> domain name in 2003 in connection with his band, which he named p-zero based on a physics term, written Po, representing zero pressure value in equations. The name was used for Respondent’s website until January 2007, after the band became inactive in 2006. In January 2007, Respondent started using the website for an on-line blog to keep a diary of his running and triathlon activities. He contends these uses show his rights and legitimate interests in the domain name. He denies the allegation of bad faith, asserting any visitor to his website would know at once he had no connection with Complainant. He states his interest in sports does not involve automobile or motorcycle racing which might be associated with Complainant’s goods and services. He contends he has never pretended to have a relationship with Complainant and that he has no control over Google’s links. He argues that his advertising is related to running and triathlons, not to businesses similar to Complainant’s.
C. Additional Submissions
Complainant contends Respondent did not show Complainant knew of Respondent’s use of the <p-zero.com> domain name for his band before January 2007 and no such use was shown, in any event. Complainant says its objection is to Respondent’s use of the domain name for links in the sports field. Complainant contends that its complaint is about present use and that Respondent’s advertising will lead Internet users to websites of competitors of Complainant. Respondent in his additional submission, asserts that Complainant’s inclusion of a printout of a page of his website as it existed for purposes of Respondent’s band demonstrates that Complainant knew of such use prior to January 2007. Respondent asserts he in fact used the website to provide news and information about the band from April 2003 until January 2007. Respondent contends that his lack of substantial revenue from advertising helps establish he is not attempting to earn a profit by misleading Internet users at Complainant’s expense.
Complainant has rights in the PZERO mark through trademark registration. Respondent formed a band called p-zero and registered the domain name <p-zero.com> in 2003 for a website for his band. The band never got any bookings and disbanded in late 2006. In the meantime, Respondent had taken up running and started doing triathlons. He started using the website in January 2007 for an on-line blog for his family and friends to keep up with his running and triathlon activities. If his band should re-form, he would use the website again for the band. The problem here arose when Respondent engaged a third-party advertising service to display hyperlinks on his website in the hope of obtaining some click-through revenue to help pay for his athletic activities.
At the time Respondent registered the domain name, and during the period he used it to provide news and information about his band, there were no advertising links on the website. The advertising links subsequently placed there might take an Internet user to a website that markets a product similar to one of the many products of Complainant, such as a bike tire, but the record does not show that Respondent has set out to attract Internet users to his website to divert them to websites of competitors of Complainant. The main purpose of Complainant’s current use of the website is to record his running and triathlon experiences.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Respondent admits that his disputed domain name <p-zero.com> is confusingly similar to Complainant’s mark PZERO. Complainant has thus established the domain name is confusingly similar to Respondent’s mark under Policy 4(a)(i).
Even though Respondent registered the domain name for a legitimate purpose, that is to have a website for his band which he named p-zero for reasons unrelated to Complainant, he was not commonly known by the disputed domain name prior to its registration. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003). The fact that Respondent’s website currently contains hyperlinks that could divert an Internet user seeking Complainant’s famous products to the website of a competitor shows that Respondent’s current use of the website is not for a bona fide offering of goods and services within the meaning of Policy 4(c)(ii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
At the time Respondent registered the disputed domain name <p-zero.com> he did so in good faith. He did not register the domain name in bad faith under Policy 4(a)(iii). See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005). Moreover, he is not attempting to confuse Internet users and to divert them to the websites of Complainant’s competitors.
An Internet user who finds Respondent’s website by mistake while looking for Complainant’s products would quickly recognize that Respondent’s blog devoted to his experiences and plans regarding triathlon events has no relationship with Complainant. Bad faith registration and use has not been proven within the meaning of Policy 4(c)(iii). See Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000).
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Mark McCormick, Panelist
Dated: November 19, 2007
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