PIRELLI & C. S.p.A. v. Oakwood Services Inc.
Claim Number: FA0712001118584
Complainant is PIRELLI & C. S.p.A. (“Complainant”), represented by Porta,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zero.net>, registered with Compana, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Charles A. Kuechenmeister, David E. Sorkin and Dr. Reinhard Schanda, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 13, 2007.
On December 28, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <zero.net> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 January 14, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2008 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 February 4, 2008.
A timely and complete Additional Submission from Complainant was received on February 8, 2008.
On February 21, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister, David E. Sorkin and Dr. Reinhard Schanda, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is the owner of numerous trademark
registrations and applications with the keywords “PZERO,” “ZERO,” and “ZERO.” The domain name at dispute was registered on
July 7, 2003 by Respondent well after Complainant’s trademark registrations and
applications. According to Complainant,
the domain name at dispute constitutes usurpation and violation of the rights
of the Complainant with regard to its trademarks registered in
Complainant is one of the world’s best-known Italian brand names, especially through the widespread distribution of the tyres produced in 22 factories located in 10 different countries. In particular, Complainant’s tyre is the world leader in the field of tyres for high performance cars, in both the original equipment and aftermarket segments. In this regard Complainant is constructing an innovative tyre suitable for road traffic but with all the typical characteristics of racing tyres called “PZero” since 1987.
Complainant contends that the domain at dispute is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights. Complainant enjoys extensive rights in the PZERO and ZERO marks. Complainant has used the PZERO and ZERO marks for many, many years in connection with tyre sector and in clothing design. In addition, Complainant owns and actively uses the marks PZERO and ZERO as its domain name, namely <pzero.it>, <pzero.mobi>, <pzeroweb.mobi>, <pzerocollection.com>, <pzeroweb.it>, <pzeroclub.com>, <pirellipzero.com> <pzeronero.com>, <pzeroassoluto.it> <pzeroassoluto.com>, <pzeroassoluto.net>, <pzeroassoluto.org>. Respondent’s domain name is confusingly similar to Complainant’s PZERO/ZERO marks because the slight differences are insufficient to distinguish Respondent’s domain name from Complainant's mark.
The damage suffered by Complainant, due to the
registration of the domain name at dispute by Respondent, can clearly be seen
from the attempt to exploit the renown of the name ZERO/PZERO widely recognized
Complainant contends that ZERO and PZERO are well-known and distinctive well-recognized names in the field of tyres and in general in the world of sport. The domain name at dispute contains the word ZERO of Complainant's ZERO/PZERO mark in its entirety. In view of these circumstances, there is no reasonable possibility that the domain name was selected by Respondent for any purpose other than a brazen attempt to create a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Such an attempt is further evidence of the registration and use of a domain name in bad faith.
The core that characterises the disputed domain name is the word "ZERO." It is totally identical to the "heart" of the brand name of Complainant. Respondent is using a domain name confusingly identical/similar to Complainant’s domain names and/or its famous trademarks ZERO/PZERO to ensnare unsuspecting Internet users.
Indeed, Respondent operates a web portal, offering links and information regarding cars, amongst other things. As such, Respondent is unfairly and opportunistically appropriating the goodwill associated with Complainant's famous ZERO/PZERO marks in connection with all that is linked with the cars.
Complainant asserts that Respondent's activities amount to passing off and creates confusion over the source, sponsorship or affiliation with the Complainant’s trademarks. Given the worldwide renown of the Complainant’s trademarks there is no plausible scenario whereby Respondent could have registered the disputed domain name without being aware of Complainant’s group and its famous trademarks ZERO/PZERO and the related domains. Therefore the domain name at dispute was registered and used in bad faith.
Respondent would wrongfully benefit by the distinctiveness, fame and commercial goodwill obtained during all these years by the large use of the marks ZERO/PZERO of Complainant. In Complainant’s opinion the use of the domain name at dispute by the site of the Respondent is a manner to catch the flow of Internet users to increase the traffic to its website <zero.net> and derive more revenues as a result in order to increase its web site accesses flux.
Respondent contends that the domain name at dispute was registered on July 7, 2003, after both the domain name and webpage had been abandoned by the previous owner for two years, and during its tenure Respondent has maintained a more low-key approach and placed pay-per-click advertising of a general and generic nature. The current content is provided by Hitfarm and contains no direct reference to Complainant, its products or its competitors. The purpose of Respondent’s registration was to provide a portal page providing links to various topics, as “zero” is a natural starting place for such and easily remembered by Internet users.
Respondent further contends that at
the time the domain name at dispute was registered, Complainant did not yet have
a registration for the
Complainant attempts to lump its rights to PZERO together with its rights to ZERO. Although separated by only one letter, these two terms have vastly different usage and “zero” is not conceptually or semantically similar to the fanciful PZERO mark. Respondent points out that the PZERO mark is not identical or confusingly similar to the common word “zero.” Distinctions between the alleged mark and the disputed domain name are critical. Likewise, Complainant’s registration of PZERO marks do not give it the right to hijack names containing the generic word “zero.” A search for “zero” results in 308 million hits of which none of the first fifty relate to Complainant or its tires. In contrast, a search for “pzero” results in 779,000 hits, nearly all of which relate to Complainant.
The Google results demonstrate that the average user on the Internet would associate the word “zero” with something entirely different from Complainant’s PZERO line of tires. Because of the vast gulf in usages of “zero” and the distinctive PZERO, there is no chance of any potential to mislead unsuspecting users and thus impossible to conclude that the domain name at dispute has been engineered to mislead or confuse Internet users to associate the domain name with the trademark.
Respondent notes that the only ZERO mark apparently registered by Complainant is a CTM mark, which was registered on September 14, 2004, over a year after Respondent registered the domain name at dispute. Complainant has no other ZERO marks, as the others appear to be registered by entities other than Complainant and cannot be considered.
Furthermore the use of “zero” as part of other previously registered marks does not establish common law rights in the word standing alone. Respondent does not dispute the fame of PIRELLI, but that fame cannot carry over to a recently registered and little used mark.
Complainant has demonstrated nothing to show that the consuming public uniquely and specifically associates ZERO with its goods and services anywhere in the world. Descriptive and generic terms provide no rights under the Policy under any circumstances even if they are registered. There can be no dispute that “zero,” with its 308 million Google hits, is a common descriptive and generic term. As a result, it cannot be said that Complainant that owned rights to any mark that is identical or confusingly similar to <zero.net>.
Respondent further contends that the domain name at dispute was registered for future website development based on an intended use for future development related to the generic meaning of the word. At the time of registration on July 7, 2003, Respondent had never heard of Complainant’s trademark PZERO or ZERO. Instead, the name was registered based on use as a generic word and as potential portal site to which its websites at Respondent’s other domain names could be linked. The current usage is temporary and the content is not controlled by Respondent, but by Hitfarm.
However, even if it were, there are no links to tires and Complainant has only been able to fabricate evidence of infringing use by typing its distinctive trademark PZERO into the search engine. The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest. Respondent registered the domain name <zero.net> because it believed it was a descriptive or generic dictionary word. Where the mark is registered because of its meaning as a word or term, such use establishes the respondent’s legitimate interest.
Accordingly, given the generic and/or descriptive nature of this word and wide-spread third party use, Respondent has legitimate interests in the domain name at dispute and Complainant has failed to meet its burden under Paragraph 4(a)(ii) of the ICANN Policy.
Furthermore Respondent contends
that in this case, the name was not registered for any purpose related to
Complainant’s business. Given the nearly
two thousand trademark registrations having ZERO as a prominent element in the
Respondent had no actual knowledge of Complainant’s mark and superficial arguments that links on the disputed webpage are competing have to be disregarded.
According to Respondent, the Policy was not intended to permit a party who elects to register as a trademark or service mark a common word to bar all others from using the common word in combination with other common words, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the mark holder.
Respondent is a small company
Finally Respondent contends that Complainant’s actions present a perfect example of reverse domain name hijacking wherein a party having after-acquired rights asserts claims to a short generic domain name by abusing the Policy and making material misrepresentations to the Panel. In this case, Complainant’s own bad faith is evidenced in pursuing this particular domain name, which is short and valuable, when it has constructive notice that at the time of its application for a trademark that another party had a registered trademark ZERO.NET. Complainant made no effort to contact Respondent to determine the extent of Respondent’s rights. Apparently, Complainant was seeking another Respondent default. These facts demonstrate bad faith and malicious use of the process, rather than any solid belief in the merits of this action. Accordingly, Respondent requests a finding of reverse domain name hijacking.
In its Additional Submission Complainant is largely repeating its point of view set out in the Complaint.
The Panel has considered Complainant's Additional Submission only to the extent that it presents newly discovered evidence not reasonably available to Complainant at the time of its original submission or rebuts arguments by Respondent that Complainant could not reasonably have anticipated. See Am. Online, Inc. v. Thricovil, FA 638077 (Nat. Arb. Forum Mar. 22, 2006).
In reply to the Response
Complainant contends that the Policy does not require that the Complainant
demonstrate that it has exclusive rights just in the
The location of the registered
trademark and the goods and/or services it is registered for are irrelevant
when finding rights in a mark. The
Complainant’s Trademark ZERO, P ZERO and PZERO were effectively in use in
Based on this, Complainant has
acquired exclusive rights to use its ZERO, PZERO and P ZERO marks. If the term
“ZERO” had to be considered as generic, the USPTO Examiners wrongly would have
been granted 2,401
Respondent uses the contested domain to divert Internet users to make business with the method pay-per-click. As demonstrated by the home page of the <zero.net> web site, the site contain no content or information relative to Respondent. Such use of the domain name does not constitute a bona fide offering of goods or services. Furthermore the term ZERO is not generic, because it does not identify a category like the terms “Newspaper” or “Shop Store.” The Respondent’s efforts in registering the contested domain name and simply using it as a means to re-direct Internet users to a web site of an affiliate of the Respondent that has no connection whatsoever with the Complainant, fail to constitute a bona fide commercial offering of goods or services under the contested domain name. The illegitimacy is compounded by the fact that the contested domain name, which includes the Complainant’s registered marks, ultimately transports Internet users to the affiliate’s web site, where the affiliate has apparently no relationship with the Complainant.
Respondent lacks no rights to nor legitimate interests in the disputed domain name because it had no authorization to use the registered trademarks of Complainant. Further, Respondent is not commonly known by the <zero.net> domain name pursuant to Policy ¶ 4(c)(ii).
None of the circumstances set forth in the applicable policy as demonstrating rights to and legitimate interests in the domain name are applicable. There is no evidence that Respondent owns a mark that is identical to the domain name; that it uses the domain name in connection with the bona fide offering of goods or services; that Respondent is commonly known by the domain name; or that Respondent is making a legitimate noncommercial or fair use of the domain name.
Respondent uses the <zero.net> domain name to advertise links to websites that offer products competing with Complainant’s product, and commercially benefits from the likely confusion between Complainant’s mark and the disputed domain name. The disputed domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name.
In addition, Respondent’s use of the disputed domain name to advertise links to products competing with Complainant’s products demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).
Finally Complainant contends that Respondent has been the respondent in at least one other UDRP decision in which the dispute domain name was transferred from Respondent to the complainant in that case. According to Complainant, this pattern of behavior is further evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(ii). The fact that Respondent registered 7.941 plus domain names including <thebritishmuseum.com> and <tennessee.net>, <weirdnewsonline.com>, <yahoowebmail.com> is, in Complainant’s opinion, evidence of bad faith.
The Panel finds that:
1. the domain name <zero.net> is confusingly similar to the Complainant’s registered trademarks.
2. the Respondent has established rights or legitimate interests in the domain name <zero.net> and
3. the Respondent has not registered and is not using the domain name <zero.net > in bad faith.
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.
Complainant, has rights in both ZERO and PZERO, based on its
registration of both marks with the USPTO, (ZERO issued December 8, 2003 and
PZERO issued April 12, 1990).
Complainant also registered ZERO with the EU’s Office for Harmonization
in the International Market (issued March 19, 2002). In the Panel’s view the
fact that Complainant’s
Complainant’s mark PZERO is not identical or confusingly similar to <zero.net>. ZERO is a generic or descriptive term with meanings not associated with Complainant. While it is often held that the addition of a letter or word in a domain name to a mark that is recognized as representing a specific product or firm will not save the domain name from being confusingly similar to the proprietary mark, the Panel finds in this case that the addition of the letter “P” at the beginning of ZERO renders the combined term materially distinct from the base word ZERO, because it eliminates the common meaning of ZERO; the combined word PZERO means something else. In this context the Panel finds, that PZERO is sufficiently distinct from <zero.net> as to negate any reasonable possibility of confusion.
The Complainant’s mark ZERO, of course, is identical to <zero.net> for purposes of Policy ¶ 4(a)(i).
As a result the Panel finds and determines, that Complainant has rights in its mark ZERO, and ZERO is identical or confusingly similar to <zero.net>. Furthermore Complainant has rights in its mark PZERO, but PZERO is not identical or confusingly similar to <zero.net>.
Policy ¶4(c)(i) permits the Respondent to demonstrate its right or legitimate interest in respect of the domain name by showing that before it had knowledge of the dispute it used or prepared to use the domain name in connection with a bona fide offering of goods and services. The domain name <zero.net> had earlier been registered by another party and Respondent registered that name upon the expiration of the prior registration. The Panel accepts Respondent’s assertion that it had no knowledge of Complainant’s interest in ZERO when it registered and began using <zero.net>. Further, Respondent had no reason to know of same because of the generic or descriptive nature of the word. Respondent chose the name in part because it is a natural starting point for Internet users, and is simple and easily remembered, not because of any association it might have with Complainant or a specific product of the Complainant. Indeed, the association of the word ZERO with Complainant is not well known generally.
Respondent currently uses <zero.net> as a portal to a commercial “click-through” fee website which refers Internet users to other sponsoring websites, one of which pertains to cars. This is a bona fide offering of goods and services within the meaning of Policy ¶4(c)(i). See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 21, 2002 (using a domain name consisting of a common descriptive and generic expression as a portal to a website featuring various advertisements and links is a bona fide offering of goods or services).
Finally, notwithstanding Complainant’s registrations of ZERO in Europe
As a result the Panel finds and determines that Respondent has rights or legitimate interests in respect of the domain name at dispute.
The Panel is of the view that Complainant failed to meet its burden to prove bad faith registration and use. There was no attempt to sell the domain name for profit, no pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, Respondent is not a competitor of the Complainant seeking to disrupt the Complainant's business, and Respondent is not using the domain name to divert Internet users for commercial gain. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the Complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since the Panel concludes that Respondent has rights or legitimate interests in the <zero.net> domain name pursuant to Policy ¶ 4(a)(ii), it also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. The Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also The Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent’s <zero.net> domain name simply contains the generic term “zero” and adds the gTLD “.net,” and the Panel finds that, in the absence of independent evidence of bad faith, registration and use of a generic domain name does not support a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (“As to both registration and use, the generic nature of the disputed domain name itself rebuts any allegation by Complainant that Respondent registered or used the disputed domain name in bad faith.”); see also Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where the respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith).
As a result the Panel finds and determines that the domain name at dispute was not registered, nor is it being used in bad faith.
Respondent has alleged that Complainant has engaged in reverse domain name hijacking through the filing of the instant Complaint as Respondent contends Complainant knew or should have known of Respondent’s business and that it could not satisfy either or both Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii). The Panel finds that such an assertion is without merit in this case, and that Complainant’s filing of the instant Complaint was based on a good faith belief in its rights to the <zero.net> domain name through its numerous trademark registrations of the mark, and as such, Complainant’s filing is not an abuse of the UDRP Policy. Even if the Panel should find that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent); see also ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Charles A. Kuechenmeister, David E. Sorkin and
Dr. Reinhard Schanda, Chair, Panelists
Dated: March 6, 2008
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