PIRELLI & C. S.p.A. v.
Claim Number: FA0903001254141
PARTIES
Complainant is PIRELLI & C. S.p.A. (“Complainant”), represented by Cristina
Cazzetta, of Porta, Checcacci & Associati S.p.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pirelliusa.com>, registered with Compana, LLC.
PANEL
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.
Hon. Sir Ian Barker as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 25, 2009; the
National Arbitration Forum received a hard copy of the Complaint on March 30, 2009.
On March 26, 2009, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <pirelliusa.com> 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 April 3, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 23, 2009 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@pirelliusa.com by e-mail.
A timely Response was received and determined to be complete on April 23, 2009.
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant is a large multi-national company based in
It owns numerous trademarks world-wide, including several
The Complainant’s activities range over 160 countries. It employs 31,600 people. Its revenue generated in the first nine
months of 2008 was some €4 billion of which 78% came from its overseas
activities. Some 9% of its revenue comes
from North America and 12% from Central and
The Complainant has not authorised the Respondent to use its trademark
name PIRELLI in any shape or form. The
Complainant alleges that the disputed domain name is confusingly similar to its
registered trademarks of PIRELLI and that the website accessed by the disputed
domain name purports to indicate to internet users that it represents the
The website accessed by the disputed domain name states that it is “For resources and information on Pirelli
tires and Pirelli motorcycle tires”. There
are numerous pages concerning various sorts of tires under the Pirelli name.
The Respondent registered the disputed domain name on
A list of decisions made by WIPO and NAF Panels citing the present
Respondent shows that since 2006, the Respondent has been named as such in 98
UDRP domain name disputes. In 90 of
these domain name disputes, the Respondent has not been successful and the
domain names were ordered to be transferred to the complainants.
B. Respondent
The Respondent agrees to the relief requested by the Complainant and
will, upon order of the Panel, transfer the disputed domain name to the
Complainant. This is not an admission of
the three elements of Paragraph 4(a) of the Policy but rather a unilateral
offer of consent to transfer
The Respondent quoted from a decision in The Cartoon Network LP v Mike Morgan (WIPO Case D2005-1132). In that case, the panel noted that where a
respondent had made an offer to transfer, there are several ways in which the
panel could proceed. However, the panel
in that case, conscious of Rule 10(c) of the Policy decided that the best and
most expeditious course was that “The
genuine unilateral consent to transfer by the respondent provides a basis for
an immediate order for transfer without consideration of the Paragraph 4(a)
elements. The Panel made an
immediate order for transfer. A
similar approach was taken by the Panel in City
Group Inc. v. Texas International Property Associates NANA, FA 0806001219904
(Nat. Arb. Forum August 5, 2008).
The Respondent makes no admission with respect to any matter concerning
the alleged use of the Complainant’s marks and reserves any applicable defences
in respect thereof.
FINDINGS
(a)
The
Complainant has rights in registered trademarks for the word PIRELLI.
(b)
The
disputed domain name is confusingly similar to the trademarks in which the
Complainant has rights.
(c)
The
Respondent has no rights or interest in the disputed domain name. Nor has it proved that it comes within the
exceptions provided in Paragraph 4(c) of the Policy
(d)
The
Respondent registered and is using the disputed domain name in bad faith.
(e)
The
Respondent agrees to the relief requested by the Complainant.
DISCUSSION
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.
However,
where a respondent consents to the transfer of the
disputed domain name, the Panel may forego the traditional UDRP analysis and
order the immediate transfer of the disputed domain name. See
The same
approach can be found in WIPO decisions such as Williams-Sonoma Inc. v. VEZ-Port (D2000-0207) and Slumberland France v. Chadia Acohuri
(D2000-0195).
Because the
Respondent has indicated that it does not contest the transfer of the disputed
domain name but did not actually say it consented to the transfer, the Panel
considers that it is proper to record by way of a summary the following findings:
(a)
The disputed
domain name is confusingly similar to the Complainant’s trademark;
(b)
The
Respondent has no rights in the disputed domain name and has not suggested any
matter which would bring it within paragraph 4(c) of the Policy;
(c)
The
registration and use of the disputed domain name is in bad faith. The Complainant’s marks and reputation have
been clearly established on a worldwide basis.
The Respondent must have known this when it registered a domain name the
website of which might be thought to be that of the United States branch of
this worldwide organisation.
(d)
A
perusal of the Respondent’s website shows that it is clearly seeking to benefit
from the fame of the Complainant’s worldwide mark and reputation when it seeks
to offer Pirelli tires for sale.
A finding in summary form on the three Policy
criteria is justified by the Respondent’s lack of contest to a transfer of the
disputed domain name.
The Respondent requested that, if an analysis
of the three elements under
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pirelliusa.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Sir Ian Barker, Panelist
Dated: May 12, 2009
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