PIRELLI & C. S.p.a. v. Brad Klarkson
Claim Number: FA1003001311480
Complainant is PIRELLI & C. S.p.a. (“Complainant”), represented by Anna
Maria Bardone, of PORTA, CHECCACCI & ASSOCIATI
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pirellitires.com>, registered with Threadsupply.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2010.
On March 5, 2010, Threadsupply.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <pirellitires.com> domain name is registered with Threadsupply.com, Inc. and that Respondent is the current registrant of the name. Threadsupply.com, Inc. has verified that Respondent is bound by the Threadsupply.com, 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 March 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pirellitires.com. Also on March 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <pirellitires.com> domain name is confusingly similar to Complainant’s PIRELLI mark.
2. Respondent does not have any rights or legitimate interests in the <pirellitires.com> domain name.
3. Respondent registered and used the <pirellitires.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pirelli & C. S.p.a., is an international manufacturer of rubber goods including automobile tires and electrical wiring component parts. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its PIRELLI mark (e.g., Reg. No. 792,972 issued on February 9, 1964). Complainant also owns many trademark registrations with other governmental trademark authorities worldwide.
Respondent, Brad Klarkson, registered the <pirellitires.com> domain name on January 28, 2010. Respondent’s disputed domain name resolves to a search page that displays “sponsored listings” which contain third-party links to websites both in the tire business and unrelated to Complainant.
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.
Complainant owns numerous trademark registrations with the USPTO for its PIRELLI mark (e.g., Reg. No. 792,972 issued on February 9, 1964). Complainant further owns many trademark registrations with other governmental trademark authorities around the world for its PIRELLI mark and derivations thereof. The Panel finds that Complainant has established rights in its PIRELLI mark for purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and around the world. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant argues that Respondent’s <pirellitires.com> domain name is
confusingly similar to its PIRELLI mark.
Complainant makes note that the disputed domain name contains its mark
in its entirety while adding the descriptive term “tires” and the generic top level
domain (“gTLD”) “.com.” The Panel finds
that the <pirellitires.com>
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i) because the disputed domain name contains Complainant’s entire mark
while adding the term “tires” which is descriptive of a large part of
Complainant’s business operations. The
panel further finds that the addition of the gTLD “.com” is irrelevant in
determining whether a disputed domain name is confusingly similar to
Complainant’s mark, because every domain name is required to contain a
gTLD. See Kohler
Co. v. Curley, FA 890812 (Nat.
Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the
disputed domain name,
contained the complainant’s mark in its entirety adding “the descriptive term
‘baths,’ which is an obvious allusion to complainant’s business.”); see also Space Imaging LLC v.
Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a
domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <pirellitires.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The WHOIS information for the <pirellitires.com> domain name identifies, “Brad
Klarkson” as the registrant of the domain name.
Complainant contends that this information is evidence that Respondent
is not commonly known as the disputed domain name. Complainant further alleges that it has not
granted Respondent permission to use its mark.
Therefore, the Panel finds that Respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(c)(ii). See
Respondent’s disputed domain name resolves to a website that
displays third-party links to competing tire manufacturers websites of
Complainant, as well as to the websites of companies unrelated to Complainant. Complainant asserts that Respondent’s use of
the disputed domain name to display third-party links to the competitors of
Complainant is not in connection with a bona
fide offering of goods or services or a noncommercial or fair use. The Panel finds that Respondent’s use of the <pirellitires.com> domain name to
display both links to the competitors of Complainant and unrelated businesses,
presumably for financial gain, is not 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 Royal Bank of
Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006)
(finding that the operation of a commercial web directory displaying various
links to third-party websites was not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned
“click-through” fees for each consumer it redirected to other websites); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services
or a legitimate noncommercial or fair use by redirecting Internet users to a
commercial search engine website with links to multiple websites that may be of
interest to the complainant’s customers and presumably earning “click-through
fees” in the process).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s use of the confusingly similar domain name to display the third-party links to its competitors results in a loss of business for Complainant. Complainant contends that Respondent’s intentional diversion of Internet users seeking Complainant’s products to its website that displays the above mentioned links is evidence of bad faith registration and use. The Panel agrees that Respondent’s use of the confusingly similar domain name incorporating Complainant’s mark to divert Internet users to Respondent’s website that offers links to Complainant’s competitors in the automobile tire business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant further contends that Respondent’s use of the <pirellitires.com> domain name is
evidence of bad faith registration and use where it is likely profiting from
the third-party links that Respondent is displaying on its website. The Panel finds that Respondent’s use of the
disputed domain name to display third-party links to both the competitors of
Complainant and to unrelated websites, presumably for financial gain, is
further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See
The Panel 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 <pirellitires.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 20, 2010
National
Arbitration Forum
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