Pirelli & C. S.p.A. v. marcelo cautin and cacique colin
Claim Number: FA1003001314357
Complainant is Pirelli
& C. S.p.A. (“Complainant”), represented by Cristina Cazzetta of Porta, Checcacci &
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <neumaticospirelli.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 19, 2010.
On March 22, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <neumaticospirelli.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has 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 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 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@neumaticospirelli.com by e-mail. Also on March 26, 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.
Preliminary Issue: Other Correspondence
Respondent provided the Forum with an email communication.
This email, or “Other Correspondence” fails as a Response because it was sent
directly to the Forum in e-mail format only.
The Panel does not need to request additional information from Respondent
pursuant to Supplemental Rule 12 in order to resolve this dispute because the email
was from one Marcelo Contin, who stated that he was “not going to debate over
this.” Further, Contin stated that: “Feel free to decide to transfer to whoever
(sic) request (sic) it.” This email fails as a Response; but the Panel
finds that this email does not prevent the Panel from going forward on the
merits with this proceeding because, after reading and considering the “Other Correspondence,” the
Panel finds that sufficient information already is before the Panel to render a
fair decision on the merits.
Having no Response from the Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <neumaticospirelli.com>, is confusingly similar to Complainant’s PIRELLI mark.
2. Respondent has no rights to or legitimate interests in the <neumaticospirelli.com> domain name.
3. Respondent registered and used the <neumaticospirelli.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pirelli & C. S.p.A., manufactures, markets, and sells tires. Complainant has offered its well-known tire products under its PIRELLI mark since 1890. Complainant holds numerous trademark registrations around the world, specifically in Respondent’s country with the Chile Departamento de Propiedad Industrial, for its PIRELLI mark (e.g., Reg. No. 339,993 issued February 21, 1989).
Respondent registered the <neumaticospirelli.com> domain name January 24, 2010. The disputed domain name resolves to a website containing hyperlinks to Complainant’s competitors in the tire manufacturing business. Respondent has also offered to sell the disputed domain name to the general public through the resolving website and then later Respondent offered to sell the disputed domain name directly 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 holds trademark registrations with the Chile
Departamento de Propiedad Industrial (e.g.,
Reg. No. 339,993 issued February 21, 1989) for its PIRELLI mark. The Panel finds that Complainant established
rights in its PIRELLI mark through its federal trademark registration under
Policy ¶ 4(a)(i).
See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb.
Forum Aug. 4, 2004) (finding that the complainant had established rights in the
GOOGLE mark through its holding of numerous trademark registrations around the
world).
Complainant contends that Respondent’s <neumaticospirelli.com> domain name is confusingly similar to Complainant’s PIRELLI mark. Complainant alleges that the disputed domain name adds the descriptive term “neumatico,” which is the Spanish term for “tire,” and adds the generic top-level domain (“gTLD”) “.com.” to Complainant’s PIRELLI mark. Previous panels have found that addition of a descriptive fails to adequately distinguish a disputed domain name from a complainant’s mark and that addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. 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 Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel, therefore, finds that Respondent’s <neumaticospirelli.com> domain name is confusingly similar to Complainant’s PIRELLI mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent has no rights or legitimate interests in the <neumaticospirelli.com> domain name and that it has never permitted or licensed Respondent to use its mark. When Complainant makes a prima facie case to support its allegations, the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that after considering Complainant’s submission here, Complainant made a prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to make an inference that Respondent does not have rights or legitimate interests in the <neumaticospirelli.com> domain name. However, this Panel still examines 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 identifies Respondent as “marcelo cautin and cacique colin,” which the Panel finds is not similar to or commonly known as <neumaticospirelli.com>. Complainant asserts that Respondent is not licensed to use Complainant’s PIRELLI mark and that Respondent is not associated with Complainant in any way. Respondent has not presented any evidence that would show or suggest that Respondent is commonly known by the disputed domain name. As the Panel has not found any evidence in the record that would support a finding of commonality between Respondent and the disputed domain name, the Panel finds that Respondent is not commonly known by the <neumaticospirelli.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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the <neumaticospirelli.com> domain name to resolve to a website containing hyperlinks to Complainant’s competitors in the tire manufacturing industry. The Panel may presume in such circumstances that Respondent receives click-through fees from the hyperlinks. The Panel finds that Respondent’s use of the confusingly similar <neumaticospirelli.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(C)(i) and it is not a legitimate non-commercial use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant further alleges that the website resolving from Respondent’s <neumaticospirelli.com> domain name included an offer to sell the disputed domain name, first to the public, and then directly to Complainant. The Panel finds that Respondent’s intent and offer to sell the disputed domain name also is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate non-commercial use of the <neumaticospirelli.com> domain name under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly urges that Respondent registered and used the domain name in bad faith. Respondent offered to sell the <neumaticospirelli.com> domain name to Complainant and to the general public. The Panel in such circumstances is permitted to make an inference that Respondent was attempting to sell the disputed domain name for more than Respondent’s out-of-pocket costs. The Panel finds that Respondent’s offer to sell the disputed domain name supports findings of bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent’s <neumaticospirelli.com> domain name resolves to a website featuring hyperlinks to Complainant’s competitors in the tire manufacturing industry. The Panel finds that Respondent’s use of the disputed domain name is calculated to and does disrupt Complainant’s business. Respondent’s website diverts Internet users interested in purchasing Complainant’s tires to those who would seek to compete with Complainant. The Panel finds that Respondent’s use of the confusingly similar disputed domain name causes this disruption and therefore finds that Respondent’s use of the <neumaticospirelli.com> domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel further is permitted to make an inference that Respondent receives click-through fees from the aforementioned hyperlinks. Respondent has attempted to create confusion as to Complainant’s sponsorship of or affiliation with the disputed domain name in order to profit by the receipt of click-through fees. The Panel finds that Respondent’s use of the <neumaticospirelli.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Thus, the Panel finds that Respondent acted in bad faith in registering and opportunistically using a domain name containing in its entirety Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <neumaticospirelli.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 3, 2010
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