national arbitration forum

 

DECISION

 

Pirelli Tyre S.p.A. v. Du Jian

Claim Number: FA1206001450786

 

PARTIES

Complainant is Pirelli Tyre S.p.A. (“Complainant”), represented by Pierfrancesco Carmine Fasano of FASANO - Avvocati, Italy.  Respondent is Du Jian (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <metzeler.us>, registered with GoDaddy.com, 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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2012; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2012.

 

On June 27, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <metzeler.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On July 2, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.    Complainant develops and manufactures motorcycle tires under the METZELER mark.

2.    Complainant owns a trademark registration for the METZELER mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 611,623 registered September 6, 1993).

3.    The <metzeler.us> domain name is identical to Complainant’s METZELER mark.

4.    Respondent is not commonly known by the disputed domain name.

5.    The <metzeler.us> domain name resolves to a website featuring sponsored links to third-party websites.

6.    Respondent commercially benefits from the operation of its site.

7.    Respondent offered to sell the disputed domain name to Complainant for more that Respondent’s incurred out-of-pocket costs.

8.    Respondent had knowledge of Complainant’s METZELER mark prior to Respondent’s registration of the <metzeler.us> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds a registered trademark for the METZELER mark.  Respondent did not submit a Response in this proceeding.

 

DISCUSSION

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."

 

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.

 

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.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant has provided proof of its registration of the METZELER mark with the SAIC (Reg. No. 611,623 registered September 6, 1993). Registration of a mark with the SAIC is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Intellectual Property Office was sufficient to establish rights in the mark under UDRP ¶ 4(a)(i)). Thus, Complainant has established rights in the METZELER mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <metzeler.us> domain name is identical to Complainant’s METZELER mark pursuant to Policy ¶ 4(a)(i). The disputed domain name consists of Complainant’s mark and the country-code top-level domain (“ccTLD”) “.us.” Respondent’s addition of the “.us” ccTLD does not distinguish the disputed domain name from Complainant’s mark. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Accordingly, the Panel concludes that Respondent’s <metzeler.us> domain name is identical to Complainant’s METZELER mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant alleges that Respondent is not commonly known by the <metzeler.us> domain name within the meaning of Policy ¶ 4(c)(iii). Complainant denies any pre-existing relationship with Respondent, while also denying having ever authorized Respondent’s use of the disputed domain name. The WHOIS information for the disputed domain name identifies the domain name registrant as “Du Jian.” Accordingly, there is no evidence in the record to indicate that Respondent is in fact commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). Therefore, the Panel concludes that Respondent is not commonly known by the <metzeler.us> domain name within the meaning of Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Complainant further alleges that Respondent is not using the disputed domain name in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). Complainant alleges that Respondent uses the <metzeler.us> domain name to resolve to a website featuring sponsored links to third-party websites. This type of unrelated use has been held to demonstrate a respondent’s lack of rights or legitimate interests in a domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)).  Accordingly, the Panel holds that Respondent is not using the disputed domain name in conjunction with a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

 

Complainant alleges that Respondent offered to transfer the <metzeler.us> domain name to Complainant for “valuable consideration in excess of his out-of-pocket expenses related to the domain name.” Complainant urges that this demonstrates bad faith registration or use under Policy ¶ 4(b)(i).  This offer exhibits bad faith registration and/or use under Policy ¶ 4(b)(i). See 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 [UDRP] ¶ 4(b)(i).”).

 

Complainant contends that Respondent’s registration and use of the <metzeler.us> domain name is in bad faith under Policy ¶ 4(b)(iv). The Panel infers that Respondent realizes a financial gain from the operation of the website, likely through the collection of click-through fees from the sponsored links featured on its site. Respondent’s selection of an identical domain name creates confusion with Complainant’s mark, which may lead some Internet users to believe that Respondent’s website is endorsed by or affiliated with Complainant. Respondent has used the confusion it has created to undoubtedly realize a commercial gain, evidencing bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

Complainant also contends that, in light of thevast and widespread advertising campaigns” carried out by the Complainant for the promotion of products covered by its METZELER mark, it is inconceivable that Respondent could have registered the <metzeler.us> domain name without knowledge of Complainant's rights in the mark.  The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, which amounts to bad faith registration of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <metzeler.us> domain name be TRANSFERRED from Respondent to Complainant. 

 

 

Bruce E. Meyerson, Panelist

Dated:  August 13, 2012

 

 

 

 

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