Pirelli & C. S.p.A. v. Dan Dobrescu / Schumoto srl Romania
Claim Number: FA1211001472420
Complainant is Pirelli C. S.p.A. (“Complainant”), represented by Pierfrancesco C. Fasano of FASANO - Avvocati, Italy. Respondent is Dan Dobrescu / Schumoto srl Romania (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pirellimoto.ro>, registered with ICI - ROTLD.
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. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2012; the National Arbitration Forum received payment on November 21, 2012. The Complaint was received in both Romanian and English.
On November 22, 2012, ICI - ROTLD confirmed by e-mail to the National Arbitration Forum that the <pirellimoto.ro> domain name is registered with ICI - ROTLD and that Respondent is the current registrant of the name. ICI - ROTLD has verified that Respondent is bound by the ICI - ROTLD registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 4, 2012, the Forum served the Romanian language Complaint and all Annexes, including a Romanian language Written Notice of the Complaint, setting a deadline of December 24, 2012 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@pirellimoto.ro. Also on December 4, 2012, the Romanian Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Romanian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant Alleges:
1. Complainant owns numerous international registrations for the PIRELLI mark, including those with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 792,972 registered July 20, 1965), Italian Patent and Trademark Office (“IPTO”) (Reg. No. 317986 registered Sept. 26, 1979), and the World Intellectual Property Office (“WIPO”) (Reg. No. 217011 registered Jan. 5, 1959).
2. The PIRELLI mark is used in connection with things such as power cables, telecommunications cables, machines, tools, motors, engines, precious metals, jewelry, precious stones, leather, clothing, footwear, headgear, sports articles, scientific and technological services and industrial and analysis and research services.
3. The PIRELLI name has been used by Complainant since 1872.
4. The PIRELLI mark is famous around the world.
5. Respondent registered the <pirellimoto.ro> domain name on February 23, 2011, which is well after Complainant registered its PIRELLI mark.
6. The <pirellimoto.ro> domain name is confusingly similar to Complainant’s PIRELLI mark.
7. Respondent’s <pirellimoto.ro> domain name incorporates Complainant’s mark in its entirety with the addition of the generic word “moto” and the country-code top-level domain (“ccTLD”) “.ro.”
8. Respondent has no rights and interests in the <pirellimoto.ro> domain name.
9. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
10. Respondent’s disputed domain name resolves to a website featuring a similar appearance to Complainant’s international motorcycle website.
11. Respondent is not commonly known by the <pirellimoto.ro> domain name.
12. Respondent’s <pirellimoto.ro> domain name was registered and is being used in bad faith.
13. Respondent is attempting to trade upon the reputation associated with Complainant’s PIRELLI mark.
14. Respondent had notice of Complainant’s PIRELLI mark.
15. Respondent is attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s PIRELLI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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.”).
Complainant presents the Panel with ample evidence of its PIRELLI trademark registrations with multiple trademark authorities all over the world including with the following:
USPTO (Reg. No. 792,972 registered July 20, 1965).
IPTO (Reg. No. 317986 registered Sept. 26, 1979)
WIPO (Reg. No. 217011 registered Jan. 5, 1959).
Previous panels have traditionally found that evidence of registration for a trademark with a national trademark authority establishes rights in a given mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Based on this evidence the Panel finds that Complainant has sufficiently established rights in the PIRELLI mark.
Complainant alleges that Respondent’s <pirellimoto.ro> domain name incorporates Complainant’s PIRELLI mark in its entirety with the addition of the generic word “moto” and the ccTLD “.ro.” Panels have traditionally found that these variations are insufficient to distinguish a disputed domain name from a registered mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Disney Enters., Inc. v. Hayner, FA1142452 (Nat. Arb. Forum March 28, 2008) (finding that the addition of the ccTLD “.ro” is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name). Therefore, the Panel finds that the <pirellimoto.ro> domain name is confusingly similar to Complainant’s PIRELLI mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. Complainant satisfies its burden, and the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that there is no evidence that Respondent has been commonly known by the <pirellimoto.ro> domain name. Complainant claims it has no relationship with Respondent and it has never authorized Respondent to use the PIRELLI mark in any way. The Panel notes that the WHOIS information for Respondent lists, “Dan Dobrescu” as the domain holder. Previous panels have found that when there is no evidence on the record showing that a respondent was commonly known by a disputed domain name and a complainant has not authorized the respondent to use its mark, then the respondent is not commonly known by the disputed domain name and has no rights or legitimate interest in it. See 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds that Respondent is not commonly known by the <pirellimoto.ro> domain name, and thus does not have rights or a legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial fair use under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). Complainant argues that the <pirellimoto.ro> domain name resolves to a website that appears similar to Complainant’s. The Panel notes that Complainant does not submit a screen shot of its own website, however, does provide one for Respondent’s website resolving from the <pirellimoto.ro> domain name. Complainant asserts that Respondent’s website is a similar structure and color scheme to Complainants website. Complainant also points out that the website resolving from the <pirellimoto.ro> domain name features the PIRELLI mark as well as the words “MOTORCYCLE WORLD,” while the Panel notes that the resolving website appears to be selling motorcycle tires from Complainant’s competitors. Complainant also asserts that Respondent’s website features trademarks of competitors of Complainant’s as well as links to Respondent’s other websites. Previous panels have found that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial fair use by attracting internet users by using a confusingly similar domain name and selling competing products of a complainant and featuring advertisements for competitors of a complainant. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). The Panel finds that there is no evidence that Respondent is using the <pirellimoto.ro> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and ¶ 4(c)(iii).
Complainant has proven this element.
Complainant asserts that Respondent registered and is using the <pirellimoto.ro> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). Complainant claims that Respondent is attempting to attract for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks and products as to the source, sponsorship, affiliation or endorsement of its web site and the products featured thereon. Complainant argues that Respondent’s website has a similar structure to Complainant’s website as well as contains images of Complainant’s products as well as links to Complainant’s website. The Panel notes that Respondent’s resolving website features links to Complainant’s competitors such as, “MOTOREX-MOTO.RO,” “NOLAN.RO,” “TOPLITE.RO,” “KITLANT.RO,” and “MOTOFLASH.RO.” The Panel also notes that Respondent’s resolving website also features motorcycle tires of various styles and sizes including tires by, “DIABLO,” “NGEL,” “GARACROSS,” “SCORRPION MX,” and “EV021/EV022.” The Panel presumes that Respondent is receiving compensation from featuring the links displayed on the website which resolves from the <pirellimoto.ro> domain name. Previous panels have found that this is sufficient evidence to indicate bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel thus finds that Respondent has registered and is using the <pirellimoto.ro> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's PIRELLI mark and considering the widespread advertising campaigns carried out by Complainant to promote its products covered by the PIRELLI mark, it is inconceivable that Respondent could have registered the <pirellimoto.ro> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <pirellimoto.ro> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 7, 2013
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