PIRELLI & C. S.p.A. v LTD c/o N/A (ltdbusiness@gmail.com)
Claim Number: FA0706001011777
Complainant is PIRELLI & C. S.p.A. (“Complainant”), represented by Cristina Cazzetta of PORTA, CHECCACCI & ASSOCIATI S.p.A., Via Trebbia 20, Milano 20135, Italy. Respondent is LTD c/o N/A (ltdbusiness@gmail.com) (“Respondent”), Awionetki RWD 1/56, Warszawa 03-982 PL.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pirelliworld.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
The undersigned certifies that 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. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 19, 2007; the National Arbitration Forum received a hard copy of the Complaint June 21, 2007.
On June 19, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <pirelliworld.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry 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 June 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 2007, 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@pirelliworld.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2007, 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, <pirelliworld.com>, is confusingly similar to Complainant’s PIRELLI mark.
2. Respondent has no rights to or legitimate interests in the <pirelliworld.com> domain name.
3. Respondent registered and used the <pirelliworld.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PIRELLI & C.
S.p.A., holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the PIRELLI mark (e.g., Reg. No. 792,972 issued
July 20, 1965 and Reg. No. 1,815,693 issued January 11, 1994). Complainant also holds numerous trademark
registrations for the PIRELLI mark with several other countries worldwide. Complainant has used the PIRELLI mark in connection
with the production, sale and distribution of its goods and services, including
tires, power cables, telecommunications cables and real estate. Complainant established industrial activities
at 80 sites under the PIRELLI mark within 25 countries and Complainant employs
approximately 36,300 employees.
Complainant registered and is using the <pirelli.com> domain name
in connection with the sale and distribution of its goods and services.
Respondent registered the <pirelliworld.com> domain name January 31, 2007. Respondent failed to use or make demonstrable preparations to use the disputed domain name and the domain name does not resolve to an active website.
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 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 established using extrinsic proof in this proceeding that it has rights in the PIRELLI mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (holding that where the complainant had several trademark registrations with the USPTO, “[t]he Panel had no difficulty in finding that Complainant has established rights in the marks for purposes of Policy ¶ 4(a)(i).”).
The disputed domain name that Respondent registered, <pirelliworld.com>, is confusingly similar to Complainant’s PIRELLI mark as it uses the entire mark and simply adds the word “world” and the generic top-level domain (“gTLD”) “.com” to the mark.
Firstly, the Panel holds that the addition of the generic word “world” is not sufficient to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Educ. Testing Serv. v. Sonny Pitchumani & MLI Consulting, Inc., FA 267504 (Nat. Arb. Forum July 6, 2004) (“The term “worldwide” is merely descriptive in nature and, as such, its addition as part of the domain name is of little significance.”); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark).
Secondly, the Panel holds that the addition by Respondent of the gTLD “.com” to Complainant’s mark in the <pirelliworld.com> domain name is irrelevant. The Panel notes that numerous prior panels have held that addition of a gTLD is irrelevant to the determination of whether the domain name is confusingly similar to the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain 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.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
name. Complainant asserts that
Respondent has no rights or legitimate interests in the <pirelliworld.com> domain name. Complainant’s submission establishes a prima
facie case, which shifts the burden to Respondent to show that it has
rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See
The Panel assumes that Respondent does not have rights or legitimate interests here because Respondent failed to show rights in a Response to the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel also has considered all available evidence before determining whether Respondent has rights or legitimate interests in the <pirelliworld.com> domain name under Policy ¶ 4(c).
Complainant asserts that Respondent failed to use the disputed domain. Respondent’s <pirelliworld.com> domain name does not resolve to an active website and no evidence in the record indicates that Respondent is using or preparing to use the disputed domain name. In the case of America Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003), the panel found that the respondent had no rights or legitimate interests in the disputed domain name because the respondent failed to use the domain name for over six months. Therefore, this Panel finds that Respondent’s failure to use the <pirelliworld.com> domain name for any purpose since its registration in January of 2007 fails to a establish a use in connection with 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
Additionally, Respondent provides no evidence, and no
evidence in the record indicates, that Respondent is
commonly known by the <pirelliworld.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “LTD.”
As such, the Panel finds that Respondent is not commonly known by the <pirelliworld.com> domain name and
therefore has failed to establish rights or legitimate interests under Policy ¶
4(c)(ii). See Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Therefore, the Panel finds that
Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and passively holding the <pirelliworld.com> domain name. Respondent has failed to make any use of the disputed domain name since registration. The Panel finds that Respondent’s failure to use the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to use the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
In addition, Complainant faces the threat that Respondent could use the <pirelliworld.com> domain name in the future to redirect Internet users to Respondent’s website for the profit of Respondent. The Panel holds that Complainant need not wait for Respondent to use the domain name when such use will create a likelihood of confusion that Policy ¶ 4(b)(iv) attempts to prevent. See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) although the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Therefore, the Panel finds that should Respondent begin using the <pirelliworld.com> domain name, which is confusingly similar to Complainant’s PIRELLI mark, Internet users may become confused as Complainant’s affiliation with Respondent’s website. Therefore, the Panel finds that Respondent’s registration of the <pirelliworld.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
The Panel finds that Complainant satisfied 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 <pirelliworld.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 1, 2007.
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