Pirelli Tyre S.p.A. v. Andy
Claim Number: FA1403001547895
Complainant is Pirelli Tyre S.p.A. (“Complainant”), represented by Pierfrancesco C. Fasano of Fasano Avvocati, Italy. Respondent is Andy (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metzelerchina.com>, registered with Xiamen ChinaSource Internet Service Co., Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2014; the National Arbitration Forum received payment on March 11, 2014.
After numerous requests, the Registrar, Xiamen ChinaSource Internet Service Co., Ltd., has not confirmed to the National Arbitration that the <metzelerchina.com> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd. or that the Respondent is the current registrant of the names. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On March 31, 2014, after repeated attempts to contact Xiamen ChinaSource Internet Service Co., Ltd. by ICANN, Xiamen ChinaSource Internet Service Co., Ltd. responded and confirmed by e-mail to the National Arbitration Forum that the <metzelerchina.com> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd. and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd. has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co., Ltd. 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 March 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2014 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@metzelerchina.com. Also on March 21, 2014, the 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 April 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The
Honourable Neil Anthony Brown QC 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 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
Complainant made the following contentions.
i. Complainant, Pirelli Tyre S.p.A., is a well-known motorcycle company.
ii. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the METZELER mark (Reg. No. 2,351,070, registered May 23, 2000). Complainant also owns a trademark registration with China’s State Administration for Industry and Commerce (“SAIC”) for the METZELER mark (Reg. No. 611,623, registered June 9, 1993).
iii. The disputed domain name is confusingly similar to Complainant’s METZELER mark.
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. The disputed domain name does not resolve to an active website.
i. Respondent has registered and is using the disputed domain name in bad faith.
ii. The disputed domain name does not resolve to an active website.
iii. Respondent was aware of Complainant’s rights in the METZELER mark at the time it registered the disputed domain name.
Respondent has not submitted a response to this case.
Preliminary Issue: Late Verification from Registrar
As noted in the decision template, the Registrar in this case, XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD., did not respond to numerous requests for verification that the disputed domain names were registered with XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. The Forum’s standing instructions from ICANN are to proceed with the case, so the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, to Respondent, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@metzelerchina.com. The Respondent, as listed in the caption, is a privacy service. The FORUM also set a deadline of March 20, 2014 by which Respondent could file a Response to the Complaint.
On March 31, 2014, after ICANN’s repeated attempts to contact XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD., XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. responded to the Forum. XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. stated that the failure to respond previously was based on personnel issues that had arisen. XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. also confirmed by e-mail that the <metzelerchina.com> domain name is registered with XIAMEN CHINASOURCE INTERNET SERVICE CO., LTD. and that Respondent is the current registrant of the names. The Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, to the email address in the new contact information on March 21, 2014. The Complaint was not sent to any physical addresses or fax numbers.
Based on these events, the Panel chooses to proceed as it normally does and make its findings under the Policy against the privacy service listed in the Whois at the time of commencement as the Respondent.
1. Complainant is a well-known motorcycle company.
2. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the METZELER mark (Reg. No. 2,351,070, registered May 23, 2000). Complainant also owns a trademark registration with China’s State Administration for Industry and Commerce (“SAIC”) for the METZELER mark (Reg. No. 611,623, registered June 9, 1993).
3. Respondent registered the <metzelerchina.com> domain name on December 8, 2012.
4. The disputed 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."
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant alleges that it is a well-known motorcycle company. Complainant contends that it is the owner of a trademark registration with the USPTO for the METZELER mark (Reg. No. 2,351,070, registered May 23, 2000). See Complainant’s Annex 1. Complainant also asserts that it owns a trademark registration with China’s SAIC for the METZELER mark (Reg. No. 611,623, registered June 9, 1993). Id. The Panel notes that Respondent resides and operates in China. Accordingly, the Panel determines that Complainant’s registration of the METZELER mark with China’s SAIC and USPTO is sufficient to show its rights in the mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s METZELER mark. Complainant argues that Respondent’s <metzelerchina.com> domain name is confusingly similar to Complainant’s METZELER mark. Complainant states that the addition of a geographical term does not negate the confusing similarity between the disputed domain name and Complainant’s mark. The Panel agrees that Respondent’s inclusion of a geographic term is irrelevant under Policy ¶ 4(a)(i). See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). Complainant also asserts that the addition of a generic top-level domain (“gTLD”) is ignored for the purpose of determining similarity between the domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). The Panel agrees and finds that Respondent’s inclusion of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel holds that Respondent’s <metzelerchina.com> domain name is confusingly similar to Complainant’s METZELER mark according to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s METZELER mark and
to use it in its domain name, making only the addition of a geographic indicator
to the trademark when incorporating it into the domain name;
(b) The disputed domain name does not resolve to an active website ;
(c) Respondent has engaged in this activitity without the consent or
approval of Complainant;
(d)Complainant alleges that Respondent is not commonly known by the <metzelerchina.com> domain name. Complainant contends that it has no relationship with Respondent whatsoever. The Panel observes that the WHOIS information lists “Andy” as the registrant for the disputed domain name. See Complainant’s Annex 4. The Panel also notes that Respondent has not submitted any evidence that Respondent is known by the disputed domain name. Therefore, the Panel finds that, based on the WHOIS information and other evidence in the record, Respondent is not commonly known by the <metzelerchina.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute);
(e)Complainant asserts that Respondent’s <metzelerchina.com> domain name does not resolve to an active website. The Panel notes that Respondent’s disputed domain name leads to an Italian language error page. See Complainant’s Annex 5. In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), the panel stated, “The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).” Thus, the Panel finds that Respondent’s failure to make an active use of the <metzelerchina.com> domain name demonstrates a lack of 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).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following
reasons.
First, the Panel observes that Complainant fails to assert any of the typical factors leading to a finding of bad faith use and registration. However, in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel determined that “[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” Thus, the Panel finds that the factors typically argued under Policy ¶ 4(b) are not meant to be exhaustive, and will consider other arguments in determining whether Respondent registered the <metzelerchina.com> domain name in bad faith.
Complainant asserts that Respondent’s <metzelerchina.com> domain name does not resolve to an active website. The Panel notes that Respondent’s disputed domain name leads to an Italian language error page. See Complainant’s Annex 5. Prior UDRP panels have found that a respondent’s failure to make an active use of a disputed domain name shows bad faith under 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 make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Accordingly, the Panel finds that Respondent has registered and is using the <metzelerchina.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant states that Respondent was aware of Complainant’s rights in the METZELER mark at the time it registered the <metzelerchina.com> domain name, based on Complainant vast and widespread advertising campaigns for the promotion of products covered under its METZELER mark. Therefore, the Panel finds that Respondent had actual knowledge of Complainant's METZELER mark and rights and determine that Respondent registered the <metzelerchina.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the prominent METZELER mark and in view of the Respondent not having used the domain name for an active website, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metzelerchina.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: April 19, 2014
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