Pirelli & C. S.p.A. v. Digi Real Estate Foundation
Claim Number: FA0604000672442
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 Digi Real Estate Foundation (“Respondent”), PO Box 7-5324, Panama City N7 8DJ, PA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <pirellitires.com>, registered with Enom, Inc., and <pirellitire.com>, registered with Registernames.
The undersigned certifies that he or 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.
On April 7, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <pirellitires.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 18, 2006, Registernames confirmed by e-mail to the National Arbitration Forum that the <pirellitire.com> domain name is registered with Registernames and that Respondent is the current registrant of the name. Registernames has verified that Respondent is bound by the Registernames registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On April 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 2006 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@pirellitires.com and postmaster@pirellitire.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pirellitires.com> and <pirellitire.com> domain names are confusingly similar to Complainant’s PIRELLI mark.
2. Respondent does not have any rights or legitimate interests in the <pirellitires.com> and <pirellitire.com> domain names.
3. Respondent registered and used the <pirellitires.com> and <pirellitire.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pirelli & C. S.p.A., is an Italian-based multinational innovation and research company. Complainant is a world leader in the field of high-performance tires for cars, motorcycles and commercial vehicles. More than 44% of Complainant’s business is in the tire sector. Complainant has continuously used the PIRELLI mark to refer to its automotive tire operations since the 1920s.
Complainant holds numerous trademark registrations for the PIRELLI mark worldwide, including a trademark registration in Panama, where Respondent resides (Reg. No. 055005 issued November 12, 2001), and several trademark registrations in Italy (Reg. No. 779,105 issued March 5, 1998; Reg. No. 748,773 issued May 18, 1993; Reg. No. 86,644 issued May 13, 2002).
Respondent registered the <pirellitires.com> domain name on November 10, 2004 and the <pirellitire.com> domain name on November 30, 2005. Respondent’s domain names resolve to a web page with links such as “Wheels and Tires,” “Pirelli tires,” “Continental Tire” and “Yokohama Tire,” all of which resolve to the websites of Complainant’s competitors in the tire industry.
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 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.”).
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.
Because Complainant holds numerous trademark registrations for the PIRELLI mark worldwide, including in Panama, where Respondent resides, Complainant has established rights in the PIRELLI mark pursuant to Policy ¶ 4(a)(i). 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <pirellitires.com> and <pirellitire.com>
domain names are confusingly similar to Complainant’s PIRELLI mark because each
contains the entire registered mark and simply adds “tire” or “tires,” terms
describing Complainant’s tire business.
In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001), the panel found that the respondent’s domain
names, all of which contained the complainant’s entire GUINNESS mark but merely
added common terms to the end, such as “irish stout,” “guide,” “tours” and
“jazz festival,” were confusingly similar to the mark because each featured the
complainant’s GUINNESS mark “prominently.”
Therefore, Respondent has not sufficiently distinguished the <pirellitires.com>
and <pirellitires.com> domain names from Complainant’s PIRELLI
mark by simply adding common terms to the end of the mark. See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain names. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the respondent’s failure to produce requested
documentation supports a finding for the complainant); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where the respondent fails to respond).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “Digi Real Estate Foundation,” and
there is no other evidence in the record suggesting that Respondent is commonly
known by the disputed domain names. As
a result, Respondent has not established rights or legitimate interests in the disputed
domain names pursuant to 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail").
Furthermore, Respondent’s <pirellitire.com> and <pirellitires.com> domain names, which are confusingly similar to Complainant’s PIRELLI mark, resolve to a website featuring links to Complainant’s competitors in the tire industry. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel found that the respondent’s use of a domain name to divert Internet users to a website selling goods and services similar to the services the complainant offered was not 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). Here, Respondent is also diverting Internet users seeking Complainant’s services to a web page displaying links to the websites of Complainant’s competitors. Respondent likely receives click-through fees for redirecting consumers to these websites. Therefore, Respondent is not using the disputed domain names 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 Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the domain names for the primary purpose of disrupting
Complainant’s business, because the disputed domain names resolve to a website
featuring links to Complainant’s competitors in the tire industry. In Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003), the panel found that the respondent had registered
and used the <euro-disney.com> domain name in bad faith pursuant to
Policy ¶ 4(b)(iii) because it resolved to a website promoting a competing theme
park. Likewise, Respondent’s use of the
disputed domain name to operate a website with links to Complainant’s
competitors indicates that it registered the domain name primarily to disrupt
Complainant’s business in violation of Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc., FA 94864
(Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s business).
In addition, Respondent has registered and is using the <pirellitires.com>
and <pirellitire.com> domain names in bad faith under Policy ¶
4(b)(iv), because the disputed domain names resolve to a web directory
featuring links to Complainant’s direct competitors. In Drs. Foster & Smith,
Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel found
that the respondent’s diversion of Internet users who were seeking the
complainant’s website to its own website for commercial gain created “a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, endorsement, or affiliation of its website” and, therefore,
provided evidence of bad faith registration and use in violation of Policy ¶
4(b)(iv). In
this case, Respondent likely receives pay-per-click fees from advertisers when
Internet users follow the links on its web directory. Therefore, Respondent is taking advantage of the confusing
similarity between the disputed domain names and Complainant’s PIRELLI mark,
and profiting from the goodwill associated with the mark, which violates Policy
¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged
in bad faith use and registration by using domain names that were identical or
confusingly similar to the complainant’s mark to redirect users to a website
that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pirellitires.com> and <pirellitire.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 26, 2006
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