Pirelli & C. S.p.A. v. Johnson Tyre Services c/o Mr Philip Johnson
Claim Number: FA0604000676310
Complainant is Pirelli & C. S.p.A. (“Complainant”), represented by Cristine Cazzetta, of Porta, Checcacci & Associati S.p.A., Via Trebbia 20, Milano 20135, Italy. Respondent is Johnson Tyre Services c/o Mr. Philip Johnson (“Respondent”), Unit C, Aberderfyn Works, Aberderfyn Road, Wrexham, Clwyd LL14 1PB, GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pirellityres.net>, registered with Internetters Limited.
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.
Honorable Karl V. Fink (Ret.), 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 12, 2006.
On April 18, 2006, Internetters Limited confirmed by e-mail to the National Arbitration Forum that the <pirellityres.net> domain name is registered with Internetters Limited and that Respondent is the current registrant of the name. Internetters Limited has verified that Respondent is bound by the Internetters Limited 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 21, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 11, 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@pirellityres.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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." 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. Respondent’s <pirellityres.net> domain name is confusingly similar to Complainant’s PIRELLI mark.
2. Respondent does not have any rights or legitimate interests in the <pirellityres.net> domain name.
3. Respondent registered and used the <pirellityres.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pirelli & C. S.p.A., is a multinational
corporation engaged primarily in the production and distribution of tires and
power cables. Particularly, Complainant
is one of the worldwide leaders in the production of tires for high performance
automobiles. Complainant owns several
valid trademark registrations for the PIRELLI mark throughout the world,
including trademark registrations with the United States Patent and Trademark
Office (“USPTO”). Complainant first
registered the PIRELLI mark with the USPTO on December 18, 1984 (Reg. No.
1,310,058). Complainant has been using
the PIRELLI mark in connection with its tire production business since 1872,
and also holds the domain name registration for the <pirelli.com> domain
name through which Complainant markets its products.
Respondent registered the <pirellityres.net> domain name on April 6, 2004. Respondent’s domain name resolves to a website that offers Complainant’s tire products, as well as the tire products of Complainant’s competitors.
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.
Complainant’s registration of the PIRELLI mark with the
USPTO establishes Complainant’s rights in the mark in accord with 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 Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
Moreover, the Panel finds that Respondent’s <pirellityres.net> domain name is confusingly similar to Complainant’s PIRELLI mark. Respondent’s domain name consists of Complainant’s mark in its entirety with the addition of the term “tyres” and the generic top-level domain “.net.” The Panel finds that the term “tyres” is phonetically identical to the word “tires,” which describes Complainant’s business. The addition of a term to a complainant’s mark that is phonetically identical to a word describing a complainant’s business does not avoid the creation of confusing similarity between the mark and the resulting domain name. See Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that the respondent’s <mapcrest.com> domain name and the complainant’s MAP QUEST mark are confusingly similar); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Similarly, prior panels have found that the addition of a generic top-level domain name to a mark does not negate any confusing similarity that results from the alteration. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Initially, Complainant possesses the burden of establishing that Respondent lacks any rights or legitimate interests in the disputed domain name. Nevertheless, once Complainant demonstrates a prima facie case, the burden of proof shifts to Respondent to prove that it has rights or legitimate interests in connection with the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has sufficiently established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The Panel finds that the evidence on record does not indicate that Respondent is commonly known by the <pirellityres.net> domain name pursuant to Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use Complainant’s PIRELLI mark, and Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that Respondent is not commonly known by the <pirellityres.net> domain name in accord with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Furthermore, the Panel finds that Respondent’s use of the
disputed domain name indicates Respondent’s intent to divert Internet users to
Respondent’s website, which directly competes with Complainant’s business by
offering Complainant’s tires, as well as tires of Complainant’s
competitors. Therefore, Respondent’s
use of the disputed domain name 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). See Seiko
Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see
also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert
Internet users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The evidence on record suggests that Respondent registered
and is using the <pirellityres.net> domain name to operate a
website that offers the Complainant’s tire products, as well as those of
Complainant’s competitors.
Consequently, the Panel finds that Respondent’s unauthorized offering of
Complainant’s tire products for sale demonstrates Respondent’s intent to
disrupt Complainant’s business. Thus,
the Panel finds that Respondent’s use constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See
G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb.
Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell
Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see
also 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).
Additionally, Respondent’s use of the disputed domain name, which is confusingly similar to Complainant’s mark, to offer Complainant’s products evidences Respondent’s intent to attract Internet users to Respondent’s website for commercial gain. Therefore, the Panel finds that Respondent registered and used the <pirellityres.net> domain name in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
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 <pirellityres.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 31, 2006
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