national arbitration forum

DECISION

Pirelli & C. S.p.A. v. Pluszero, Inc.

Claim Number: FA0702000919906

PARTIES

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 Pluszero, Inc. (“Respondent”), CD Bldg 5F,1-2-16 Minamisasaguchi, Niigata, Niigata 950-0912, Japan.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pzero.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically February 20, 2007; the National Arbitration Forum received a hard copy of the Complaint February 22, 2007.

On February 22, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <pzero.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 February 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 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@pzero.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On March 23, 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 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. The domain name that Respondent registered, <pzero.com>, is identical to Complainant’s PZERO mark.

2. Respondent does not have any rights or legitimate interests in the <pzero.com> domain name.

3. Respondent registered and used the <pzero.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Pirelli & C. S.p.A., holds several trademark registrations for the PZERO mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,625,883 issued on December 4, 1990), which have been used in connection with tires and various clothing items.

Respondent, Pluszero, Inc., registered the <pzero.com> domain name October 16, 2002. The domain name directs Internet users to a blank, undeveloped website.

DISCUSSION

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."

Given 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.

Identical to and/or Confusingly Similar

Complainant established using extrinsic evidence in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant’s rights in the PZERO mark pursuant to Policy ¶ 4(a)(i) flow through its registration of the mark with the USPTO. Complainant’s registration of its PZERO mark preceded Respondent’s registration of the <pzero.com> domain name. Under the Policy, registration of a mark with an appopriate governmental authority confers rights in that mark to Complainant. Thus, the Panel finds that Complainant established rights in the PZERO mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also 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.”).

The disputed domain name that Respondent registered, <pzero.com>, contains Complainant’s PZERO mark in its entiretiy and adds the generic top-level domain “.com.” Under Policy ¶ 4(a)(i) adding top-level domains to a complainant’s mark is irrelevant in establishing whether or not the disputed domain names are identical to the mark. Therefore, the Panel finds that Respondent’s <pzero.com> domain name is identical to Complainant’s PZERO mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no such rights to or legitimate interests in the <pzero.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights to or legitimate interests in the disputed domain names. See 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).”); see also 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”). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <pzero.com> domain name. The WHOIS information identifies Respondent as “Pluszero,Inc.,” and Complainant has alleged that Respondent has no rights to or legitimate interests in the PZERO mark. The Panel cannot find any other evidence in the record suggesting that Respondent is commonly known by the domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <pzero.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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)); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).

Respondent has not made a use of the <pzero.com> domain name since registering it October 16, 2002, and filed no proof of costs or effort to develop the site or to make future use of it. Internet users who seek out the website are directed to a website that does not display any information, indicating that the domain name is not associated with any active website. The Panel finds Respondent registered a domain name incorporating the dominant features of Complainant’s mark but has not posted any content at the resultant website. Such nonuse 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 pursuant to Policy ¶ 4(c)(iii). See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (holding a respondent cannot simply do nothing and effectively “sit on his rights” for an extended period of time when that the respondent might be capable of doing otherwise).

The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant also alleges that Respondent acted in bad faith in registering and holding a domain name that contains in its entirety Complainant’s protected mark. The record shows that Respondent has not posted any content at the website associated with the <pzero.com> domain name. Respondent has held the respective registration for almost four and a half years. With no content associated at the website and no evidence of Respondent’s preparations to use the disputed domain name, the Panel concludes Respondent registered and used the <pzero.com> domain name in bad faith, pursuant to Policy ¶ 4(a)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).

The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <pzero.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: April 6, 2007.

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