Pirelli & C. S.p.A. v. Hiroyuki Hasegawa
Claim Number: FA0703000937100
Complainant is Pirelli & C. S.p.A. (“Complainant”), represented by Cristina
Cazzetta, of Porta, Checcacci & Associati S.p.A.,
Via Trebbia 20,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pzero.org>, registered with Tucows, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 10, 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.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <pzero.org> domain name is identical to Complainant’s PZERO mark.
2. Respondent does not have any rights or legitimate interests in the <pzero.org> domain name.
3. Respondent registered and used the <pzero.org> 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”) and with other trademark authorities for the PZERO mark (Reg. No. 1,625,883 issued on December 4, 1990) for use in connection with tires and various clothing items.
Respondent registered the <pzero.org>
domain name on
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 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.org> domain name.
Under the Policy, registration of a mark with an appropriate
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
The disputed domain name that Respondent registered, <pzero.org>, contains Complainant’s PZERO mark in its entirety
and adds the generic top-level domain “.org.”
Under Policy ¶ 4(a)(i), the addition of a top-level domain to a
complainant’s mark is irrelevant in establishing whether the disputed domain
name is identical to the mark.
Therefore, the Panel finds that Respondent’s <pzero.org> 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
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant initially must establish that Respondent lacks
rights and legitimate interests with respect to the <pzero.org> domain name.
However, once Complainant makes a prima
facie case, the burden of proof shifts, and Respondent must prove that it
has rights or legitimate interests in 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
Respondent is using the <pzero.org> domain name to host a website that offers goods and services in direct competition with Complainant. Such use of Complainant’s mark to provide competing goods and services is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Respondent’s WHOIS information does not indicate that Respondent is commonly known by the <pzero.org> domain name and there is no other evidence in the record to suggest that Respondent is commonly known by the disputed domain name. Moreover, Complainant asserts that Respondent is not authorized to use Complainant’s PZERO mark and that Respondent is not associated with Complainant in any way. Accordingly, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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"); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
The Panel finds that Respondent’s use of the <pzero.org> domain name to operate a website the displays goods and services in direct competition with Complainant is capable of creating a likelihood of confusion as to the source and affiliation of Complainant with the <pzero.org> domain name and resulting website. Additionally, the operation of such a website allows Respondent to profit from the goodwill associated with Complainant’s PZERO mark. Accordingly, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also 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).
Moreover, the Panel finds that Respondent is using the <pzero.org>
domain name to redirect Internet
users to a website that displays goods and services in direct competition with
Complainant’s offerings. Such use
constitutes a disruption of Complainant’s business and is evidence of bad faith
registration and use under Policy ¶ 4(b)(iii).
See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum
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 <pzero.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 18, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum