Pirelli & C. S.p.A. v. Koji Ohkubo c/o personal
Claim Number: FA0703000937712
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 <p-zero.info>, registered with eNom, 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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 19, 2007.
On March 15, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <p-zero.info> 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 March 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@p-zero.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2007, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <p-zero.info> domain name is confusingly similar to Complainant’s P ZERO and PZERO marks.
2. Respondent does not have any rights or legitimate interests in the <p-zero.info> domain name.
3. Respondent registered and used the <p-zero.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pirelli & C. S.p.A., is an Italian company that is well known worldwide for its business interests in tires, real estate, power cables and telecommunications. Complainant holds multiple trademark registrations worldwide for the P ZERO and PZERO marks for use in connection with its tires. For example, Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the PZERO mark (Reg. No. 1,625,883 issued December 4, 1990). Complainant utilizes the P ZERO and PZERO marks in connection with its innovative tires that are suitable for road traffic but also have the characteristics of racing tires. Complainant also uses its mark in connection with a clothing line. In addition, Complainant holds multiple domain name registrations for domain names including its mark.
Respondent registered the <p-zero.info> domain name on May 17, 2006. Respondent is using the disputed domain name to redirect Internet users to its website composed of links to third-party websites and advertisements for the sale of Internationalized Domain Names (“IDNs”).
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 holds multiple trademark registrations for its P
ZERO and PZERO marks, including registrations in
Respondent’s <p-zero.info> domain name is
confusingly similar to Complainant’s P ZERO and PZERO marks. The disputed domain name contains
Complainant’s marks in their entirety merely inserting a hyphen between the
letter “P” and the term “ZERO.” The
insertion of a hyphen, a commonly used punctuation mark, does not distinguish
the disputed domain name from Complainant’s mark. Further, the addition of the generic top-level
domain “.info” to Complainant’s marks does nothing to differentiate the
disputed domain name from Complainant’s marks, as all domain names require a
top-level domain. The Panel finds that
Respondent’s <p-zero.info>
domain name is identical to Complainant’s P ZERO and PZERO marks pursuant to
Policy ¶ 4(a)(i). See Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that
the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is identical to a mark."); see alo 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 Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Previous panels, such as those in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), found that a complainant’s assertions constitute a prima facie case pursuant to the Policy shifting the burden to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). In the instant case, Respondent did not submit a Response, thus failing to provide the Panel with evidence or arguments in support of its rights or legitimate interests. In Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), the panel stated that “based on respondent's failure to respond, it is presumed that respondent lacks all rights and legitimate interests in the disputed domain name.” While this Panel concurs with the reasoning of the Am. Express Co. panel, it will nonetheless evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent is using the disputed domain name to redirect Internet users to its website composed of links to third-party websites and advertisements for many IDNs for sale. The Panel finds that such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because Respondent is not offering any goods or services of its own at its website. The Panel also finds that Respondent’s use is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because, presumably, Respondent collects pay-per-click revenues from the third-party links and advertisements on its website. Thus, the Panel finds that Respondent has not established rights or legitimate interests as contemplated by Policy ¶¶ 4(c)(i) or (iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
No available evidence suggests that Respondent is commonly known by the <p-zero.info> domain name. Respondent’s WHOIS information identifies Respondent as “Koji Ohkubo,” which bears no obvious relationship to the <p-zero.info> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name and has not satisfied Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <p-zero.info> domain name, which is
confusingly similar to Complainant’s mark, to redirect Internet users to its
website. Because the disputed domain
name is confusingly similar to Complainant’s mark, Internet users seeking
Complainant’s genuine website instead will be redirected to Respondent’s
website through the simple insertion of a hyphen into Complainant’s mark. Once at Respondent’s website, Internet users
may mistakenly believe that Respondent’s website is somehow related to or
affiliated with Complainant. Respondent
is presumably profiting from this confusion by collecting pay-per-click
referral fees from the third-party links and advertisements at its
website. The Panel finds that this use
demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a
domain name that incorporates another's mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith.”); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8,
2000) (finding bad faith where the respondent used a misspelling of the
complainant’s famous mark to attract Internet users to a series of
advertisements).
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 <p-zero.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: May 2, 2007
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