Pirelli & C. S.p.A. v. Tattoogalaxy.com
Claim Number: FA0604000672449
Complainant is Pirelli
& C. S.p.A. (“Complainant”), represented by Cristina Cazetta, of Porta, Checcacci & Associati S.p.A.,
Via Trebbia 20, Milano, Italy 20135.
Respondent is Tattoogalaxy.com (“Respondent”),
138 Montague St. #8, Brooklyn, NY
11201.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pirellityres.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (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 10, 2006.
On April 9, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <pirellityres.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 has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 1, 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.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 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.com> domain name is confusingly similar to Complainant’s PIRELLI mark.
2. Respondent does not have any rights or legitimate interests in the <pirellityres.com> domain name.
3. Respondent registered and used the <pirellityres.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Pirelli & C.S.p.A. was founded in 1872 as the first factory for the manufacture of rubber goods. Since that time, Complainant has become known as one of the world’s best-known Italian brands in the distribution of tires. Complainant conducts its industrial activities across 25 countries with 80 sites and over 36,300 employees.
Complainant has used the PIRELLI mark in connection with its power cables, telecommunications and tire sectors in addition to its real estate services. Complainant owns numerous trademark registrations throughout the world for the PIRELLI mark through registration of the mark with the relevant trademark authorities including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 898,585 issued June 30, 1970).
Respondent registered the <pirellityres.com> domain name on July 30, 2002. Respondent’s disputed domain name resolves to a dormant website, the contents of which simply state that it is a default page and instructs users to contact the Administrator for additional information.
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.
Previous Panels have found that a complainant’s federal trademark registrations establish the complainant’s rights in the mark in cases such as 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.”). Likewise, in the present case Complainant has established rights in the PIRELLI mark through registration with the United States Patent and Trademark Office (“USPTO”) and various other trademark authorities throughout the world. 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.”).
Complainant contends that the <pirellityres.com> domain name is confusingly similar to Complainant’s PIRELLI mark because the addition of the descriptive term “tyres” to Complainant’s mark does not create a domain name distinct from Complainant’s 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); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).
The Panel in Nevada State Bank v. Modern Ltd. – Cayman
Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), stated “the addition of
a generic top-level domain is irrelevant when considering whether a domain name
is identical or confusingly similar under the Policy.” Therefore, the Panel finds that the addition
of the generic top-level domain “.com” in Respondent’s <pirellityres.com>
domain name does not negate the confusing similarity of the disputed domain
name to Complainant’s PIRELLI mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
.").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have any
rights or legitimate interests in the <pirellityres.com> domain
name. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); 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).”). However, the Panel now chooses to examine
whether the evidence supports Respondent’s rights or legitimate interests.
In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found the respondent did not have any rights or legitimate interests 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. In the present case, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed 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) does not apply).
Furthermore, in TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) the panel concluded that Respondent's passive holding of the domain name did not establish rights or legitimate interests. Similarly, Respondent’s passive holding of the <pirellityres.com> domain name for over three years is evidence that Respondent lacks rights and legitimate interests in the domain name. Thus, the Panel finds that Respondent has failed to establish rights or legitimate interests in the <pirellityres.com> domain name pursuant to Policy ¶ 4(a)(ii). 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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Since Respondent is located in the United States, Complainant’s registration of the PIRELLI mark with the USPTO serves as constructive notice of Complainant’s rights in the mark to Respondent. The Panel finds that by registering a domain name that blends Complainant’s exact mark with the term “tyres,” which is descriptive of Complainant’s goods and services, Respondent has registered the <pirellityres.com> domain name in bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”). Furthermore, in Samsonite Corp. v. Colongy Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000), the panel held that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration. Therefore, the Panel finds that Respondent’s registration of the <pirellityres.com> domain name incorporating Complainant’s mark despite it’s constructive knowledge of Complainant’s rights in the PIRELLI mark is evidence of Respondent’s bad faith registration and use.
Additionally, the Panel finds that Respondent’s inactivity with the disputed domain name for the last three years constitutes passive holding and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 22, 2006
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