Pirelli & C. S.p.A. v.
NetTrics
Claim Number: FA0702000921808
PARTIES
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.us>, registered with Go Daddy
Software, Inc.
PANEL
The undersigned certifies that he acted independently and impartially
and to the best of his knowledge has no known conflict in serving as Panelist
in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on February 22,
2007; the Forum received a hard copy of the Complaint on February 26, 2007.
On February 22, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the Forum that the <pzero.us> domain name is registered
with Go Daddy Software, Inc. and that
Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On March 5, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 26, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On March 31, 2007, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as
Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in accordance
with the Policy, the Rules, the 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
Complainant is an international business that
operates in three major sectors: power cables and systems, tires, and real
estate.
Since 1987, Complainant has manufactured,
distributed, and sold a range of ultra-low profile tires under the PZERO
mark.
Complainant first used the PZERO trademark in
connection with racing tires, specifically on the Ferrari F40, and, as of 1995,
Ferrari 33SPs competing on the American circuits of the IMSA Championship
contain tires featuring the PZERO mark.
Complainant has registered the PZERO mark
with numerous trademark authorities around the world, including in the
Respondent’s <pzero.us> domain name, which it registered on August 9, 2004, resolves to a blank
website.
Respondent’s <pzero.us> domain name is identical to Complainant’s PZERO mark.
Respondent does not have any rights
to or legitimate interests in the disputed <pzero.us>
domain name.
Respondent registered and uses the <pzero.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) the domain name registered by Respondent is identical to a
trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the same domain name was registered and is being used by Respondent
in bad faith.
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.”
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(f), 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 a 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 in order to obtain an order that a domain name
should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or
confusingly similar to a trademark or service mark in which Complainant has
rights; and
(ii) Respondent has no rights or legitimate interests in respect of the
domain name; and
(iii) the domain name has been registered or is being used in bad
faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
By virtue of Complainant’s undenied worldwide trademark registrations for the PZERO trademark, Complainant has established rights in the mark under Policy ¶ (4)(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005): “The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of [UDRP] ¶ 4(a)(i);” see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that complainants established rights in marks because the marks were registered with a trademark authority).
We next conclude that Respondent has registered a domain name identical to Complainant’s PZERO mark because the <pzero.us> domain name incorporates the entire registered mark and merely adds the country-code top-level domain (“ccTLD”) “.us.” In Tropar Manufacturing Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002), a panel found that, because the addition of the country-code “.us” failed to add any distinguishing characteristic to the <tropar.us> domain name, the domain name was identical to a complainant’s TROPAR mark. We agree with this reasoning. Respondent’s addition of a ccTLD does not create a distinguishing difference, so that the <pzero.us> domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003): “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”
The Panel therefore finds that Complainant has satisfied usDRP Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent
lacks rights and legitimate interests in the domain name <pzero.us>. Complainant bears the initial burden of
making out a prima facie case that Respondent lacks rights or legitimate
interests in the contested domain name, and, if it does, the burden shifts to
Respondent to show that it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Swedish Match
UK Ltd. v. Admin, Domain, FA
873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case
has been established by a complainant under UDRP ¶ 4(c), the burden shifts to a
respondent to demonstrate its rights or legitimate interests in the disputed
domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651
(Nat. Arb. Forum Feb. 26, 2007) (finding that UDRP ¶ 4(a)(ii) requires that the
complainant must show that the respondent has no rights to or legitimate
interests in the subject domain name, and that once a complainant makes this
showing, the burden of production shifts to a respondent to rebut a
complainant’s allegations).
Inasmuch as Respondent has not responded to the Complaint, we are free to and do presume that Respondent lacks rights and legitimate interests in the <pzero.us> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002): “[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name;” see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003): “It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”
Nevertheless,
the Panel will examine the record to determine if there is any basis for
determining that Respondent has rights or legitimate interests under Policy ¶
4(c).
We first note in this regard that, because Complainant has established rights to the PZERO mark while Respondent has not come forward with any evidence showing that it is the owner or beneficiary of a mark identical to the <pzero.us> domain name, Complainant has satisfied the requirements of Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that a respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because a respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it could be found that that respondent had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Moreover,
Respondent has registered the <pzero.us>
domain name under the name “NetTrics,” and there is no evidence in the record suggesting
that Respondent is commonly known by the <pzero.us> domain name. Consequently, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(iii). See Instron
Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was
not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain name and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute); see also The Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006).
Finally under this head, it is undisputed that Respondent is not actively using the <pzero.us> domain name, and there is no evidence in the record indicating that it has made demonstrable preparations to use it for any purpose over the three years it has held the registration. The Panel in Bloomberg L.P. v. SC Media Services and Information SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) stated that when a respondent registers a domain name identical to a registered mark and then fails to make any use of the domain name, that respondent is not making a bona fide offering of goods or services pursuant to UDRP Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to UDRP Policy ¶ 4(c)(iii). Similarly, in Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), a panel found that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to UDRP Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP Policy ¶ 4(c)(iii)). We likewise conclude that Respondent lacks rights and legitimate interests in the <pzero.us> domain name pursuant to Policy ¶ 4(c)(ii) and ¶ 4(c)(iv).
The Panel thus finds that Complainant has satisfied it obligations of proof under usDRP Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent does not deny
Complainant’s allegation that Respondent has not used or made demonstrable
preparations to use the <pzero.us>
domain name for over three years.
Respondent’s failure to use the disputed domain name for such an
extended period provides evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb.
Forum June 26, 2006) (holding that the non-use of a disputed domain name for
several years constitutes bad faith registration and use under UDRP ¶ 4(a)(iii));
see also Am. Broad. Cos., Inc. v. Merrill Sech, FA 893427 (Nat. Arb.
Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use
of its domain name in the three months after its registration indicated that that
respondent registered the disputed domain name in bad faith).
In addition, it appears that Respondent registered the <pzero.us> domain name with at least constructive knowledge of
Complainant’s rights in the PZERO trademark by virtue of
Complainant’s prior registration of that mark worldwide. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v.
DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002); see also
For these reasons, the Panel finds that Complainant has satisfied usDRP Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the usTLD Dispute Resolution Policy of the U.S. Department of Commerce, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <pzero.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 13, 2007
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