The Complainant is Pirelli Tyre S.P.A., Italy, represented by Bugnion S.p.A., Italy.
The Respondent is Zachary Zara, Zachary and Zara Pty ltd, The Trustee for The Naidu Family Trust, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2021. On February 4, 2021, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Name. On February 4, 2021, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2021. The Center appointed Nicholas Smith as the sole panelist in this matter on March 12, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is an Italian company that is one of the world’s leading manufacturers of tyres and is part of the broader Pirelli & C. SpA group. In 1986 it acquired Metzeler Gummiwerke AG, a German company founded in 1863 that had, since 1892, been producing tyres under the mark METZELER (the “METZELER Mark”). The Complainant is the owner of an Australian trade mark registration for the METZELER Mark (trade mark no. 605039) which was registered with on June, 18 1993 for tyres and related products in class 12. According to the verification provided by the Registrar, the Domain Name, The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s METZELER Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is subsequently being used in bad faith. The Complainant is the owner of the METZELER Mark, having registered this mark in Australia since 1993. Disregarding the country code Top-Level Domain (“ccTLD”) “.com.au”, the Domain Name is identical to the METZELER Mark. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name or a name corresponding to the Domain Name. The Respondent has no licence or right to use the Domain Name or the METZELER Mark and has never been granted any permission by the Complainant for the registration of the Domain Name. The Domain Name is being used in bad faith to divert customers from the Complainant’s products to third party websites that sell tyres from several of the Complainant’s competitors. As such the use of the Domain Name for the Respondent’s Website does not generate any rights or legitimate interests in the Domain Name. The Domain Name was registered and is being used in bad faith. The Domain Name was registered and is being used with the intention of preventing the Complainant from registering the corresponding Domain Name. It is also used for diverting customers from the Complainant and its official distributors to third party websites for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have a name or trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark. The Complainant is the owner of the METZELER Mark, having registrations for the METZELER Mark as a trade mark in Australia. Disregarding the ccTLD “.com.au”, the Domain Name is identical to the METZELER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or (ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.” The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the METZELER Mark or a mark similar to the METZELER Mark. The Respondent does not argue that it is commonly known by the Domain Name or is making a legitimate noncommercial use of the Domain Name. The Respondent’s Website is a website that, under the METZELER Mark, purports to provide general information about tyres, but actually operates as a mechanism for redirecting visitors to third party websites (including those that offer tyres in direct competition with Complainant’s Metzeler tyres), most likely on a pay-per-click basis. The use of a Domain Name that directly corresponds to a trade mark for the purpose of creating a website containing a series of pay-per-click advertising links to third party sites that promote products in competition with trade mark owner is not a bona fide offering of goods or services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) the Respondent has registered the Domain Name in order to prevent the owner of the name, trademark or service mark from reflecting the name or mark in a corresponding domain name; or (iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; or (iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website or location or of a product or service on the Respondent’s Website or location; or (v) if any of the Respondent’s representations or warranties as to eligibility or third party rights given on application or renewal are, or subsequently become, false or misleading in any manner. The Panel notes that the Policy only requires that a complainant show that a respondent registered or subsequently used the disputed domain name in bad faith, however in the interest of completeness the Panel has considered both whether the Domain Name has been registered and used in bad faith. The Panel finds that the Respondent was aware of the Complainant at the time the Domain Name was registered, as the Respondent’s website both refers to the Complainant and redirects visitors, through links, to services selling tyres in direct competition with the Complainant’s products. The registration of the Domain Name in awareness of the Complainant and its rights in the METZELER Mark and in the absence of rights or legitimate interests on the part of the Respondent amounts to registration in bad faith. The Domain Name, which is identical to the Complainant’s METZELER Mark, has been used by the Respondent to redirect visitors to a website that contains a series of links to third party sites, some of which offer products in competition with the Complainant. Such portal websites are operated for commercial gain, as advertisers generally pay on a pay-per-click basis for Internet users redirected to their sites. Consequently, the Respondent registered and is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the METZELER Mark as to the source, sponsorship, affiliation or endorsement of its website. The Panel, while noting that the Policy only requires that a complainant shows that a respondent registered or used the domain name at issue in bad faith, finds that the Respondent has registered and has subsequently used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Nicholas Smith
Sole Panelist
Date: March 19, 2021
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