The Complainant is Pirelli & C. S.p.a. of Milano, Italy, represented by Porta, Checcacci & Associati, Italy.
The Respondent is Cristian Bello, of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2011. On January 10, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 10, 2011, GoD, 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 Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 January 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2011. The Response was filed with the Center on February 8, 2011.
The Center appointed Gary J. Nelson as the sole panelist in this matter on March 2, 2011. 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 A. Complainant
Complainant is the owner of numerous trademark registrations for PIRELLI, including registrations for PIRELLI in the country of Columbia.
Complainant owns at least the following trademark applications/registrations, among others:
COUNTRY
APP. / REG. NO.
MARK
CLASSES
DATES OF APPLICATION AND REGISTRATION
Colombia
366528
PIRELLI
12
26/08/1992
Colombia
139965
PIRELLI Logo
7, 9, 12, 17
28/06/1973
Colombia
05079598
PIRELLI Logo
18
11/08/2005
Colombia
05079599
PIRELLI Logo
25
11/08/2005
Colombia
05079597
PIRELLI Logo
14
11/08/2005
Colombia
05104815
PIRELLI Logo
9
13/10/2005
Colombia
05104817
PIRELLI Logo
12
13/10/2005
Complainant appears to have established trademark rights in PIRELLI prior to the date the disputed domain name was registered. B. Respondent
The disputed domain name was registered by Respondent July 20, 2010. 5. Parties’ Contentions A. Complainant
Complainant is a well-known multinational company operating in the power cables and systems sector, as well as in the telecommunications cables and systems sector, as well as in the tire sector and in the real estate sector, among other industries.
Complainant was established in 1872 as a manufacturer of rubber products and later diversified into undersea cables and tires and is now the world's best known Italian brand name specializing in high performance tires for high performance motor vehicles.
Complainant trademark rights in PIRELLI were established prior to the date Respondent registered the disputed domain name.
Respondent attempted to sell the domain name to Complainant for EURO 2,000,000.
The disputed domain name is confusingly similar to Complainant's PIRELLI trademark. Respondent has no rights or legitimate interest in the disputed domain name. Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent registered the disputed domain name on July 20, 2010 during the implementation of the Top-level Domain “.co” in Colombia, after Complainant had had an opportunity to register this same domain name.
Respondent registered in conjunction with a school project initiated on July 19, 2010. Respondent was assigned the topic of presenting relevant financial information and the development of a leading tire company in the country of Colombia. As part of this project, Respondent decided to present the project on a website and registered when Respondent discovered that the domain name was available, and after Respondent had been assigned Complainant as the focus of his academic project. The scope of the project was to track the growth of the Complainant in the tire industry in the country of Colombia for the last ten years.
Respondent registered the domain name with a legitimate interest in developing a website depicting the growth of the Complainant's Colombian tire industry. Respondent did not register and never used the domain name in bad faith. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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.”
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:
(i) The disputed domain name 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 the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the PIRELLI trademark and the disputed domain name is confusingly similar to Complainant's PIRELLI trademark.
Complainant owns numerous PIRELLI trademark registrations throughout the world, including in Colombia. One of these registrations is for Colombia Trademark Registration No. 366528. The current status of this PIRELLI mark is "registered and renewed." The priority date for this registration (i.e., August 26, 1992) precedes the date upon which Respondent registered the disputed domain name (i.e., July 20, 2010).
Accordingly, Complainant has established rights in its PIRELLI trademark pursuant to Policy, paragraph 4(a)(i). See Janus Interantional Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, , is confusingly similar to Complainant’s PIRELLI trademark because the disputed domain name incorporates the entirety of Complainant’s PIRELLI trademark and merely adds a generic top-level “.co” country code domain name. Neither the addition of a purely descriptive/generic term to a well-known mark or the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited. v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word (either as prefix or suffix) nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied). In this case, the addition of a generic top-level country code domain name (i.e., ".co") is insufficient to overcome Complainant’s allegation of confusing similarity.
Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
In its Response, Respondent alleges that it registered the domain name as part of an academic project and that he was assigned a topic to "present the financial information and development of a leader company in the tyres market in his country [Colombia]." However, none of the evidence presented by Respondent supports these allegations, or Respondent's assertion that he was assigned Complainant as the subject matter of his project.
Respondent identifies Annex C to his response as evidence supporting his allegation that he was assigned a project that could only involve Complainant (i.e., a leading tire company operating in Colombia). While it appears that Respondent was indeed given some sort of academic assignment, the evidence submitted does not support Respondent's assertion that his academic assignment came with Complainant supplied as the subject matter of his project. Rather, it appears that Respondent chose Complainant independently from any instructions received from the instructor of the course in which Respondent claims he was enrolled.
By not submitting evidence sufficient to support his allegations, Respondent has failed to establish that he had a legitimate interest or right in the disputed domain name.
Further, by only submitting irrelevant evidence, Respondent has not provided any evidence that he is commonly known by the domain name, or that he is commonly known by any name consisting of, or incorporating the term, “pirelli.” In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that Respondent's evidence also fails to establish that he is a licensee of Complainant or that his registration of the domain name predates Complainant’s rights in the PIRELLI trademark.
Respondent has also established a passive website associated with the domain name. Respondent’s failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no right or legitimate interests in this domain name. See Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the Complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford,WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Complainant has proven the requirement of the Policy, paragraph 4(a)(ii) and Respondent has failed to establish that he has a legitimate interest or right in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Respondent is maintaining the website corresponding to as a passive website. Because Respondent has not submitted any evidence supporting his allegation that he was assigned an academic project on Complainant's tire business in the country of Colombia, the maintenance of a passive website by Respondent is evidence that he registered and is using the domain name in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital,WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose). See also, Red Bull GmbH v. Harold Gutch,WIPO Case No. D2000-0766 (finding that respondent’s expected use of the domain name would lead people to believe that the domain name was connected with complainant, and thus is the equivalent to bad faith use).
Respondent also offered to sell the domain name to Complainant for EURO 2,000,000. This attempt to sell a domain name, containing a well-known trademark of another, for profit in excess of costs associated with the registration of the domain name is evidence of bad faith registration and use under Paragraph 4(b)(i) of the Policy. See Justin Kent Luhrs v. Steve Regan,WIPO Case No. D2002-0671 (finding bad faith in offering domain name for sale for $400).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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 be transferred to the Complainant.
Gary J. Nelson
Sole Panelist
Dated: March 9, 2011
Full & Egal Universal Law Academy