Complainant is Pirelli & C. S.p.A. of Milan, Italy, represented by Fasano Avvocati, Italy.
Respondent is Gaoxiang of Shenzhen, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2014. On April 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On April 22, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On April 23, 2014, Complainant confirmed its request that English be the language of the proceeding. An email query was received from Respondent regarding the language of the proceeding on April 23, 2014. The Center replied to Respondent’s query and provided detailed instructions with regard to the language of the proceeding on April 24, 2014. No further communication was received from Respondent by the specified due date.
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 Respondent of the Complaint in both Chinese and English, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. Respondent did not submit any formal response.
The Center appointed Yijun Tian as the sole panelist in this matter on June 10, 2014. 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
Complainant Pirelli & C. S.p.A. is a company incorporated in Milan, Italy; Complainant is a well-known multinational company. With sales of EUR 6.07 in 2012, it is the fifth largest global tyre manufacturer and leader in the high-end segments with high technical content. It has 22 plants located in 13 countries throughout the world, including China, and a commercial network that covers over 160 countries.
Complainant has exclusive rights in numerous trademarks comprising the keyword “Pirelli” (hereafter “Pirelli Marks”). Complainant is the owner of well-known registered Pirelli Marks globally, such as the United States of America (since 1964), Italy (since 1958), Spain (since 1924), the United Kingdom of Great Britain and Northern Ireland (since 1921) and China (since 1994). Complainant has operated under the “Pirelli” trade name since 1872. It also owns the domain name since January 11, 1995.
Respondent is Gaoxiang of Shenzhen, Guangdong, China. The disputed domain name was registered by Respondent on April 9, 2013, long after the Pirelli Marks became internationally famous. 5. Parties’ Contentions A. Complainant
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant is the owner of numerous registrations for trademarks, comprising the keyword “Pirelli” globally, such as the United States (since 1964), Italy (since 1958), Spain (since 1924), the United Kingdom (since 1921) and China (since 1994).
Complainant has operated under the “Pirelli” trade name since 1872. It also owns the domain name since January 11, 1995.
The disputed domain name is identical and/or confusingly similar with PIRELLI Marks because it wholly incorporates the dominant part of such marks, namely the wording “Pirelli”.
It is well found that the disputed domain name is to be considered identical and/or confusingly similar with PIRELLI Marks since the country code Top-Level Domain (“ccTLD”) “.pw” is to be ignored for the purpose of determination of the similarity between the disputed domain name and the word “Pirelli”.
It is undoubtful that the suffix “.pw” does not affect the attractive power of the dominant part of PIRELLI Marks, e.g. PIRELLI, and the disputed domain name is consequently identical and/or confusingly similar with Complainant’s marks.
The disputed domain name can be confused with:
(i) The trademark registrations and/or applications of Complainant valid in Italy, China and worldwide;
(ii) The domain names registered by Complainant, in particular with Complainant’s primary domain name ;
(iii) The company name of Complaint.
The identity and/or similarity of the disputed domain name to PIRELLI Marks, is likely to lead to confusion and/or association for the Internet users.
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant shall make a prima facie showing that Respondent has no rights and interests in the disputed domain name; however, the burden of proof with respect to this element is light for Complainant. p>Complainant has no relationship with Respondent whatsoever. Complainant has never authorized Respondent to register and/or use the disputed domain name or any other domain name.
There is no indication that Respondent has any legitimate interest in PIRELLI Marks according to the searches done on the websites of the Italian Patent and Trademark Office (UIBM), the EU’s Office of Harmonization for the Internal Market (OHIM), the World Intellectual Property Organization (WIPO) or Trademark Office of the State Administration for Industry & Commerce of the People’s Republic of China.
The disputed domain name resolves to a website which asserts (in English and in Chinese) that “the domain name is for sale” and contains contact details of Respondent.
Clicking on “Buy Now” or “Click to make your offer” redirects to the auction page of the Registrar, where third parties’ further links appear. Such links contain Complainant’s trademarks as well as its competitors’ trademarks, such as Michelin, Hankook, Bridgestone, Dunlop, Goodyear and Google search results regarding Complainant.
There is no evidence that Respondent’s use of the disputed domain name is either bona fide offering of goods or services or a legitimate noncommercial or fair use, without intent for commercial gain.
On the contrary it is clear that Respondent has registered the disputed domain name, corresponding to Complainant well-known trademarks with the intent to exploit them for commercial gain.
There is no evidence that Respondent has been commonly known by the disputed domain name.
(c) The disputed domain name was registered and is being used in bad faith.
Respondent’s bad faith is clearly evident from the fact that it has registered and/or has been using a domain name which wholly comprises the dominant component of well-known PIRELLI Marks and, therefore, identical and/or confusingly similar to such PIRELLI Marks.
This evidences a clear intent to trade upon the reputation and good will associated with PIRELLI Marks.
Respondent has been deliberately using the disputed domain name identical and/or confusingly similar to PIRELLI Marks to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks products to the sources, sponsorship, affiliation or endorsement of its domain name or of a product or service on such website.
It is unlikely that registration of the disputed domain name may be attributed to mere chance and not, as is, with a full awareness and intent to exploit the reputation and good will of Complainant and PIRELLI Marks.
By applying to register the disputed domain name Respondent warranted that the domain name registration would not infringe upon or otherwise violate the rights of third parties. By registering a well-known trademark in a domain name or by failing to check whether the registration would have infringed on the right of a third party, Respondent violated paragraph 2(b) of the Policy.
A review of the website to which the disputed domain name resolves, makes it clear that the disputed domain name has been registered and used with a view of commercial gain: the disputed domain name redirects to a website offering the disputed domain name for sale. Clicking on “Buy Now” or “Click to make your offer” redirects to the auction page of the Registrar, where third parties’ further links appear. Such links contain Complainant’s trademarks as well as its competitors’ trademarks, such as Michelin, Hankook, Bridgestone, Dunlop, Goodyear and Google search results regarding Complainant.
These action, taking advantage of good will of Complainant’s marks and business, all contribute to create in the Internet users a likelihood of confusion with such marks and business and, hence, to dilute such good will of PIRELLI Marks.
Respondent has failed to respond to the cease and desist letter sent by authorized representatives of Complainant.
The registration of the disputed domain name has been carried out with the sole purpose of exploiting Complainant’s reputation and good will for commercial gain. B. Respondent
Respondent did not reply to Complainant’s contentions formally. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English as well as in Chinese, and has requested that English be the language of the proceeding for the following reasons:
(a) Complainant is a well-known Milan-based multinational company with 22 plants and 29 subsidiaries across world and a commercial network that covers over 160 countries. Complainant is owner of numerous trademark registrations worldwide. Respondent has registered and/or used the disputed domain name which is identical to Complainant’s trademarks since it wholly comprises the dominant part of such well-known marks. Hence, Respondent is likely to be well aware of Complainant’s international business and its marks.
(b) The disputed domain name resolves to a website which asserts (in English and in Chinese) that “the domain name is for sale” and contains contact details of Respondent. Clicking on “Buy Now” or “Click to make your offer” redirects to the auction page of the Registrar, where third parties’ further links appear (containing Complainant’s trademarks as well as its competitors’ trademarks - Michelin, Hankook, Bridgestone, Dunlop, Goodyear and Google search results regarding Complainant).
(c) Authorized representatives of Complainant forwarded a cease and desist letter in English to Respondent. Despite that no response has been received, it is clear that Respondent understands well English language, since the website to which the disputed domain name resolves is also in English.
(d) Considering that Complainant is a multinational company, involved in many kind of businesses further to its core business (tyre manufacturing) worldwide and its marks are recognized by a great number of consumers throughout the world, English is retained to be the most appropriate language for these proceedings.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances of the case. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and Complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. Munhyunja,WIPO Case No. D2003-0585).
The Panel has taken into consideration the fact that Complainant is a company from Italy, and Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that Respondent’s website is in English and Chinese and the disputed domain name includes Latin characters “pirelli” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name is registered in Latin characters, rather than Chinese script; (b) The content on the website at the disputed domain name is in both Chinese and English; (c) the website appears to have been directed to users worldwide, including both Chinese and English speakers; (d) Complainant has submitted the Complaint in English and in Chinese; (e) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has not objected to Complainant’s request that English be the language of the proceeding; and (f) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the Pirelli Marks acquired through registration. The PIRELLI Marks have been registered worldwide including in Italy, the United States, Spain, and China, and Complainant has a widespread reputation as a global tyre manufacturer and leader in the high-end segments with high technical content.
The disputed domain name comprises the PIRELLI Mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by a top-level suffix of “.pw” to the PIRELLI Marks. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. WIPO Overview 2.0 states:
“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. (paragraph 1.2).
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087).
Mere addition of the descriptive term “.pw” as a suffix to Complainant’s trademarks fails to distinguish. (see ABB Asea Brown Boveri Ltd. v. A.B.B Transmission Engineering Co., Ltd.,WIPO Case No. D2007-1466; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768).
Thus, the Panel finds that the suffix “.pw” is not sufficient to negate the confusing similarity between the disputed domain name and the PIRELLI Marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trademarks.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the PIRELLI Marks globally, including trademark registration in China since 1994 which long precedes Respondent’s registration of the disputed domain name (April 9, 2013).
According to the Complaint, with sales of EUR 6.07 in 2012, Complainant is the fifth largest global tyre manufacturer and leader in the high-end segments with high technical content. It has 22 plants located in 13 countries throughout the world, including China, and a commercial network that covers over 160 countries.
Moreover, Respondent is not an authorized dealer of PIRELLI branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “pirelli” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the PIRELLI Marks or to apply for or use any domain name incorporating the PIRELLI Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on April 9, 2013, long after the PIRELLI Marks became internationally famous. The disputed domain name is identical or confusingly similar to Complainant’s PIRELLI Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, the disputed domain name redirects to a website offering the disputed domain name for sale. Clicking on “Buy Now” or “Click to make your offer” redirects to the auction page of the Registrar, where third parties’ further links appear. Such links contain Complainant’s trademarks as well as its competitors’ trademarks, such as Michelin, Hankook, Bridgestone, Dunlop, Goodyear and Google search results regarding Complainant.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the PIRELLI Marks with regard to its products. Complainant has registered its PIRELLI Marks internationally, including China (since 1994). Based on the information provided by Complainant, Complainant is the fifth largest global tyre manufacturer and leader in the high-end segments with high technical content. It has 22 plants located in 13 countries throughout the world, including China, and a commercial network that covers over 160 countries.
It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2013).
Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s advertised PIRELLI branded products. b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”.
Respondent currently uses the disputed domain name as landing pages stating that the disputed domain name is for sale and provide “Buy Now” and “Click to make your offer” links for potential buyers interested in purchasing the disputed domain name to make an offer.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the PIRELLI Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the websites to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the PIRELLI Marks. Moreover, Respondent did not respond formally to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) 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 disputed domain name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: June 19, 2014
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