The Complainant is Pirelli & C. S.p.a. of Milan, Italy, represented by Fasano - Avvocati, Italy.
The Respondent is Pedram Givehchy of Tehran, Islamic Republic of Iran ("Iran"). 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2014. The Center transmitted its request for registrar verification to IRNIC on September 12, 2014. IRNIC replied on September 14, 2014, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Respondent was the registrant as of July 23, 2011, that the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP") applied, and that the Domain Name would remain locked during this proceeding. IRNIC also provided the full contact details held in respect of the Domain Name on its WhoIs database.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 23, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 13, 2014. No Response was received by the Center. Accordingly, the Center notified the Respondent Default on October 14, 2014.
The Center appointed Jonathan Turner as the sole panelist in this matter on October 17, 2014. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is a multinational company which makes and sells tyres using the mark PIRELLI. The Complainant's sales in 2013 amounted to EUR 6.15 billion. It has 21 production plants in 13 countries around the world and operates in over 160 countries. The Complainant has registered the mark PIRELLI in numerous countries around the world, including Iran.
The Domain Name was previously directed to a parking page with sponsored links and at the date of the Complaint was directed to a web page promising prizes on completion of a form. The Domain Name is currently directed to a web page which appears to contain sponsored links. At the date of the Complaint the Domain Name was offered for sale on the Sedo website.
The Complainant's representatives sent a cease and desist letter to the Respondent on February 13, 2014. The Respondent did not reply. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its mark PIRELLI, since it wholly incorporates the dominant part of this mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that it has no relationship with the Respondent and has never authorized the Respondent to register or use the Domain Name. The Complainant notes that there is no indication of any interest of the Respondent in the mark PIRELLI according to searches conducted at the Italian Patent and Trademark Office, the European Union Office for Harmonization in the Internal Market (OHIM) or the World Intellectual Property Organization (WIPO).
The Complainant states that there is no evidence that the Respondent has been commonly known by the Domain Name or that its use of the Domain Name has been a bona fide offering of goods or services or legitimate noncommercial or fair use without intent for commercial gain. The Complainant submits that it has made a prima facie showing that the Respondent has no rights or legitimate interests so that the burden is transferred to the Respondent to provide evidence to the contrary.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out that the Domain Name wholly comprises the dominant feature of its well-known mark, and that it is inherently unlikely that this was by chance. The Complainant contends that the Respondent has registered or used the Domain Name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark, and/or with the purpose of selling the Domain Name to the Complainant or a third party.
The Complainant requests a decision that the Domain Name be transferred to it. B. Respondent
As stated above, the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
It is clear that the Complainant has registered and unregistered rights in the mark PIRELLI. The Domain Name is effectively identical to this mark, and certainly confusingly similar. It is well-established that the generic Top-Level Domain ("gTLD") suffix should be discounted when comparing a domain name with a complainant's mark under similar domain name dispute resolution policies and the Panel considers that a similar approach should be followed under the Policy. In this case, the Panel has no doubt that many Internet users would assume that the Domain Name refers to an operation connected with the Complainant in Iran. The first requirement of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel finds on the evidence that the Respondent has not used or made any demonstrable preparations to use the Domain Name or any corresponding name in connection with a bona fide offering of goods or services.
The Domain Name is essentially identical to the Complainant's distinctive and very widely known mark. The pointing of the Domain Name to a web page with sponsored links is not use in connection with a bona fide offering of goods or services. Nor is it a legitimate noncommercial or fair use of the Domain Name. On the contrary, it is a use in bad faith, profiting from confusion with the Complainant's mark to obtain click-through commissions from these links.
The Complainant's statements that it has not authorized the Respondent to use the Domain Name is not disputed and it is evident from the material in the case file that the Respondent is not commonly known by the Domain Name.
On the basis of the material in the case file, there is no other ground on which the Respondent could claim any rights or legitimate interests in respect of the Domain Name. The second requirement of the Policy is satisfied. C. Registered or Used in Bad Faith
The Panel finds that the Respondent has used the Domain Name intentionally to attract Internet users to its web page for commercial gain in the form of click-through commissions on sponsored links by creating a likelihood of confusion with the Complainant's PIRELLI mark as to the source of that web page. In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence of registration and use of the Domain Name in bad faith.
Additionally, the Respondent has offered the Domain Name for sale. Given the absence of any bona fide use or any other plausible reason for registering the Domain Name, the Panel finds that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of its costs. In accordance with paragraph 4(b)(i) of the Policy, this constitutes further evidence of registration and use of the Domain Name in bad faith.
There is no countervailing evidence in the case file displacing these presumptions. The Panel finds in the circumstances that the Domain Name was registered and is being used in bad faith.
All three requirements of the Policy are therefore satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant. 7. Decision
For 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 the Complainant.
Jonathan Turner
Sole Panelist
Date: October 30, 2014
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