World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cicli Pinarello S.p.a. v. Miss Cheng

Case No. D2012-0679

1. The Parties

The Complainant is Cicli Pinarello S.p.a. of Villorba (TV), Italy, represented by Mr. Fabbio, Italy.

The Respondent is Miss Cheng of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <pinarellochina.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2012. On March 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 31, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On April 11, 2012, noting that the Domain Name was due to expire on May 5, 2012, the Center sought confirmation from the Registrar, pursuant to ICANN’s Expired Domain Deletion Policy, paragraph 3.7.5.7, that the Domain Name would be placed in Registrar LOCK status, and would remain in such status after the lapse of the expiry date until the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) proceedings are concluded. On May 4, 2012, the Registrar provided that confirmation to the Center and stated that it had renewed the Domain Name until May 5, 2013.

The Center verified that the Complaint satisfied the formal requirements of the 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 April 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2012.

The Center received email communications from the Respondent on May 3, 2012, of which the Center acknowledged receipt. The Panel pays no regard to them since, even if they were within time, they do not address the substance of the Complaint.

The Center appointed Alan L. Limbury as the sole panelist in this matter on May 14, 2012. 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.

The language of the proceeding is English, being the language of the Registration Agreement.

4. Factual Background

The Complainant is the registered proprietor in many countries of the trademark PINARELLO, first registered in Italy on September 19, 1983, No. 336 086, for goods including “Vehicles; apparatus for locomotion by land, air or water” in International Class 12. The Complainant sells racing bicycles under that trademark and sponsors the Sky bicycle racing team.

The Domain Name was registered on May 5, 2011. On March 29, 2012 it resolved to a website headed: “PinarelloChina.com | Buy Pinarello Carbon Bike Frame from China, OEM Carbon Bike Frame”. The site depicted a racing bicycle, a racing bicycle frame and bicycle parts bearing the PINARELLO trademark.

5. Parties’ Contentions

A. Complainant

The Complainant says the Domain Name is confusingly similar to its PINARELLO trademark and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.

As to rights and legitimate interests, the Complainant says the Respondent’s name has no connection with the Domain Name; there is no evidence that the Respondent has been commonly known by the Domain Name; the Respondent’s website looks identical to the Complainant’s official website and has no disclaimer on it; there has never been any relationship between the parties; the Respondent is not known to have any relationship with any of the Complainant’s authorized agents or official resellers; and the Respondent’s website offers counterfeits of the Complainant’s products.

As to bad faith, the Complainant says its PINARELLO trademark is well-known worldwide in connection with professional racing bicycles and equipment; the Respondent’s website appears to be an official website of the Complainant, whereas it is unauthorized, and it offers counterfeits of the Complainant’s products. Further, the Respondent’s website contains no contact information and the name of the Respondent, “Miss Cheng” is likely to be fake.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer of the Domain Name, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and AltaVista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848.

A. Identical or Confusingly Similar

The Domain Name is clearly confusingly similar to the Complainant’s registered trademark PINARELLO, the word “china” being insufficient to distinguish the Domain Name from that trademark and the generic Top Level Domain “.com” being inconsequential. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The Complainant has established this element of its case.

B. Rights or Legitimate Interests

The Panel finds that the PINARELLO mark is distinctive and well-known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The burden of production therefore shifts to the Respondent to show by concrete evidence that she does have rights or legitimate interests in that Domain Name. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.

The Complainant has established this element of its case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Paragraph 4(b)(iv) provides:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location”.

Annex 7B to the Complaint shows that on March 29, 2012, the Respondent’s website was presented as if it were an official website of the owner of the PINARELLO mark. This establishes to the satisfaction of the Panel both that the Respondent must have had the Complainants’ mark in mind when she registered the Domain Name and used the Domain Name for the purpose described in the Policy, paragraph 4(b)(iv). Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.

The Complainant has established this element of its case.

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 Domain Name <pinarellochina.com> be transferred to the Complainant.

Alan L. Limbury
Sole Panelist
Dated: May 22, 2012

 

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