WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pirelli & C. S.p.A. v. Mons Lundqvist
Case No. DNU2014-0001
1. The Parties
The Complainant is Pirelli & C. S.p.A., Milan, Italy, represented by Fasano & Avvocati, Italy.
The Respondent is Mons Lundqvist, Staffanstorp, Sweden.
2. The Domain Name and Registrar
The disputed domain name <pirelli.nu> is registered with Crystone Sverige AB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2014. On March 27, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2014, the Registrar transmitted by email to the Center its verification response. In response to a notification that the language of the registration agreement was Swedish and a notification that the Complaint was administratively deficient, Complainant filed an amended Complaint in both English and the Swedish language on April 10, 2014.
The Center verified that the amended 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, and the proceedings commenced on April 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2014. Apart from an email communication from Respondent of April 28, 2014, no formal Response was filed with the Center.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 12, 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. Procedural Matters
4.1. Language of the proceedings
Paragraph 11 of the Rules reads
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
(b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.”
The language of the applicable registration agreement is Swedish, but Complainant has requested the proceedings to be conducted in English. The Complaint was filed in English and was later translated into Swedish and notified to Respondent in both languages as is the practice followed by the Center prior to the appointment of the Panel (see paragraph 4.3 in the “WIPO Overview 2.0”).
Based on this and on the fact that Respondent has not objected to Complainant’s request, and that it is clear to the Panel from Respondent’s correspondence with the Center in the case that the Respondent has good knowledge of the English language, the Panel decides that the language of the proceedings is English.
4.2. Proper Respondent
In an email communication from Respondent of April 28, 2014 to the Center, Respondent inter alia provided the following information:
“I am currently not the holder of the domain name pirelli.nu. The service was
stopped with the registrar Crystone on March 31, 2014. See attached copy of
printout from registrar control panel pages (Appendix 2).”
However, the Panel notes that the Registrar has confirmed that the registrant of the disputed domain name is Mons Lundqvist and that the expiration date is March 14, 2015. The Panel will therefore consider the named Respondent Mons Lundqvist to be the proper Respondent for the purpose of these proceedings.
5. Factual Background
The 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.
The Complainant was established in 1872 as a manufacturer of rubber products and later diversified into undersea cables and tires and is now an Italian brand name specializing in high performance tires for high performance motor vehicles.
The Complainant is the owner of numerous trademark registrations for PIRELLI, including registrations with effect in the country of residence of the Respondent, Sweden.
6. Parties’ Contentions
The Complainant’ contends that the disputed domain name is identical to a trademark or service mark in which Complainant has rights, since it is composed of the words “pirelli” and the top level designation “.nu”.
Complainant has never authorized Respondent to use its PIRELLI mark in any domain name. Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. He has never been commonly known by it and does not hold any trademark or other right consisting in whole or in part in the denomination PIRELLI. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name since it is used in connection with a parking site hosted by a company Quality Management Partner and on which the said company offers to third parties that the domain name can be used to link or redirect to their (other) websites.
Complainant finally contends that the disputed domain name was registered and is being used in bad faith. Respondent must have been aware of the PIRELLI trademark when he registered the disputed domain name. The disputed domain name is used to advertise the various services offered by the company Quality Management Partner through which the company takes advantage of the reputation and goodwill associated with Complainant's mark in increasing traffic to the site, and thereby, eventually increasing revenues.
As mentioned above no formal Response was filed with the Center, and the email communication from Respondent of April 28, 2014 to the Center, did not contain any response to the claims made by Complainant in the Complaint.
7. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the 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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s distinctive and reputed PIRELLI mark with the addition of “.nu” designation. Since the country code Top-Level Domain (“ccTLD”) designation may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name is identical confusingly similar to a mark in which the Complainant has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent is using the disputed domain name, makes it inconceivable to the Panel that any rights or legitimate interests exist.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii), and paragraph 4(c) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration or use in bad faith:
(i) circumstances indicating that the domain name holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name holder has registered the 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 the domain name holder has engaged in a pattern of such conduct; or
(iii) the domain name holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the domain name holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the distinctive nature of the Complainant’s PIRELLI mark and the reputation of the mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant and the Complainant’s activities towards its customers. The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Panel finds that the Complainant has made its case and showed that the Respondent “has intentionally attempted to attract, for commercial gain, Internet users to the domain name holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the domain name holder’s website or location” as stated in paragraph 4(b)(iv) of the Policy.
Noting that the disputed domain name incorporates a registered and well-known trademark, that no formal Response has been filed, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <pirelli.nu> be transferred to the Complainant.
Date: June 26, 2014