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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No.	100388
Time of Filing	2012-02-15 11:18:48
Disputed domain name	PIRELLISCORPIONATR.NET

Case Administrator
Name	Tereza Bartošková

Complainant
Organization	Pirelli & C. S.p.A.
Authorized Representative
Name	Avvocato Pierfrancesco Carmine Fasano

Respondent
Organization	Private Whois pirelliscorpionatr.net

Other Legal Proceedings
None

Identification of rights
The Complainant is the proprietor of numerous registrations and applications for trademarks, comprising the word "pirelli" in Italy, the EU, the US and many other countries all over the world. The Complainant is the proprietor of the Community trademark PIRELLI which is registered under number 9483173 for several products and services, including tyres.

Factual Background
Pirelli was founded in 1872 and became one of the largest tyre producers in the world. The Complainant registered its main domain name 'pirelli.com' on 11 January 1995 (see annexes 2 and 3 of complaint). The Complant's tyre business consists of two main segments: consumer (70% of total revenues) deals with tyres for motor vehicles, sports utility vehicles (SUVs), light commercial vehicles and motorbikes; and industrial (30% of revenues), which means tyres for buses, heavy trucks, agricultural machinery and steelcord, the fundamental strengthening element for radial tyres. Thanks to the success and leader position achieved by the Complainant, its trademarks are well-known worldwide. The brand value of PIRELLI has been estimated by Interbrand in 2010 at approximately 1.8 billion euros. Among its numerous tyre ranges, PIRELLI commercializes the product line called “Scorpion” especially developed for SUV’s and crossover vehicles. The tyre named “Scorpion ATR” is an all terrain tyre; versatile in all situations with excellent off road capabilities. Scorpion ATR features a tread with a specific self-cleaning pattern. It facilitates the most demanding off-road driving and resists the hardest shocks on uneven surfaces. The Domain Name “pirelliscorpionatr.net” was registered on September 10, 2011, i.e. well after Complainant’s trademarks.

Factual Background

Pirelli was founded in 1872 and became one of the largest tyre producers in the world. The Complainant registered its main domain name 'pirelli.com' on 11 January 1995 (see annexes 2 and 3 of complaint).

The Complant's tyre business consists of two main segments: consumer (70% of total revenues) deals with tyres for motor vehicles, sports utility vehicles (SUVs), light commercial vehicles and motorbikes; and industrial (30% of revenues), which means tyres for buses, heavy trucks, agricultural machinery and steelcord, the fundamental strengthening element for radial tyres. Thanks to the success and leader position achieved by the Complainant, its trademarks are well-known worldwide. The brand value of PIRELLI has been estimated by Interbrand in 2010 at approximately 1.8 billion euros.

Among its numerous tyre ranges, PIRELLI commercializes the product line called “Scorpion” especially developed for SUV’s and crossover vehicles. The tyre named “Scorpion ATR” is an all terrain tyre; versatile in all situations with excellent off road capabilities. Scorpion ATR features a tread with a specific self-cleaning pattern. It facilitates the most demanding off-road driving and resists the hardest shocks on uneven surfaces.

The Domain Name “pirelliscorpionatr.net” was registered on September 10, 2011, i.e. well after Complainant’s trademarks.


NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

Rights
The Complainant has, to the satisfaction of the Panel, shown that the Domain Name is confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy), namely to the trademark PIRELLI. The Domain Names consists of this well known trademark and of two additional words, SCORPION and ATR, which constitute the name of a range of tyres of the Complainant. By adding these two words to the trademark PIRELLI, the Respondent did not take away the likelihood of confusion but increased the likelihood of confusion.

Rights

The Complainant has, to the satisfaction of the Panel, shown that the Domain Name is confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i)of the Policy), namely to the trademark PIRELLI.

The Domain Names consists of this well known trademark and of two additional words, SCORPION and ATR, which constitute the name of a range of tyres of the Complainant. By adding these two words to the trademark PIRELLI, the Respondent did not take away the likelihood of confusion but increased the likelihood of confusion.

No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Domain Name (within the meaning of paragraph 4(a)(ii)of the Policy). The Complainant has no relationship with the Respondent and has not allowed the Repondent to use its marks or the Domain Name. The Respondent did not contradict this.

Bad faith
The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy). The Respondent not only used the well known PIRELLI trademarks in the Domain name, but also the product name of the Complainant's tyres. This evidences a clear intent to trade upon the reputation and good will associated with the PIRELLI trademarks. Respondent deliberately used the PIRELLI trademarks in the Domain Name to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with PIRELLI’s marks and products to the source, sponsorship, affiliation or endorsement of its domain name or of a product or service on such web site.

Bad faith

The Complainant has, to the satisfaction of the Panel, shown the Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

The Respondent not only used the well known PIRELLI trademarks in the Domain name, but also the product name of the Complainant's tyres. This evidences a clear intent to trade upon the reputation and good will associated with the PIRELLI trademarks. Respondent deliberately used the PIRELLI trademarks in the Domain Name to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with PIRELLI’s marks and products to the source, sponsorship, affiliation or endorsement of its domain name or of a product or service on such web site.

Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Principal Reasons for the Decision
The Respondent has registered and used a domain name that is confusingly similar to the Complainant's trademarks and in which the Respondent has no rights or legitimate interest. The Respondent has clearly registered the Domain Name with the PIRELLI trademarks and the product Scorpion ATR tire in mind and thus registered the domain name in bad faith.

Decision
For all the following reasons, the Complaint is	Accepted
and the disputed domain name(s) are to be
PIRELLISCORPIONATR.NET	Transferred to Pirelli & C. S.p.A.

Panellists
Name	Tom Joris Heremans
Date of Panel Decision	2012-03-23

Publication of the Decision
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Dispute 100388

Panel Decision