PARTIES' CONTENTIONS
A. COMPLAINANT
The Complainant states that the disputed domain names <pirellipromociones.com> and <pirellillantas.com> are confusingly similar to the Complainant’s trademark, as they wholly incorporate the trademark PIRELLI with the addition of generic terms “promociones” (meaning special “offers” in Spanish) and “llantas” (meaning “tyres”) which is not sufficient to negate the confusingly similarity between the disputed domain names and the Complainant’s trademark.
The Complainant also notes that, considering the fact that the Complainant’s core business is the manufacturing and sale of tyres, the addition of these descriptive terms related to Complainant's business even increases the likelihood of confusion with the Complainant’s trademark. The Complainant further states that the generic top-level suffix “.com” has to be ignored for the purpose of determination of confusing similarity between the disputed domain name and the trademark PIRELLI.
With reference to the Respondent’s lack of rights or legitimate interests in respect of the disputed domain names, the Complainant points out that the Complainant has no relationship with the Respondent whatsoever and that the Complainant has never authorized the Respondent to register or use the disputed domain names.
The Complainant highlights that the disputed domain name “pirellipromociones.com” does not resolve to any active website, while “pirellillantas.com” resolves to a parking page permitting the Respondent to earn pay-per-click revenue, and concludes that there is no evidence that the Respondent has used or has been preparing to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark PIRELLI.
The Complainant also states that the Respondent is not commonly known by the disputed domain names.
With reference to the bad faith requirement, the Complainant asserts that the Respondent’s bad faith is evident from the fact that it registered and has been using domain names incorporating the trademark PIRELLI and submits that the Respondent clearly intended to trade upon the reputation and goodwill associated with the Complainant’s trademark.
The Complainant contends that, considering the vast and widespread advertising campaigns carried out by the Complainant for the promotion of products and services covered by the trademark PIRELLI, it is unlikely that the registration of the disputed domain names may be attributed to mere coincidence and was not made with full awareness and intent to exploit the reputation and goodwill of the Complainant and its marks.
The Complainant also indicates that, as the Respondent seems to be involved in the sale of tyres, it is unlikely that the Respondent did not have knowledge of the Complainant and its business.
The Complainant further asserts that, by registering a well-known trademark or by failing to check whether the disputed domain names would have infringed the rights of a third party, the Respondent violated paragraph 2, letters b) c) and d) of the UDRP Policy, which provides that, when registering a domain name, the applicant may warrant that the domain name registration will not infringe upon or otherwise violate the rights of any third party and that it has no unlawful purpose and will not knowingly use the domain name is violation of any applicable laws or regulations.
The Complainant highlights that, on the same day the disputed domain names were registered (October 13, 2009), the Respondent registered also the following domain names, comprising the Complainant’s well-known trademark PIRELLI: <llantaspirelli.mx>, <pirellimexico.com.mx>, <pirellimexico.mx>, <pirellimexico.com>, <pirellimexico.net>, <pirellimexico.org>, <pirellimexico.info>, <pirellipromociones.mx>, <pirellipromociones.com.mx>, <pirellillantas.mx> and <pirellillantas.com.mx>. The Complainant informs the Panel that the domain names <llantaspirelli.mx>, <pirellimexico.com.mx>, <pirellimexico.mx> and <pirellimexico.com> were transferred to the Complainant following separate ADR proceedings. In view of the above, the Complainant asserts that the Respondent has engaged in a pattern of registration of domain names confusingly similar to the trademark PIRELLI.
As to the use of the disputed domain names, the Complainant contends that the Respondent has been deliberately using them to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the PIRELLI trademark and products as to the source, sponsorship, affiliation or endorsement of the disputed domain names or of a product or service on the Respondent’s web site.
B. RESPONDENT
No administratively compliant response has been filed.
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