PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant submits that the disputed domain names are identical to PIRELLI marks, because they wholly incorporate the dominant part of the mark, namely the word “PIRELLI”.
The Complaint submits that it is well founded that generic top level suffixes “.direct”, “.company”, “.business”, “.bike”, “.world”, “.services”, “.repair”, “.international”, “.guru”, “.guide”, “.directory", “.supplies”, “.supply” are to be ignored when determining whether the disputed domain names are identical to the PIRELLI marks. A top level suffix is a technical requirement of registration and does not affect the dominant part “PIRELLI”. The disputed domain names are consequently identical to the Complainant’s mark.
The Complainant also submits that the disputed domain names can be confused with the trade mark registrations and/or applications of Pirelli, the trade name Pirelli; and the domain names registered by Pirelli, in particular with Complainant’s primary domain name: pirelli.com, which is likely to lead to confusion and/or association for the Internet users.
Lack of rights or legitimate interests
The Complainant says that the Respondent is not approved to use the PIRELLI marks in, or as part of, any domain name and has no association, affiliation or dealings with the Complainant.
The Complainant says the domain names currently resolve to parking pages, permitting the Respondent to earn pay-per-click revenue. The parking pages contain sponsored links to websites in competition with Pirelli’s core business. Hence, 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 non commercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s PIRELLI marks.
Further, there is no evidence that the Respondent has been commonly known by the disputed domain names.
The Complainant submits that it has made out a prima facie case of absence of rights or legitimate interests in the domain names on the part of the Respondent and therefore, the evidentiary burden shifts to the Respondent to show that he has rights or legitimate interests in the domain names.
Registration and use of the disputed domain names in bad faith
The Complainant asserts that the disputed domain names have been registered and are being used in bad faith. The Respondent has registered and/or has been using 13 domain names which wholly comprise the dominant component of the well-known PIRELLI Marks and are identical to those marks. The Complainant says that this evidences a clear intent to trade upon the reputation and good will associated with the PIRELLI marks.
The Complainant says the Respondent is engaged in a pattern of registration of domain names identical to the PIRELLI marks, to which he is not entitled. Taking into account the widespread advertising campaigns carried out by Pirelli for the promotion of products and services covered by the PIRELLI marks, it is unlikely that the registration of the domain names in question may be attributed to mere chance and is with a full awareness and intent to exploit the reputation and goodwill of the Complainant and PIRELLI marks.
The Complainant asserts that the Respondent has been deliberately using the domain names, which are identical to PIRELLI marks, to attract for commercial gain, Internet users to its web sites, 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 sites. The Complainant says that the domain names resolve to parking pages with sponsored links of the Complainant’s competitors, permitting the Respondent to earn pay-per-click revenue, which evidences a clear intent to trade upon the reputation and good will associated with PIRELLI marks.
The Complainant submits that under paragraph 2 of the Policy, the Respondent warranted that the domain names’ registration would not infringe upon or otherwise violate the rights of any third party, and that he would not knowingly use the domain name is violation of any applicable laws or regulations. By registering a well-known mark, or by failing to check whether the registrations would have infringed on the rights of a third party, the Respondent violated these provisions.
The Complainant says the registration of the disputed domain names has been carried out with the sole purpose to attract, for commercial gain, Internet users to the web sites by creating a likelihood of confusion with the Complainant's marks, or to exploit in any other way Pirelli’s reputation and good will.
The Complainant requests that the disputed domain names be transferred to the Complainant.
RESPONDENT:
The Respondent asks the Panel to take in account that his response is without legal assistance and limited knowledge of the UDRP arbitration process.
He says he was not aware of any complaints by Pirelli until he received correspondence from the case administrator and has been denied the ability to take a more thoughtful action to demonstrate his good character.
The Respondent says it is a duty of trade mark owners to actively protect their marks. By pursuing UDRP arbitration, Pirelli is explicitly acknowledging that it did not protect its trade mark by registering the domain names during the sunrise period for new gTLDs.
The Respondent denies bad faith and submits that in light of the Pirelli’s decision not to participate in ICANN’s trademark protection mechanism, the burden of proof (especially in the area of bad faith) needs to rise significantly above “balance of probability”.
The Respondent submits that the registration of multiple similar domain names cannot be regarded as a demonstration of bad faith because it is a common practice used by website owners. The Respondent asserts that a generally accepted practice, by definition cannot be an act of bad faith. He says:
“A possible argument for bad faith in this instance could be made, by stating that each of the new gTLD has significant independent value. But Pirelli is not making this argument, as its no true. While country specific extensions have a distinctive value, as one might want to find country specific offering, for the new gTLD’s this is currently not true.
Therefore if owning a single DN is not automatically an example of bad faith, then owning multiple DN’s cannot equally be regarded as an act of bad faith. “
Regarding pay-for-click advertisement on the disputed domain names, the Respondent says that until the CAC forwarded the complaint he had no knowledge that the registrar had put advertisements on the sites. He did not request or explicitly give permission to the registrar to put adverts on the sites. He says he had no reason to believe that the registrar would put advertisements on the sites and that as far as he is aware he will not economically benefit from the advertisements.
The Respondent says that after finding out about advertisements, Pirelli could have contacted him and he would have then taken the necessary action. The Respondent says he did not know that his registrar would puts ads on the site and that it is unreasonable to believe this action showed bad faith. The Respondent says that on being informed of the advertisements, he immediately tried to remove them but was informed that Godaddy’s terms and condition entitled it to place pay-per-click ads and they would not remove them.
The Respondent submits that arbitration under the UDRP can only take place because all registrars have the relevant clauses in their terms and conditions. He submits that clauses in the registrar’s terms and conditions are as equally valid as the UDRP clauses and that it should be beyond the scope of the arbitration to reinterpret or effectively find against the clauses.
The Respondent submits that if the registrar’s terms and conditions are inconsistent with ICANN policy, then it is the responsibility of ICANN and the registrar to resolve this issue going forward, not for the parties involved in this arbitration.
The Respondent says the domain name parking did not require his positive action and cannot be viewed as bad faith. He also says that as a matter of good faith he has managed to remove the advertisements from the sites.
The Respondent says he is not involved in cyber-squatting, typo-squatting or pseudo - cyber-squatting and this too demonstrates his good faith.
The Respondent asserts that that the domain names were only recently registered. He says there is typically a delay between registering a domain name and content being available on that the site but that content will soon be available, as evidenced by an invoice annexed to the response. He says PIRELLI.WORLD will be the main site and the other 12 domain names will be redirected to it. The main site would be a fans site to allow motor heads to read about tyres and to learn and watch videos related to Pirelli. It will be clear that it’s a fan (appreciation) site, so there will be no confusion with Pirelli’s official site and that his actions will not prevent Pirelli’s pursuing its online activities.
The Respondent also asserts the right to freedom of expression, which he says is recognized as a human right under article 19 of the Universal Declaration of Human Rights, to which all members of the United Nations are signatories. He says a fan site is a form of free speech and should be able to include trademark protected names in their domain names unless they deliberately show bad faith.
In conclusion the Respondent submits that he has not shown bad faith and has not tried to make any illegitimate commercial gains and requests that the complaint be dismissed.
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