{
    "case_number": "CAC-UDRP-100425",
    "time_of_filling": "2012-04-02 12:56:55",
    "domain_names": [
        "PIRELLIREIMMOBILIARE.COM"
    ],
    "case_administrator": "Tereza Bartošková (Case admin)",
    "complainant": [
        "Pirelli & C. S.p.A."
    ],
    "complainant_representative": null,
    "respondent": [
        "Giuseppe Corapi"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant – Pirelli at a glance\r\n\r\nPirelli & C. S.p.A. (hereinafter referred to as “Pirelli” or the “Company”) is a well-known company founded in 1872 and based in Milan, Italy (ANNEX 1 – “Brochure Pirelli”). For more than a century it has developed as a truly international enterprise, deeply rooted in the different markets. In its strategy to the top of the range, the Pirelli has focused its activities in a selected number of high margin businesses of high margin profit, with segmentation towards high range products. Pirelli has always been combined with capacity for innovation, product quality and brand strength. Pirelli is synonymous with quality and the ultimate in performance. And it is in the high tech and superior performance segment of the high-end market that Pirelli has, over the years, built its leadership.\r\nThe Company’s core business is identified as Pirelli Tyre, the fifth largest global tyre manufacturar with 20 plants in 11 countries throughout the world (Argentina, Brazil, China, Egypt, Germany, United Kingdom, Italy, Romania, Turkey, United States and Venezuela), and a commercial network that covers over 160 countries.  \r\nOver the years, further to its core business, Pirelli has created new businesses in other segments, thanks to its continual focus on research and innovation in products and services: Pirelli Ambiente S.p.A., engaged in the renewable energy sector; Pirelli & C. Eco Technology S.p.A., dedicated to developing technologies to control pollutant emissions; Pirelli Labs, a centre of technological excellence and engine of innovation and Pirelli Real Estate S.p.A. (shortly Pirelli RE) leader in the real estate sector in Italy and in the rest of Europe, with operations in Italy, Germany and Poland. \r\nPirelli RE, listed on the Milan Stock Exchange since 2002, is a fund and asset manager that enhances and manages real estate portfolios on behalf of third party investors through a distinctive pattern based on the integration of specialized services (agency and property management) functional to its management activities (fund and asset management). \r\nThe total assets under management by Pirelli RE is approximately 13,6 billion Euros, with a property portfolio worth 12,3 billion Euros and the residual amount (approximately 1,3 billion Euros) in non-performing loans (management and out of court recovery of bad debts for banks and investors).\r\n\r\nThe Complainant’s protected rights\r\n\r\nTrademarks:\r\n\r\nPirelli is owner of numerous registrations and\/or applications for trademarks, comprising the keyword “PIRELLI”, as per the trademark list hereto enclosed (ANNEX 2 - “Trademark list”). In this dispute, among such trademarks, the Complainant relies on the following marks:\r\n\r\nTrademark Country Owner Application no. Application date Registration no. Registration date Class\r\nPIRELLI RE (word) EU Pirelli & C. S.p.A. 006083158 09\/07\/2007 006083158 06\/06\/2008 35, 36\r\nPIRELLI RE (word) Italy Pirelli & C. S.p.A. MI2007C007195 05\/07\/2007 1276670 23\/04\/2010 35, 36\r\nPIRELLI RE (device) EU Pirelli & C. S.p.A. 003218476 19\/06\/2003 003218476 04\/08\/2004 35, 36\r\nPIRELLI RE (device) WIPO (designated China, Croatia, Russia, Turkey) Pirelli & C. S.p.A. 11639 D\/2007 27\/07\/2007 946106 27\/07\/2007 35, 36\r\nPIRELLI RE (device) EU Pirelli & C. S.p.A. 006754154 14\/03\/2008 006754154 14\/01\/2009 35, 36\r\nPIRELLI RE (device) Italy Pirelli & C. S.p.A. MI2007C012565 05\/12\/2007 1281571 10\/05\/2010 35, 36\r\n\r\nThe above mentioned Community Trademarks’ certificate of registrations as well as the abstracts of the databases of the Italian Patent and Trademark Office (UIBM) and WIPO regarding the above mentioned Italian and international trademarks are hereto enclosed as ANNEXES 3.1-3.6 - “PIRELLI RE trademarks”.\r\nTrademarks included in the ANNEXES 3.1-3.6, registered in Italy, in the EU, in China, Croatia, Russia and Turkey, have been used by Pirelli in connection with the following products and services:\r\na) apartment house management, renting of real; estate, housing agency, real estate management, real estate appraisal, real estate appraisal services, real estate affairs; insurance; financial affairs; monetary affairs, leasing of real estate and offices (Class 36 of International Classification System of Goods and Service);\r\nb) franchising services; business advisory services relating to franchising; commercial management assistance in relation to franchises; advertising; business management; business administration; office functions (Class 35 of International Classification System of Goods and Service).\r\nPirelli has used such trademarks for many, many years and has invested substantial effort over a period of time, including the expenditure of substantial amounts, to develop good will in its trade name and trademarks to cause consumers throughout the world to recognize its marks as distinctly designating products and services that originate with Pirelli. \r\nHence, Pirelli enjoys extensive rights in such trademarks which are internationally well-known.\r\n\r\nDomain names:\r\n\r\nPirelli is owner of numerous domain names listed on ANNEX 4 – “Domain name list”. In particular, the Complainant relies on its primary domain name, “pirelli.com”, created on January 11, 1995, as well as on the following domain names (hereinafter referred to as “PIRELLI RE domain names”):\r\na) pirellire.com, created on March 12, 2003;\r\nb) pirellire.net, created on March 12, 2003;\r\nc) pirellire.org, created on March 12, 2003.\r\n\r\nCompany name: \r\n\r\nPirelli is a joint stock company incorporated under the laws of Italy, as per abstract certificate issued by the Chamber of Commerce of Milano - Registrar of Companies (ANNEX 5 – “Company certificate” and ANNEX 6 – “English translation of company certificate”) and company by laws (ANNEX 7 – “Company by laws”).\r\nDuring its century-old history Pirelli has changed its company name, leaving always unchanged the dominant part of it, namely “PIRELLI” (ANNEX 8 – “Certificate of changes in company name”).\r\n\r\nThe Complainant’s above-mentioned trademarks, domain names and company name together are hereinafter referred to as “PIRELLI Marks”.\r\n\r\n* * * *\r\n\r\nThe domain name “pirellireimmobiliare.com” was registered on October 5, 2009, i.e. well after Complainant’s trademarks. As certified by the attached printout of the relevant WHOIS records at the time of filing of this Complaint, Giuseppe Corapi is shown as registrant (ANNEX 9 – “WHOIS records”).\r\nThe disputed domain name should be transferred to Pirelli, because it constitutes usurpation and violation of the rights of the Complainant with regard to its trademarks registered in Italy, in the EU, in China and in numerous other countries worldwide, its domain names and its company name for the following reasons.\r\n\r\nICANN Rules 3(b)(ix)(1); ICANN Policy 4(a)(i)\r\nConfusing similarity of the disputed domain name with the trademarks, company name and domain names of the Complainant\r\nThe disputed domain name is confusingly similar to PIRELLI Marks, because it wholly incorporates the dominant part of PIRELLI Marks, namely the wording “PIRELLI”.\r\nIn respect to PIRELLI RE trademarks (see ANNEXES 3.1-3.6) and PIRELLI RE domain names (see ANNEX 4), the Respondent added the word “immobiliare”, which means real estate in Italian (ANNEX 10 – “English translation of the word immobiliare”) and coincides with one of the businesses of Pirelli, involved in the real estate sector. Adding such descriptive word is insufficient to negate the confusingly similarity between the disputed domain name and PIRELLI Marks, in particular PIRELLI RE trademarks and PIRELLI RE domain names, and even increases the likelihood of confusion.\r\nIt is well-founded that adding a generic\/descriptive word related to Complainant’s business does not affect the attractive power of the dominant part of PIRELLI Marks, i.e., “PIRELLI”, and the domain name “pirellireimmobiliare.com” is consequently confusingly similar with the Complainant’s marks. \r\nThe domain name “pirellireimmobiliare.com”  can be confused with:\r\na) the trademark registrations and\/or applications of Pirelli valid in Italy and worldwide (see ANNEXES 2-3.1-3.6);\r\nb) the domain names registered by Pirelli (see ANNEX 4), in particular, with:\r\npirelli.com;\r\npirellire.com;\r\npirellire.net;\r\npirellire.org.\r\nc) the company name of Pirelli (see ANNEXES 5-6).\r\nThe similarity of the disputed domain name to PIRELLI Marks, is likely to lead to confusion and\/or association for the Internet users.\r\nSee decisions: WIPO\/D2000-1409 (Sony Kabashiki Kaisha v. Inja, Kil - finding that “[n]either the addition of an ordinary descriptive word … nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”); NAF\/FA141825 (chemyahoo.com and others - \"it is also well-established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark\"); WIPO\/D2002-0367 (experianautomotive.com – finding that addition of the generic term, “automotive”, does not distinguish Respondent’s domain name from Complainant's mark because the domain contains Complainant's EXPERIAN mark in its entirety); NAF\/FA98071 (antibroadcom.com); NAF\/FA129123 (thriftyairportparking.com - finding confusing similarity with the THRIFTY marks, particularly since those additions have connotations that relate to Complainant's business services); NAF\/FA113283 (champs-sports.com and others - \"The addition of generic words is especially confusing where the generic words bear an obvious relationship to Complainant's business\"); NAF\/FA109576 (hustlervideo.com - use of the generic term 'video' does not defeat a confusing similarity claim, because the generic term directly relates to Complainant's business, which increases the likelihood of confusion); NAF\/FA93670 (marriott-hotel.com); NAF\/FA96700 (dewalt-woodworking-tools.com and others - \"Respondent's use of nine domain names using the DEWALT mark with a descriptive term are confusingly similar.\"); NAF\/FA124739 (uhaulem4cheap.com and others).\r\n\r\nICANN Rules 3(b)(ix)(2); ICANN Policy 4(a)(ii)\r\nLack of rights or legitimate interests of Respondent in respect of the domain name “pirellireimmobiliare.com”  \r\nThe Complainant shall make a prima facie showing that the Respondent has no rights and interests in the domain name; however, the burden of proof with respect to this element is light for the Complainant. See WIPO\/DTV2002-0005 (deagostini.tv); WIPO\/D2000-0648 (pivotalsoftware.com); WIPO\/D2002-0503 (arroyocraftsman.com); WIPO\/D2003-0455 (croatiaairlines.com).\r\nPirelli has no relationship with the Respondent whatsoever. Pirelli has never authorized the Respondent to use the domain name “pirellireimmobiliare.com” or any other domain name. Additionally, there is no indication that the Respondent has any legitimate interest in PIRELLI Marks according the searches done on the web sites of the Italian Patent and Trademark Office (UIBM), the EU’s Office of Harmonization for the Internal Market (OHIM) and WIPO.\r\nFurther, entering “pirellireimmobiliare.com” in the address bar of an internet browser has resolved to a web site in Italian related real estate services (ANNEX 11 – “Printout of pirellireimmobiliare.com of February 16, 2012”). Hence, there is no evidence that the Respondent’s use of “pirellireimmobiliare.com” is either a bona fide offering of goods or services or a legitimate noncommercial or fair use, without intent for commercial gain. Finally, there is no evidence that the Respondent has been commonly known by the domain name “pirellireimmobiliare.com”.\r\nSee decisions: NAF\/FA190644 (nicklausgolf.com - “Respondent’s use of a domain name confusingly similar to Complainant’s mark(s) to divert Internet users to websites unrelated to Complainant’s business does not represent a bonafide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii)”); NAF\/FA93554 (bigdog.com – finding no legitimate use when respondent was diverting consumers to its own web site by using complainant’s trademark(s)); WIPO\/D2000-1204 (msnbc.org – finding no rights or legitimate interest in the famous MSNBC mark where respondent attempted to profit using complainant’s mark by redirecting Internet traffic to its own website); NAF\/FA96356 (broadcom2000.com - finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); NAF\/FA96209 (galluppll.com - finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); NAF\/FA740335 (cigaraficionada.com - finding that the respondent was not commonly known by the “cigaraficionada.com” domain name); NAF\/FA881234 (stlawu.com - concluding that the respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the respondent is commonly known by the disputed domain name); WIPO\/D2000-0020 (saint-gobain.net – finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); WIPO\/D2000-0403 (charlesjourdan.com – finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).\r\n\r\nICANN Rules 3(b)(ix)(3); ICANN Policy 4(a)(iii)\r\nRegistration and use of “pirellireimmobiliare.com” in bad faith\r\nThe disputed domain name has been registered and is being used in bad faith considering that the disputed domain name wholly incorporates the dominant part of the well-known PIRELLI Marks, namely the wording “PIRELLI”. In respect to PIRELLI RE trademarks (see ANNEXES 3.1-3.6) and PIRELLI RE domain names (see ANNEX 4), the Respondent added a generic\/descriptive word related to Complainant’s business.\r\nRespondent’s bad faith is clearly evident from the fact that it has registered and has been using a domain name confusingly similar to the trademarks, company name, domain names of Pirelli. This evidences a clear intent to trade upon the reputation and good will associated with PIRELLI Marks. Respondent has been deliberately using the domain name confusingly similar to PIRELLI Marks to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Pirelli’s marks and products to the source, sponsorship, affiliation or endorsement of its web site or of a product or service on such web site.  \r\nTaking into account the vast and widespread advertising campaigns carried out by Pirelli for the promotion of products and services covered by PIRELLI Marks, it is unlikely that the registration of the domain name in question may be attributed to mere chance and not, as is, with a full awareness and intent to exploit the reputation and good will of the Complainant and PIRELLI Marks. See decision CAC Case N. 05367 (Giorgio Armani s.p.a. v. Antares S.p.A., Germano Armani).\r\nWithout any doubt the Respondent has had relevant notice about the existence of PIRELLI Marks and the domain name has been registered and is being used with a view of commercial gain, since: a) it registered and has been using a domain name corresponding with the dominant part of PIRELLI Marks, adding a generic word (“immobiliare”, which means real estate in Italian, coinciding with a business sector of the Complainant); b) the Respondent is an Italian real estate agent (see ANNEX 11); and c) the web site to which the domain name resolved is related to real estate business (see ANNEX 11).\r\nFurthermore, the correspondence exchanged between the Complainant and the Respondent makes it clear that this latter has registered the disputed domain name for the purpose of selling it to the Complainant or to third parties for valuable consideration in excess of his out-of-pocket costs  related to the disputed domain name (ANNEX 12 – “Correspondence exchanged between the Complainant and Respondent”; ANNEX 13 – “English translation of the correspondence”). Further to such correspondence, the Respondent cancelled the content of the web site to which the domain name resolved (ANNEX 14 – “Printout of pirellireimmobiliare.com of March 29, 2012”).\r\nIn the light of the foregoing, it is considered that the registration of the domain name “pirellireimmobiliare.com” has been carried out with the sole purpose of exploiting Pirelli’s reputation and good will and\/or drawing on such domain name Internet users for commercial gain. \r\nSee decisions of the Czech Arbitration Court: Case N. 04316 (Prada SA v. Maurizio Lussetti); Case N. 05650 (Salumificio Fratelli Beretta S.p.A. v. Nico Maria Cavallo), Case N. 05572 (KG Industries LLC v. KG Industries, Gary Powell KG Industries); Case N. 05572 (Zott GmbH & Co. KG v. Victor Somov).\r\nSee also NAF\/FA95464 (statefarmnews.com – finding that a respondent registered the domain name “statefarmnew.com” in bad faith because that respondent intended to use a complainant’s marks to attract the public to the web site without the permission from that complainant); NAF\/FA123933 (celebrex-drugstore.com – finding that respondent registered and used the domain name in bad faith pursuant to ICANN Policy 4(b)(iv) because respondent was using the confusingly similar domain to attract Internet users to its commercial website; NAF\/FA126835 (barbiesgalleries.com – citing WIPO\/D2000-1221 Pavillion Agency, Inc v. Greenhouse Agency Ltd finding that the “domain names are obviously connected with the complainant that use or registration by anyone other that complainant suggests “opportunistic bad faith””); NAF\/FA96356 (broadcom2000.com); NAF\/FA96209 (galluppll.com); NAF\/FA740335 (cigaraficionada.com); NAF\/FA881234 (stlawu.com). \r\n\r\n* * * *\r\n\r\nTherefore, having ascertained 1) the confusing similarity of the domain name “pirellireimmobiliare.com” with the rights deriving from the trademarks, company name and domain names in which Pirelli has exclusive rights; 2) the reputation and good will associated with Pirelli and its trademarks; 3) the lack of rights and legitimate interests of the Respondent in the disputed domain name; 4) the bad faith of the Respondent in the registration and use of the disputed domain name, the undersigned authorized representative of the Complainant requests that the domain name “pirellireimmobiliare.com” be transferred to Pirelli & C. S.p.A..\r\n\r\nLIST OF ANNEXES\r\n\r\nANNEX 1 – “Brochure of Pirelli”;\r\nANNEX 2 – “Trademark list”;\r\nANNEXES 3.1-3.6 – “PIRELLI RE trademarks”;\r\nANNEX 4 – “Domain name list”;\r\nANNEX 5 – “Company certificate”;\r\nANNEX 6 – “English translation of company certificate”;\r\nANNEX 7 – “Company by laws”;\r\nANNEX 8 – “Certificate of changes in company name”;\r\nANNEX 9 – “WHOIS records”;\r\nANNEX 10 – “English translation of the word immobiliare”;\r\nANNEX 11 – “Printout of pirellireimmobiliare.com of February 16, 2012”;\r\nANNEX 12 – “Correspondence exchanged between the Complainant and Respondent”;\r\nANNEX 13 – “English translation of the correspondence”;\r\nANNEX 14 – “Printout of pirellireimmobiliare.com of March 29, 2012”.",
    "other_legal_proceedings": "No other legal proceedings concerning the disputed domain name are currently pending.",
    "no_response_filed": "FACTS ASSERTED BY COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT: \r\n\r\nComplainant is a company which has its headquarters located in Italy in Milan. The Pirelly & C. S.p.A Company is well-known worldwide for its know-how in the tires industry which is regarded as being its hallmark. As time goes by, the Company decided to spread and widen its know-how and create other businesses among which Pirelli Real Estate S.p.A, which focuses on real estate, Pirelli Ambiante S.p.A and Pirelli & C.  Eco technology S.p.A which focus on sustainable development to name a few. Pirelli Real Estate S.p.A also known under the name Pirelli RE, has developed a business model of its own which encountered great success. In August 2006, Pirelli RE employed over 1500 people according to Complainant’s record. Pirelli RE happens to be listed on the Borsa Italiana, which is the Italian Stock Exchange.\r\n\r\nIn 2010, the Pirelli Real Estate S.p.A was rebranded into Prelios S.p.A. This rebranding leads to the separation of the former Pirelli Real Estate S.p.A also known under the name Pirelli RE as Pirelli wanted to focus on its core business. As the Complainant mentioned it in its contention for the decision CAC n° 100413 :”in 2010, Pirelli, as a result of the desire to focus exclusively on core industrial activities in the tyre sector, concluded the spin-off of the real estate business and renamed Pirelli RE into Prelios” (CAC decision n°100413, Organization Pirelli & C. S.p.A v. organization Anpoer). \r\n\r\nAccording to Complainant’s records, on August 3, 2006, Pirelli & C S.p.A  owned at 50,3% Pirelli Real Estate. As of today, Prelios S.p.A is financed by Pirelli & C. S.p.A until July 2017. Prelios, formerly Pirelli RE, is separated from Pirelli & C. S.p.A since October 25, 2010. Prelios is still an actor of paramount importance on the real estate market in Italy as well as at the International level.\r\n\r\nRespondent registered the domain name <pirellireimmobiliare.com> on October 5, 2009 thanks to the Registrar Tucows. The records of the Complainant show up that the domain name <pirellireimmobialiare.com> redirected towards the website www.reclick.it where stands a picture of Giuseppe Corapi and an e-mail address. The website www.reclick.it features that the Reclick Agency was created in 1994 and is a real estate company which proposes real estate in Milan and its hinterlands. The website is available only in Italian. Respondent appears to be an individual named Giuseppe Corapi who happens to be an Italian real estate agent. \r\n\r\nThe Complainant submitted the following documents to prove the abovementioned facts:\r\n\r\n-Brochure dated of 2006 describing the Pirelli Group including Pirelli Real Estate S.p.A\r\n-Tucowsdomains Whois search conducted by Complainant on March 29, 2012 \r\n-Copies of Complainant’s trademarks registrations\r\n-Screenshot of the website www.pirellireimmobiliare.com dated of Feburary 16, 2012\r\n -Correspondence exchanged between the Complainant and the Respondent in February 2012\r\n",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the Domain Name is identical or 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).\r\n\r\n",
    "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).",
    "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).",
    "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.",
    "decision": "Accepted",
    "panelists": [
        "Nathalie Dreyfus"
    ],
    "date_of_panel_decision": "2012-04-26 00:00:00",
    "informal_english_translation": "Complainant has proved to own the following trademarks:\r\n\r\n1. \tCommunity-registered trademark n°006083158 - word: PIRELLI RE\r\nApplication date: July 9, 2007\r\nRegistration date: June 6, 2008 \r\n\r\n2.\tCommunity-registered trademark n°003218476 - PIRELLI RE\r\n\r\nApplication date: June 19, 2003\r\nRegistration date: August 4, 2004\r\n\r\n3.\tItaly-registered trademark n°0001276670-PIRELLI RE\r\n\r\nApplication date: July 5, 2007\r\nRegistration date: April 23, 2010\r\n\r\n4.\tInternational Trademark-registered International trademark n°946106 –PIRELLI RE\r\n\r\nRegistration date: July 21, 2007\r\n\r\n5.\tCommunity trademark-registered Community trademark 006754154- PIRELLI RE\r\n\r\nApplication date: March 14, 2008\r\nRegistration date: January 14, 2009\r\n\r\n6.\tItalia-registered trademark 0001281571- PIRELLI RE\r\n\r\nApplication date: December 5, 2007\r\nRegistration date: May 10, 2010 \r\n\r\nBesides, the Complainant also owns the following domain names containing either the denomination PIRELLI or PIRELLI RE:\r\n\r\n <pirelli.com>;<pirellire.com>;<pirellire.net>;<pirellire.org>;\r\n\r\nThe bulk of these domain names are connected to the official web site of the Complainant. The domain names which contain the sign PIRELLI RE redirects towards the new official website of the rebranded Company PRELIOS namely www.prelios.com. \r\n",
    "decision_domains": {
        "PIRELLIREIMMOBILIARE.COM": "TRANSFERRED"
    }
}