{ "case_number": "CAC-UDRP-100935", "time_of_filling": "2015-02-26 10:06:14", "domain_names": [ "PIRELLIPROMOCIONES.COM", "PIRELLILLANTAS.COM" ], "case_administrator": "Lada Válková (Case admin)", "complainant": [ "Pirelli & C. S.p.a." ], "complainant_representative": "Avvocato Pierfrancesco Carmine Fasano (FASANO-Avvocati)", "respondent": [ "Llantas Supremas S.A." ], "respondent_representative": null, "factual_background": "The Complainant is a multinational company based in Italy which is among the largest tyre manufacturers in the world and leader in the high-end segments with high technological content. The Complainant has 21 plants located in 13 countries throughout the world, including in Mexico, and a commercial network that covers over 160 countries.\r\n\r\nThe Complainant is the owner of numerous trademark registrations and applications constituted of or comprising PIRELLI, including the following trademark registrations:\r\n\r\n- Italian trademark registration No. 0000748773 for PIRELLI (word mark), filed on April 4, 1996, in classes 9 and 12;\r\n- Community trademark registration No. 003733136 for PIRELLI (word mark), filed on March 31, 2004, in all classes;\r\n- Mexican trademark registration No. 357790 for PIRELLI (word mark), filed on June 29, 1988, in classes 7, 12 and 17;\r\n- Mexican trademark registration No. 356327 for PIRELLI (figurative mark), filed on June 29, 1988, in classes 7, 12 and 17.\r\n\r\nThe Complainant operates its main web site at , registered on January 11, 1995.\r\n\r\nThe disputed domain names and were registered on October 13, 2009.", "other_legal_proceedings": "No legal proceeding has been commenced or terminated in connection with the disputed domain names.", "no_response_filed": "PARTIES' CONTENTIONS\r\n\r\nA. COMPLAINANT\r\n\r\nThe Complainant states that the disputed domain names and 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.\r\n\r\nThe 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. \r\n\r\nWith 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.\r\n\r\nThe 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.\r\n\r\nThe Complainant also states that the Respondent is not commonly known by the disputed domain names.\r\nWith 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.\r\n\r\nThe 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. \r\n\r\nThe 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. \r\n\r\nThe 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. \r\n\r\nThe 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: , , , , , , , , , and . The Complainant informs the Panel that the domain names , , and 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.\r\n\r\nAs 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.\r\n\r\nB. RESPONDENT\r\n\r\nNo administratively compliant response has been filed. \r\n", "rights": "The Complainant has, to the satisfaction of the Panel, shown that the disputed domain names are 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).", "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 disputed domain names (within the meaning of paragraph 4(a)(ii)of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are 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": [ "Luca Barbero" ], "date_of_panel_decision": "2015-04-09 00:00:00", "informal_english_translation": "The Complainant is the owner of the trademark PIRELLI, with registrations in Italy and in several other countries, including in Mexico, were the Respondent is based.\r\n", "decision_domains": { "PIRELLIPROMOCIONES.COM": "TRANSFERRED", "PIRELLILLANTAS.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }