{ "case_number": "CAC-UDRP-101310", "time_of_filling": "2016-10-13 09:52:12", "domain_names": [ "METZELER.NET" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Pirelli Tyre S.p.A." ], "complainant_representative": "Avvocato Pierfrancesco Carmine Fasano (FASANO-Avvocati)", "respondent": [ "YongWan Ji" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nMetzeler is a well-known motorcycle tire company founded in 1863 in Munich, Germany by Robert Friedrich Metzeler. The company originally manufactured a variety of rubber and plastic products, expanding in to aviation in 1890 and automotive and motorcycle tires in 1892. After World War II Metzeler focused only on the motorcycle tire production. \r\n\r\nMetzeler has been part of Pirelli Group since 1986. Metzeler has more than 115 years of experience in motorcycle tire development and supply to the world's leading manufacturers. Metzeler has always been on the leading edge for technical innovation and superior quality and performance of its tires. Thanks to the success and leader position achieved in relation with the segments in which it operates, Metzeler is a well-known brand world-wide. Metzeler operates in numerous countries all over the world through its distributor network such as in Austria, Brasil, Canada, Germany, France, Italy, Japan, Spain, Switzerland, UK and in the United States.\r\n\r\nThe Complainant is owner of numerous registrations and\/or applications for trademarks world-wide consisting of\/comprising the word \"METZELER\".\r\n\r\nThe Complainant has used its trademarks for numerous years in connection with products of the below listed classes of the Nice Classification:\r\n\r\n- class 7 of the International Classification System of Goods and Services (namely, “Machines and mechanical apparatus for manufacturing and mounting tires”);\r\n- class 8 of the International Classification System of Goods and Services (namely, “Hand-operated tools as accessories for motorcycles”);\r\n- class 9 of the International Classification System of Goods and Services (namely, “Balancing apparatus for motorcycle tires”);\r\n- class 12 of the International Classification System of Goods and Services (namely, “Tires, particularly for motorcycles; air tubes and rings of foam rubber for tires; wheels with rims and rim bands, valves for tires; bags for motorcycles”);\r\n- class 18 of the International Classification System of Goods and Services (namely, “Umbrellas”);\r\n- class 25 of the International Classification System of Goods and Services (namely, “Clothing, footwear, headgear”).\r\n\r\nSubstantial effort has been invested over a period of time, including the expenditure of substantial amounts, to develop goodwill in the aforementioned trademarks to cause consumers throughout the world to recognize the marks as distinctly designating products and services that originate with the Complainant. Hence, the Complainant enjoys extensive rights in such trademarks. Complainant also operates websites at , , , , , , , , , and .\r\n\r\nThe domain name in dispute was registered on March 4, 2016, i.e. well after Complainant’s trademarks. \r\n\r\nIn the Complainant's view the disputed domain name should be transferred to the Complainant, because it constitutes usurpation and violation of the rights of the Complainant with regard to its trademarks registered world-wide.\r\n\r\nIn accordance with the Complainant's assertions, the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, because it wholly incorporates the dominant part of such marks, namely the wording “METZELER” and it is well-founded that the gTLD (generic top-level domain) “.net” is ignored for the purpose of determination of the identity or the similarity between disputed domain name and Complainant’s trademarks.\r\n\r\nIn addition, the Complainant outlines that, as per the WHOIS records, the Respondent is YongWan Ji. The Complainant states that the Respondent has never received any approval, expressed or implied, to use the Complainant’s trademarks in or as part of any domain name and that the Complainant has no association, affiliation and\/or dealings of any nature whatsoever with the Respondent. The above, in the Complainant's view, is sufficient to make out a prima facie case of absence of rights or legitimate interests in the domain name on the part of the Respondent. \r\n\r\nFurthermore, the Complainant assumes that the domain name currently resolves to the website, which is a blank page with the only English disclaimer that “the domain metzeler.net may be for sale” and that previously the domain name in dispute resolved to a website containing the same disclaimer and third parties’ links to further websites apparently related to tires, business in which the Complainant is involved. According to the above it is clear, in the Complainant's view, that there is no evidence that the Respondent’s use of is either a bona fide offering of goods or services or a legitimate non-commercial or fair use, without intent for commercial gain.\r\n\r\nThe Complainant also believes that the disputed domain name has been registered and is being used in bad faith considering that:\r\n\r\nA) The disputed domain name consists of the well-known trademark of the Complainant, e.g. the wording “METZELER”, such domain name is identical or confusingly similar to the Complainant’s trademarks and taking into account the vast and widespread advertising campaigns carried out by the Complainant for the promotion of products covered by its marks, it is unlikely that the registration of the domain name in question may be attributed to a mere chance and not, as is, with a full awareness and intent to exploit the reputation and good will of the Complainant’s trademarks.\r\n\r\nB) The disputed domain name does not resolve to any active website and contains the disclaimer “the domain metzeler.net may be for sale”; such passive use of the domain name is sufficient to find bad faith.\r\n\r\nIn accordance with the above mentioned, the Complainant considers that the registration of the domain name had been carried out with the purpose of:\r\n\r\n- selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or\r\n- attracting, for commercial gain, Internet users to the web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location.\r\n\r\nThe Complainant also outlines that Respondent, YongWan Li, was already involved in a UDRP domain name dispute no. D2016-0379 before the WIPO for the abusive registration of the domain name .\r\n\r\nThe Registrar communicated that the language of the registration agreement is Korean. The Complainant requested that the language of the proceedings be English for the following reasons:\r\n\r\n1) The Complainant is owner of numerous trademark registrations worldwide comprising South Korea consisting of the word \"METZELER\". \r\n2) Such trademarks are well-known internationally. \r\n3) The Respondent has registered and used the disputed domain name with Latin letters and not Korean ones since it wholly comprises the Complainant's well-known marks.\r\n4) The Respondent is clearly aware of the Complainant's international business and of its marks.\r\n5) The domain name currently resolves to the website, which is a blank page with an English disclaimer that “the domain metzeler.net may be for sale” \r\n6) Previously the domain name resolved to a website containing the same disclaimer and third parties’ links to further websites apparently related to tires, business in which the Complainant is involved and therefore, it is clear that Registrant understands English language.\r\n\r\nFurthermore, in that regard the Complainant emphasizes that the Respondent was involved in an UDRP domain name dispute which was conducted in English.\r\n\r\nFor the reasons mentioned above the Complainant insists that the language of proceeding shall be English since the translation of the Complaint and participating in a proceeding in Korean language would cause undue delay and expense for the Complainant.\r\n", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name .", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.", "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).", "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": "As far as the language of the proceedings is concerned, Rule 11 states as follows:\r\n\r\n\"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.\"\r\n\r\nThe Complainant has requested that the language of the proceedings should be English for the reasons listed in the Complaint, even though the language of the Registration Agreement is Korean. The Panel finds that the Complainant has introduced convincing arguments, having regard to the circumstances of this case, and thus accepts that the proceedings may be in English. \r\n\r\nIn addition, it should be noted that the same conclusion was reached by the Panel in a previous decision where the Respondent was involved and the language of the Registration Agreement was Korean. This, in consideration of arguments similar to those introduced by the Complainant in the present proceeding (see Get Fresh Cometics v Yongwan Ji, WIPO Case no.2016-0379).\r\n\r\nThe Panel is satisfied that all procedural requirements under the Policy have been met and there is no other reason why it would be inappropriate to provide a decision.", "decision": "Accepted", "panelists": [ "Avv. Guido Maffei" ], "date_of_panel_decision": "2016-11-18 00:00:00", "informal_english_translation": "The Complainant is the owner of numerous trademark registrations consisting of\/comprising METZELER, including the following:\r\n\r\n- U.S. trademark registration No. 1200980 METZELER PERFECT, registered on April 20, 1982 in class 12;\r\n- U.S. trademark registration No. 2351070 METZELER, registered on February 9, 2000, in classes 12 and 18;\r\n- U.S. trademark registration No. 2382019 METZELER & device, registered on September 5, 2000 in classes 8, 12 and 18;\r\n- U.S. trademark registration No. 4937767 METZELER RISK FREE GUARANTEE & device registered on April 12, 2016 in class 36;\r\n- International Registration No. 431981 METZELER PERFECT, registered on July 2, 1977 in class 12;\r\n- International Registration No. 444745 METZELER & device, registered on October 3, 1978 in class 12;\r\n- International Registration No. 611622 METZELER & device, registered on June 9, 1993 in classes 7, 8, 9, 12, 18 and 25;\r\n- International Registration No. 611623 METZELER, registered on June 9, 1993 in classes 7, 8, 9, 12, 18 and 25 \r\n\r\n", "decision_domains": { "METZELER.NET": "TRANSFERRED" }, "panelist": null, "panellists_text": null }