{ "case_number": "CAC-UDRP-101321", "time_of_filling": "2016-10-25 09:10:38", "domain_names": [ "METZELERMOTORCYCLETIRESTORE.COM" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Pirelli Tyre S.p.A." ], "complainant_representative": "Avvocato Pierfrancesco Carmine Fasano (FASANO-Avvocati)", "respondent": [ "Joe Greving" ], "respondent_representative": null, "factual_background": "The Complainant 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, the Complainant focused only on the motorcycle tire production. \r\n\r\nThe Complainant has been part of Pirelli Group since 1986. The Complainant has more than 115 years of experience in motorcycle tire development and supply to the world leading manufacturers. The Complainant 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, the Complainant is a well-known brand world-wide.\r\n\r\nThe Complainant operates in numerous countries all over the world through its distributor network such as in Austria, Brazil, Canada, Germany, France, Italy, Japan, Spain, Switzerland, UK and in the United States, where the Respondent is based, and Further, operates websites at , , , , , , , , , and .\r\n\r\nThe Complainant is the owner of numerous METZELER trademark registrations and\/or applications worldwide, among which those mentioned above. The Complainant has used its trademarks for many years in connection with “machines and mechanical apparatus for manufacturing and mounting tires”, in class 7, “hand-operated tools as accessories for motocycles products”, in class 8; “balancing apparatus for motorcycle tires”, in class 9; “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”, in class 12; “umbrellas”, in class 18 and “clothing, footwear, headgear”, in class 25. The Complainant has invested substantial amounts in the promotion of its trademarks.\r\n\r\nThe disputed domain name was registered on August 29, 2008.\r\n\r\n", "other_legal_proceedings": "The Panel is not aware of any pending or decided legal proceedings, which relate to the disputed domain name.", "no_response_filed": "The Complainant's contentions can be summarized as follows.\r\n\r\n1. Identity or confusing similarity (Policy 4(a)(i); Rules 3(b)(ix)(1))\r\n\r\nThe disputed domain name is confusingly similar to the Complainant’s trademarks, because it wholly incorporates the dominant part of these marks, namely the word “METZELER”. The addition of the generic terms “motorcycle”, “tire” and “store”, do not affect the attractive power of the dominant part of the Complainant’s trademarks, and are insufficient to exclude the confusingly similarity between the disputed domain name and the Complainant’s marks. As the Complainant is involved in, and well-known for, its business of motorcycle tire manufacturing and sale, the addition of these generic terms increases the likelihood of confusion between the disputed domain name on the one side, and the Complainant's trademark on the other side. \r\n\r\n2. Lack of rights or legitimate interests (Policy 4(a)(ii); Rules 3(b)(ix)(2))\r\n\r\nThe Complainant never authorised, either expressly or implicitly, the Respondent to use the Complainant’s trademarks in, or as part of, any domain name. Furthermore, the Complainant has no association, affiliation and\/or dealings of any nature whatsoever with the Respondent, and does not endorse nor promotes his services.\r\n\r\nThere is no indication that the Respondent has legitimate interests in the trademark METZELER; according to searches conducted among Italian, EU, US and international trademarks, the Respondent does not appear to own any METZELER trademark, or any trademark including this element. \r\n\r\nThe disputed domain name resolves to a website, which is a blank page. Hence, there is no evidence that the Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services or amounts to a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.\r\n \r\nFinally, there is no evidence that the Respondent has been commonly known by the disputed domain name.\r\nFor all these reasons, the Complainant believes that it has established a prima facie case of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that the burden of proof to show that it has rights or legitimate interests in the disputed domain name now shifts to the Respondent.\r\n\r\n3) Registration and use of the disputed domain name in bad faith (Policy 4(a)(iii); Rules 3(b)(ix)(3))\r\n\r\nAs far as registration in bad faith is concerned, the Complainant points out that the disputed domain name consists of the dominant component of its well-known trademarks, i.e. the word “METZELER”, and of the generic terms “motorcycle”, “tire” and “store”, reflecting the Complainant’s business. Taking into account the vast and widespread advertising campaigns carried out by the Complainant for the promotion of its trademarks, it is unlikely that the registration of the disputed domain name occurred by mere chance and not because of the Respondent’s full awareness of the Complainant’s trademarks, and intent to exploit their reputation and goodwill.\r\n\r\nAs far as use in bad faith is concerned, the Complainant points out that the disputed domain name resolves to an inactive website and that it is well-founded that registration of a trademark, which enjoys strong reputation, coupled with the passive use of the disputed domain name are sufficient to conclude that the use of the disputed domain name is in bad faith under para. 4(a)(iii) of the Policy.\r\n\r\nIn light of the foregoing, according to the Complainant, the registration of the disputed domain name has either been carried out with the purpose of:\r\n\r\n- selling, renting, or otherwise transferring the disputed domain name 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\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 trademarks 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\n\r\nNO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\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).", "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": [ "Angelica Lodigiani" ], "date_of_panel_decision": "2016-12-07 00:00:00", "informal_english_translation": "The Complainant bases its Complaint on the following trademarks:\r\n\r\nMETZELER PERFECT, US trademark registration No. 1200980, dating back to 1980 and duly renewed, covering goods and services in classes 12 and 35;\r\nMETZELER, US trademark registration No. 2351070, dating back to 1993, and duly renewed, covering goods in classes 12 and 18;\r\nMETZELER and device, US trademark registration No. 2382019, dating back to 1993, and duly renewed, covering goods in classes 8, 12 and 18;\r\nMETZELER and device, US trademark registration No. 4937767, dating back to December 9, 2014, covering goods in class 36;\r\nMETZELER PERFECT, International trademark registration No. 431981, dating back to 1977, and duly renewed, covering goods in class 12;\r\nMETZELER and device, International trademark registration No. 444745A, dating back to 1978, and duly renewed, covering goods in class 12;\r\nMETZELER and device, International trademark registration No. 611622, dating back to 1993, and duly renewed, covering goods in classes 7, 8, 9, 12, 25;\r\nMETZELER , International trademark registration No. 611623, dating back to 1993, and duly renewed, covering goods in classes 7, 8, 9, 12, 25.\r\n\r\n", "decision_domains": { "METZELERMOTORCYCLETIRESTORE.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }