Pirelli & C. S.p.A.
v. Francesco Algostino
Claim Number: FA0703000937025
Complainant is Pirelli & C. S.p.A. (“Complainant”), represented by Cristina
Cazzetta, of Porta, Checcacci & Associati S.p.A.,
Via Trebbia 20,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <pzero.biz> and <pzero.info>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2007.
On
On March 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@pzero.biz and postmaster@pzero.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <pzero.biz> and <pzero.info> domain names are identical to Complainant’s PZERO mark.
2. Respondent does not have any rights or legitimate interests in the <pzero.biz> and <pzero.info> domain names.
3. Respondent registered and used the <pzero.biz> and <pzero.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Pirelli & C.
S.p.A., is a world leader in industrial technology, and has produced or
provided many different kinds of goods or services, including power cables and
systems, telecommunications cables and systems, tires, and real estate. Complainant holds a registered trademark with
the United States Patent and Trademark Office (“USPTO”) for the PZERO mark
(Reg. No. 1,625,883 issued April 12, 1990).
Respondent, Francesco Algostino,
registered the <pzero.biz>
and <pzero.info> domain names on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant. Because Complainant registered the PZERO mark with the USPTO in 1990, the Panel finds that Complainant has established rights in the PZERO mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also America Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark).
Respondent’s <pzero.biz> and <pzero.info> domain names contain Complainant’s PZERO mark in its entirety and add the generic top-level domains (“gTLDs”) “.biz” and “.info.” Because gTLDs are functional requirements of all domain names, the Panel finds that Respondent’s <pzero.biz> and <pzero.info> domain names are identical to Complainant’s PZERO mark pursuant to Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <pzero.biz> and <pzero.info> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has alleged that Respondent is not commonly known by the <pzero.biz> and <pzero.info> domain names. The WHOIS information identifies Respondent as “Francesco Algostino,” and there is no other evidence in the record indicating that Respondent is commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the <pzero.biz> and <pzero.info> domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Respondent is using the <pzero.biz> and <pzero.info>
domain names to redirect Internet traffic to a website stating it is “under
construction.” The Panel finds that such
use fails to demonstrate a a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard
Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that the “under
construction” page, hosted at the disputed domain name, did not support a claim
of right or legitimate interest under Policy ¶ 4(a)(ii)); see also State Fair of
Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000)
(finding that the respondent’s failure to develop the site demonstrates a lack
of legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <pzero.biz> and <pzero.info> domain names resolve to a website that states it is “under construction.” Respondent’s failure to make use of the disputed domain name for nearly a year constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to use the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two-year period raises the inference of registration in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pzero.biz> and < pzero.info> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 23, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum