Pirelli Tyre S.p.A. v Internet Services Consulting Pty. Ltd
WIPO Case No. DAU2023-0042
•26-10-2023
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Pirelli Tyre S.P.A. v. Internet Services Consulting Pty. Ltd.
Case No. DAU2023-0042
1. The Parties
The Complainant is Pirelli Tyre S.P.A., Italy, represented by Bugnion S.p.A., Italy.
The Respondent is Internet Services Consulting Pty. Ltd, Australia.
2. The Domain Name and Registrar
The disputed domain name <metzeler.com.au> is registered with Domain Directors Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21,
2023. On the following day, the Center transmitted by email to Domain Directors Pty Ltd a request for is listed as the registrant and providing the contact details.
registrar verification in connection with the disputed domain name. On September 22, 223, Domain
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy
(the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO
Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the paragraph 5(a), the due date for Response was October 12, 2023. The Respondent did not submit any
response. Accordingly, the Center notified the Respondent’s default on October 13, 2023.
The Center appointed Matthew Kennedy as the sole panelist in this matter on October 18, 2023. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the
Rules, paragraph 7.
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4. Factual Background
The Complainant is part of the Pirelli & C. SpA group, which produces tires for cars, motorcycles, and trademark registrations:
bicycles. The Complainant acquired the assets of Metzeler Reifen GmbH, including the METZELER tire
brand, in 1986. According to evidence provided by the Complainant, METZELER brand motorcycle tires
have been used in races in Australia since at least 1970 and are offered for sale in Australia.
| - | Number 605039 for METZELER, registered on March 15, 1996, specifying goods in class 12, including tires and wheelrims; |
| - | Number 605045 for METZELER and elephant device, registered on April 19, 1996, specifying goods in class 7; and |
| - | Number 678037 for METZELER and elephant device, registered on February 25, 1997, specifying goods in class 9. |
The above trademark registrations remain current.
The Respondent is an Australian company. According to evidence provided by the Complainant, a panel in a prior proceeding under the auDRP found that the Respondent had registered and was using four domain names in bad faith. See QSA Brands Pty Ltd. v. Domain Administrator, Internet Service Consultants Pty
Ltd., WIPO Case No. DAU2022-0008.
The disputed domain name was registered on May 13, 2022. It resolves to a website for “Metzeler Rims
Australia” or “MetzelerRims” that provides information about tires, wheels, and other car equipment, including
a guide to where to buy tires online. The tire brands presented compete with those of the Complainant. motorsports, with embedded links to a betting website. The Contact page does not provide any contact details for the website operator.
5. Parties’ Contentions
A. Complainant
The disputed domain name is identical to the Complainant’s METZELER trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. name, which the Respondent has flagrantly employed to take advantage of the notoriety of the METZELER brand in the vehicle sector to attract Internet users for commercial gain and to make publicity for some of the
The Complainant is completely unaware of the entity or individual responsible for the disputed domain name.
The Complainant has not provided authorization to register or employ the trademark in a domain name.
Complainant’s competitors.
The disputed domain name has been registered or subsequently used in bad faith. The disputed domain
name is a “blocking” registration. The Respondent has used the disputed domain name exclusively to
reroute Internet users to its website, which conspicuously promotes competing products and services. searching for the Complainant. Moreover, the Respondent is concurrently promoting online betting platforms and gambling-related YouTube videos by engaging Internet users through the disputed domain name.
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The Respondent blatantly exploits the METZELER trademark’s considerable cachet within the automotive
industry, thus reaping undue benefits from the esteemed reputation and significant goodwill attached to the
mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the auDRP provides that a complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
The burden of proof of each element is borne by the Complainant.
A. Identical or Confusingly Similar
Based on the evidence presented, the Panel finds that the Complainant has rights in the METZELER mark.
The disputed domain name wholly incorporates the METZELER mark. Its only additional element is a
Second-Level Domain (“2LD”) extension “.com.au” which, as a standard requirement of domain name
registration, may be disregarded in the comparison between the disputed domain name and the
Complainant’s mark. See BT Financial Group Pty Limited v. Basketball Times Pty Ltd, WIPO Case
No. DAU2004-0001.
Therefore, the Panel finds that the disputed domain name is identical to a trademark in which the
Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the auDRP sets out circumstances which, without limitation, if found by the Panel to be proven based on its evaluation of all evidence presented, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the auDRP:
before any notice to [the respondent] of the subject matter of the dispute, [the respondent’s] bona fide
use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with an offering of goods or services (not being the offering of domain names that [the respondent has] acquired for the purpose of selling, renting or otherwise
transferring); or
| (ii) |
[the respondent] (as an individual, business, or other organization) [has] been commonly known by the or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
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As regards the first and third circumstances set out above, the disputed domain name is identical to the
METZELER trademark and resolves to a website for “Metzeler Rims Australia” or “MetzelerRims” that
provides information about tires, wheels, and other car equipment, including tire brands that compete with those of the Complainant. The Complainant submits that it does not know the Respondent and that it has not provided authorization to register or employ the METZELER trademark in a domain name. Although the
website is presented as a blog, it displays a guide to websites that sell tires as well as links to betting
websites. The links presumably operate for the commercial gain of the Respondent, if it is paid to direct
traffic to the betting websites, or for the commercial gain of the operators of the betting websites, or both.
In the Panel’s view, these circumstances indicate that the Respondent is not making a bona fide use of the
disputed domain name in connection with an offering of goods or services, nor that it is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers.
As regards the second circumstance set out above, the Respondent is named “Internet Services Consulting
Pty. Ltd”. Nothing besides the website associated with the disputed domain name indicates that the
Respondent is known as “Metzeler Rims Australia” or “MetzelerRims”. Nothing indicates that the
Respondent has been commonly known by the disputed domain name within the terms of paragraph 4(c)(ii) of the auDRP.
Based on the above, the Panel considers that the Complainant has made a prima facie case that the
Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent
failed to rebut that case because it did not respond to the Complainant’s contentions.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the auDRP.
C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the auDRP provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, although it is not an exhaustive list of such circumstances. The fourth circumstance is as follows:
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial
gain, Internet users to a website or other online location, by creating a likelihood of confusion with the
complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or
location or of a product or service on that website or location.
With respect to registration, the disputed domain name was registered in 2022, decades after the registration
of the Complainant’s METZELER trademark in Australia, where the Respondent is located. METZELER is
not a dictionary word, it is a family name, yet the disputed domain name is identical to it, adding only a 2LD
extension. The disputed domain name resolves to a website that provides information about tires, among
other things, which is the same type of product that the Complainant produces, even though the website
relates to car tires and the Complainant uses the METZELER brand with motorcycle tires. These
circumstances do not appear to be a coincidence but rather indicate an awareness of the Complainant and
its METZELER mark. Accordingly, the Panel finds that the Respondent had the Complainant’s METZELER
mark in mind when it registered the disputed domain name.
With respect to use, the disputed domain name resolves to a website for “Metzeler Rims Australia” or
“MetzelerRims” that provides information about tires, wheels, and other car equipment, including tire brands
that compete with those of the Complainant, as well as a guide to where to buy tires online. The website
also displays links to a betting website for commercial gain. In view of these circumstances and the findings
in Section 6.B above, the Panel finds that by using the disputed domain name, the Respondent has
intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the
Respondent’s website or of a product on that website, within the terms of paragraph 4(b)(iv) of the auDRP.
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Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the auDRP.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the
Panel orders that the disputed domain name <metzeler.com.au> be transferred to the Complainant.
/Matthew Kennedy/
Matthew Kennedy
Sole Panelist
Date: October 26, 2023
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