Zero.us – Pirelli & C. S.p.A. v Were,LLC – Response filed, complaint denied

Zero.net – PIRELLI & C. S.p.A. v Oakwood Services Inc. – Response filed, complaint denied

Zero.org – Pirelli & C. S.p.A. v Daniel Engel c/o Engel Consulting, Inc. – Default, transfer

The trademark registration at issue was based on section 2(f) of the Lanham Act. Under that provision, rights can be found in a descriptive term, provided that the term has been used for a prescribed amount of time, and that the applicant shows sufficient evidence of acquired distinctiveness up to a certain point in time.

Now, if you check the USPTO database, you’ll notice that the filed several previous applications, and failed each time. The last – and figurative – registration was allowed on a 2(f) basis.

I believe the panels in the two defended cases were not impressed with A&P having argued and sworn to one set of facts in their trademark application, but a different set of facts in their UDRP filings.

As you said, this is an excellent example of why one should answer an UDRP complaint.

Very rarely do we have an example of the effect of responding or not responding.

Thanks for the information.

there was a big difference between HOW the domains were Parked that MIGHT account for the difference in the results.

You are certainly right about the inconsistencies.

And I have read many decisions where the Arbitrator(s) decided a Parked domain is not a legitimate use.

In the above 2 cases you cite it seems to me
there was a big difference between HOW the domains were Parked that account for the difference in the results.

For example, In the FoodEmporium.com case, the Panel says:
“Respondent’s use of the generic term in its domain name as a means of attracting Internet users to its website to access hyperlinks that offer goods and services related to the generic term is legitimate.”

Notice this part:
“…hyperlinks that offer goods and services related to the generic term…”

In the FoodEmporium.org decision, the Panel says:
““Respondent is using the foodemporium.org domain name to advertise links to third-party competitors. ”

That the links were to direct Food Emporium competitors might account for the different decision.

But yes, Domain Arbitration is ofter a crap shoot.

Patrick