{ "case_number": "CAC-UDRP-100289", "time_of_filling": "2011-08-08 14:24:36", "domain_names": [ "PIRELLIMEDIA.COM" ], "case_administrator": "Tereza Bartošková (Case admin)", "complainant": [ "PIRELLI & C. S.p.a." ], "complainant_representative": "PORTA CHECCACCI & ASSOCIATI Spa", "respondent": [ "DACS DESIGN" ], "respondent_representative": null, "factual_background": "The PIRELLI Group is a well known Italian and international company that has operated for more than a century in many areas of industry and principally in the manufacture of tyres, although it also operates in other fields such as power cables and systems, telecommunications cables and systems and real estate. It is ranked among the world's leaders in many sections of industry . As part of its activities it operates a media and communications division.\r\n\r\nThe Respondent is a United Kingdom design agency and was at one time contracted to the Complainant to design a web portal that could be used by the Complainant's independent clients in the United Kingdom. \r\n\r\nThe disputed domain name was registered by the Respondent on December 13, 2007in the course of performing those services for the Complainant.\r\n\r\nVarious exchanges have taken place between the parties since the filing of the Response and are set out below in the contentions of the parties. They show that both parties are of the view that the disputed domain name should be transferred by consent from the Respondent to the Complainant.\r\n\r\nThe opinion of the Panel is that it should make an order that the disputed domain name should be transferred from the Respondent to the Complainant without making findings under the provisions of paragraph 4 of the Policy.\r\n\r\n\r\n\r\n\r\n\r\n\r\n", "other_legal_proceedings": "There are no other legal proceedings of which the Panel is aware and which relate to the disputed domain name.", "no_response_filed": "THE PARTIES' CONTENTIONS\r\n\r\nCOMPLAINANT\r\n\r\nThe Complainant has submitted that\r\n\r\n(a) the disputed domain name is identical or confusingly similar to the PIRELLI mark;\r\n\r\n(b) the Respondent has no rights or legitimate interests in the disputed domain name;and\r\n\r\n(c) the Respondent registered and used the disputed domain name in bad faith.\r\n\r\n\r\nRESPONDENT\r\n\r\nThe Respondent made the following submissions in the Response.\r\n\r\n The Respondent has rights and\/or legitimate interest in the domain name(s)\r\n Categories of issues involved:\r\n Legitimate noncommercial or fair use of the domain name, without intent for commercial gain\r\n Other legitimate non-commercial or fair use of the domain name:\r\n \r\nAs their below the line design agency, we were asked by Patricia Stone of Pirelli UK Tyres Ltd to create a \"web portal\" that could be used by their UK independant clients in order to securely download high-resolution images of their Tyres and other associated media (such as logos). This media was intended to be accessible purely through a password protected site and should only be used in their own promotional material and not to be redistributed. The domain name was registered for this purpose only and has never been, and never will be, used for any other purpose. An initial design of this portal is visible here: http:\/\/beta.pirellimedia.com\/\r\n ADDITIONAL EXPLANATIONS:\r\nThis complaint may have arisen due to the fact that DACS Design changed it's trading name to Insight Design Group Ltd after this domain name was registered,and upon checking connections between the two companies, a search for IDGL may have been more fruitful! IDGL (formerly DACS Design) has been working for Pirelli UK Tyres Ltd for over 17 years.\r\n\r\nThe domain name(s) has not been registered and used in bad faith\r\n \r\n Categories of issues involved:\r\n \r\nComplainant’s failure to meet standard of proof\r\n \r\nOther:\r\n \r\n We feel that the complainant has not done all due diligence checks before filing this complaint. As the domain name was registered in good faith that it would be used solely for it's originally intended purpose (as a tool for use by the Pirelli UK Tyres Ltd marketing department) and never \"with the sole purpose of exploiting the reputation of the complainant and draw on its website users.\"\r\n\r\nEVIDENCE TENDERED IN SUPPORT OF THE RESPONSE\r\n\r\nAttached to the Response was the following email:\r\n\r\nFrom: \"Marc Henson :: Insight Design Group\" \r\nSubject: Web Portal\r\nDate: 23 January 2008 09:30:07 GMT\r\nTo: GB Stone Tricia \r\nHi Tricia,\r\nPlease click on the link below to go to the Download portal. This is only a starting point and as yet hasnt got\r\nall the info in.. but I thought it was close enough for you to have a look at to see if we are going down the right\r\nlines. The Corporate Guidleines section I was going to fill with the basics of how to use the logo etc...\r\nhttp:\/\/beta.pirellimedia.com\r\nI look forward to your comments.\r\nKindest Regards\r\nMarc\r\nMarc Henson | Creative\r\n____________________________\r\nInsight Design Group Ltd\r\n\r\n\r\nPROCEDURAL ORDER NO 1\r\n\r\nBy Procedural Order No.1 dated August 11, 2001 the Panel requested the Complainant to provide a further statement or document setting out any matters it wished to put to the Panel in reply to the Response and to do so by August 17, 2011.\r\n\r\nSUPPLEMENTARY SUBMISSION BY THE COMPLAINANT\r\n\r\nOn August 12, 2011 , in response to the Procedural Order , the Complainant made the following supplementary submission :\r\n\r\n\"Dear Sirs,\r\nWe have been contacted by the Respondent with email message of August 9, 2011 (attached) arguing that DACS Design were asked by Pirelli UK Tyres Ltd to create a \"web portal\" but, unfortunately, copy of the email message sent to Mrs. Patricia Stone was not attached. Accordingly the mail sent by Respondent was not considered sufficiently supported and for this reason we confirmed the Complaint.\r\nIn addition the contested domain name PIRELLIMEDIA.COM has been registered four years ago, the domain has a website online (even if still with one page), and the website display the PIRELLI logo since that date without any authorization.\r\n\r\nIt is Pirelli’s policy to try to prevent and\/or to stop any non-authorized use\/registration of the trademark PIRELLI as domain name. It is Pirelli’s policy to register any domain name in its own name.\r\n\r\nPirelli has a list of any authorization granted to the use of the trademark PIRELLI and DACS Design is not in such list.\r\n\r\nAnyway, for the sake of economy of the proceeding, we agree to settle this dispute if Respondent agrees to assign the domain name PIRELLIMEDIA.COM to Pirelli & C. S.p.A.\"\r\n\r\nEVIDENCE TENDERED IN SUPPORT OF THE SUPPLEMENTARY SUBMISSION\r\n\r\nThe email referred to in that submission was attached to the submission and was in the following form:\r\n\r\n\"Cristina Cazzetta\r\nDa: mail@pcapatlaw.it\r\nInviato: martedì 9 agosto 2011 15.38\r\nA: cazzetta@pcapatlaw.it\r\nOggetto: I: Cristina Cazetta RE: PirelliMedia.com\r\n-----Messaggio originale-----\r\nDa: Marc Henson [mailto:marc@idgl.co.uk]\r\nInviato: martedì 9 agosto 2011 14:26\r\nA: mail@pcapatlaw.it\r\nCc: Cristina.Cazetta@pcapatlaw.it; GB Stone Tricia\r\nOggetto: FAO: Cristina Cazetta RE: PirelliMedia.com\r\nHi Cristina,\r\nI have just received notification from my domain registration provider that action has been commenced\r\nagainst us with reference to the registration of pirellimedia.com.\r\nAs I have received no official notification from ICANN with regards to this complaint, I have tried\r\nsearching FORUM for a dispute notification, however none is present at the moment, however you\r\npersonally have been linked with all previous complaints on Pirelli's behalf and so I thought it best to\r\ncontact you directly.\r\nThe domain in question was registered by myself 4 years ago while discussing the possibility of creating an\r\nonline image portal for Pirelli UK Tyres Ltd that could be accessed by Pirelli's UK based clients to obtain\r\nhigh resolution images to be used in their own media.\r\nAs we did not have any specific access to the main pirelli.com domain, I thought that it may be worthwhile\r\ngetting a suitable domain name that could be used for this purpose. The pirellimedia.com domain was\r\navailable and so was duly registered.\r\nAs such, it could be argued under rules 4(a)(ii) & 4(a)(iii) of the ICANN UDRP policy that we did in fact\r\nhave legitimate interest in registering the domain name and that it has not been registered or used in bad\r\nfaith, and so a UDRP resolution could possibly rule against you.\r\nMay I suggest that instead of pushing forward with the resolution procedure and incurring further cost (560€\r\nisn't it?), that we settle this dispute directly. After having not used the domain for it's originally intended\r\npurpose in 4 years, I feel that it is probably never going to be used, and so would be willing to relinquish the\r\ndomain with no further action if desired, after all, it has only cost us £40, and could possibly end up costing\r\nyou a lot more for no reason!\r\nOut of interest, could I ask you why there was never any attempt at direct contact before you issued these\r\nproceedings?\r\nI look forward to hearing from you.\r\nKind regards\r\nMarc\"\r\n\r\nPROCEDURAL ORDER NO.2\r\n\r\nBy Procedural Order NO.2, dated August 23, 2022 the Panel invited the Respondent to provide a further statement or document setting out any matters it wished to put to the Panel in response to the supplementary submission of the Complainant and to do so by August 26, 2008.\r\n\r\nSUPPLEMENTARY SUBMISSION BY THE RESPONDENT\r\n\r\nOn August 24, 2011, in response to the Procedural Order, the Respondent made the following supplementary submission :\r\n\r\n\"Dear Sirs,\r\n\r\nIn confirmation, we did in fact make every effort to contact the Complainant before we were sent any access to the CAC website, as our Service Provider had issued us with a message stating that the domain had been locked due to impending complaints. As you will note from our initial email we did offer straight away to transfer the domain over to them, even though we had a perfectly valid reason for having registered it in the first place. (namely because we were asked to by a representative of Pirelli. Whether, internally, that was the correct thing to do remains open for discussion, but we, as a company, have not acted badly in any way shape or form.)\r\n\r\nThis offer was unheeded and the complaint was issued regardless. I even asked the question as to why we were not contacted directly in the first place as we could easily have resolved this situation amicably and at no cost whatsoever.\r\n\r\nSince this email, we have received a further email from the Complainant stating that:\r\n\r\n\"We confirm that you did not have any legitimate interest in registering the domain name www.pirellimedia and it has been registered or used in bad faith.\"\r\n\r\nSomething that we whole heartedly do not agree with, especially as these facts are in discussion with yourselves and a decision has not been made to this effect. The domain name was not registered OR used in bad faith at all, let alone registered AND used in bad faith as your rules stipulate. Frankly we feel offended and feel that there seems to be \"bully-boy\" tactics in play in order to force an issue that does not need forcing.\r\n\r\nWe have replied to the Complainant stating that we are still more than willing to transfer the domain name to them with no issue, but would like them, for the sake of our company's good name, to stop intimating that we have done ANYTHING in bad faith and withdraw the complaint so that the domain name can be unblocked by our registrar and we can then instigate the transfer through normal routes.\r\n\r\nThis offer again was declined and a non standard communication sent to yourselves stating our initial contact, but nothing of the further emails that they have sent to us, or our responses.\r\n\r\nI enclose copies of their emails and our response. I am not really sure what more we can do?\"\r\n\r\nEVIDENCE TENDERED IN SUPPORT OF THE SUPPLEMENTARY SUBMISSION\r\n\r\nThe emails referred to in that submission , apart from formal parts that have been removed by the Panekl for reasons of space, are as follows :\r\n\r\n\"From: Marc Henson \r\nSubject: Re: PirelliMedia.com\r\nDate: 11 August 2011 10:02:28 GMT+01:00\r\nTo: Anna Maria Bardone \r\n1 Attachment, 1.7 KB\r\nDear Anna,\r\nWe, infact, DID have legitimate interest in registering the domain name\r\nwww.pirellimedia.co.uk (as outlined in my previous email), and it has NOT been registered\r\nOR used in bad faith (let alone registered AND used in bad faith!).\r\nI feel offended that you should say otherwise. It appears that The Hon. Neil Brown, QC\r\ndoesn't see this as a straight forward decision either.\r\nFor future wellbeing, please acknowledge this fact and I will happily send you over the\r\nAUTH code (and unlock the domain) as soon I am able. Unfortunately, as you are surely\r\naware, the Domain has been locked against any change or transfer until the CAC have\r\nmade their decision or you have withdrawn your case.\r\nRegards\r\nMarc\r\nIMPORTANT INFORMATION:\r\nWE HAVE NOW MOVED INTO OUR NEW PURPOSE BUILT OFFICE.\r\nOUR NEW ADDRESS AND TELEPHONE NUMBER ARE BELOW\r\nMarc Henson \/\/ Studio Manager\r\n_________________________________\r\nOn 11 Aug 2011, at 08:32, Anna Maria Bardone wrote:\r\nDear Mr. Henson,\r\nwe refer to your email sent to Mrs. Cazzetta of august 9, 2011.\r\nWe confirm that you did not have any legitimate interest in registering\r\nthe domain name www.pirellimedia and it has been registered or used\r\nin bad faith.\r\nWe thank you for your availability to settle this dispute directly and in\r\norder to proceed in this way we would ask you to let us have the Auth\r\nCode of this domain name in order to proceed with the transfer of this\r\ndomain name to Pirelli.\r\nBest regards.\r\nAnna Maria Bardone\r\nPORTA, CHECCACCI & ASSOCIATI S.p.A.\r\n\r\n\r\n-----Messaggio originale-----\r\nDa: Marc Henson [mailto:marc@idgl.co.uk]\r\nInviato: martedì 9 agosto 2011 14:26\r\nA: mail@pcapatlaw.it\r\nCc: Cristina.Cazetta@pcapatlaw.it; GB Stone Tricia\r\nOggetto: FAO: Cristina Cazetta RE: PirelliMedia.com\r\n\"\r\n(The email of August 9,2011 has already been set out above.)\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n\r\n", "rights": "In view of the decision of the Panel, it is not necessary for the Panel to make a specific finding under paragraph 4(a)(i)of the Policy.", "no_rights_or_legitimate_interests": "In view of the decision of the Panel, it is not necessary for the Panel to make a specific finding under paragraph 4(a)(ii)of the Policy.", "bad_faith": "In view of the decision of the Panel, it is not necessary for the Panel to make a specific finding under 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": [ "The Hon. Neil Brown, QC" ], "date_of_panel_decision": "2011-09-05 00:00:00", "informal_english_translation": "The Complainant has submitted extensive evidence, which the Panel accepts, showing that it is the registered owner of many trademarks for PIRELLI and that it has owned those trademarks for many years.", "decision_domains": { "PIRELLIMEDIA.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }