WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman

Case No. D2000-1375

 

1. The Parties

The Complainants are Ermenegildo Zegna Corporation, a U.S. corporation with registered office at 9 West 57th Street, New York, NY 10019, U.S.A.; Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company with registered office at Via Roma 99/100, 13835 Trivero, Biella, Italy; and Consitex S.A., a Swiss company with registered office at Via Ligornetto, CH-6855 Stabio, Switzerland (hereinafter collectively "the Ermenegildo Zegna Group" or "Complainant"), represented by Mr. Massimo Introvigne and Mr. Fabrizio Jacobacci of Jacobacci & Perani.

The Respondent is Steven Shiekman, an individual, resident in 6370 Allison Road, Miami Beach, Florida 33141, U.S.A.

 

2. The Domain Name and Registrar

The domain name at issue is <zegnasuit.com>.

The registrar is Network Solutions, Inc.

 

3. Procedural History

The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "Center") on October 12, 2000. The Center requested verification of the data from the Registrar, Network Solutions, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules").

On October 24, 2000, Network Solutions replied that the domain name <zegnasuit.com> had been registered with them and confirmed that Respondent was the current registrant of the domain name registration, and provided all the relevant information.

The Complaint appears to have been filed in accordance with the requirements of the Rules and of the Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules"). The Panel finds that the payment was properly made and agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements in accordance with paragraph 2(a) of the Rules. The Complaint was properly notified on October 24, 2000 to the Respondent who did not file any Response and was notified of his default on November 15, 2000. The Complainant had requested the dispute to be adjudicated by a three member Panel. All Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the Panelís decision is December 18, 2000.

Finally, and in accordance to Paragraph 11 of the Policy, the language of the administrative proceeding will be the language of the relevant registration agreement, i.e. English.

 

4. Factual Background

According to the Complaint, Complainant is a long time established company in the field of fashion, and the owner of several hundred trademarks that include the word ZEGNA throughout the world. The trademark registrations in the name of Complainant cover mostly, but not exclusively, clothing, shoes, tissues and fabrics. Among all these registrations the Complaint encloses:

- Italian registration for ZEGNA No. 562561, whose first application dates back to 1969, in the name of Lanificio Ermenegildo Zegna & Figli S.p.A.;

- U.S. registration for ZEGNA No. 1,258,643 of November 22, 1983, in the name of Ermenegildo Zegna Corporation (NY);

- U.K. registration for ZEGNA No. 973946 dating back to 1971, in the name of Consitex S.A.

 

5. Partiesí Contentions

A. Complainant

According to the Complaint:

(1) the domain name <zegnasuit.com> is confusingly similar to the trademark ZEGNA owned by the Complainant since "Suits' are a man product of the Ermenegildo Zegna Group";

(2) the Respondent has no right or legitimate interests in the domain name. On August 27, 1999 trademark attorneys representing Complainants, after sending a cease and desist letter to Respondent, received a reply stating that the Respondent was not aware of that he was infringing and that he was "willing to release the domain to your hands, as long as I am paid $ 125". According to Complainants such words are an admission that Respondent does not appear to have any rights or legitimate interest in the name ZEGNA;

(3) Complainants believe that the Respondent has both registered and used the domain name in bad faith, since even though "He did not admit that it was registered or used in bad faith ... he could not have ignored that ZEGNA is an internationally famous mark, particularly for '"suits"". '"." Complainants also allege that Respondent is using the domain name at issue in bad faith. According to Complainants' representations, after the above mentioned correspondence, Respondent then proceeded to change the address (but not the name) of the administrative contact on the Whois record, which now shows the e-mail and the address in Mendrisio, Switzerland of Consitex, one of the Complainants. It also caused the domain name to point to NetNames, a host in the United Kingdom, and no longer to his own content. Furthermore, in a number of telephone conversations with Complainants' representative, Respondent adopted dilatory tactics and "stubbornly and firmly refused to change the name of the registrant". The domain name is still registered in Respondent's name although with a wrong address (in fact, the address of Consitex) for the administrative contact. Complainants are aware that such a situation is "admittedly, a strange and perhaps unique situation" yet, in their opinion Respondent's use is "not in good faith" since "Mr. Shiekman knows perfectly that the domain name is infringing Zegnaís right on the trade mark ZEGNA .... Mr. Shiekmanís is an active holding of the domain name; he negotiates with Zegna, makes certain concessions (including the address), but keeps intact his bargaining power in any ongoing future negotiations through his keeping the ownership of the domain".

B. Respondent

The Respondent did not submit any response and is therefore in default.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

1) The Panel finds that <zegnasuit.com> is confusingly similar with the Complainantís trademark ZEGNA.

The domain name at issue is composed by two terms: ZEGNA which is a term which has no meaning (other than a proper name) either in Italy or Switzerland, where Complainants are located, nor in the US, where Respondent lives; and SUIT which is a term indicating a kind of clothing. Comparing the domain name <zegnasuit> to the registered trademark ZEGNA, it appears that in the former the distinctive part is to be considered ZEGNA and the addition of SUIT does not seem capable to add any distinctiveness. On the contrary, given the fact that ZEGNA is primarily used to cover clothing items, the addition of SUIT elicits a direct reference to the ZEGNA activities and trademark both under a strict likelihood of confusion, but also under a likelihood of association, since consumers may be induced in believing that ZEGNASUIT is a sector of activity, or specialized trademark of the Complainants.

Thus, the Panel is satisfied that the first condition has been met.

2) The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name.

The Panel reaches this conclusion adopting the same line of arguments as were followed in the earlier Pomellato and Corneliani decisions (case Pomellato S.p.A v. Richard Tonetti, Case No. D 2000-0493, case Corneliani F.lli Claudio e Carlalberto Corneliani S.p.A. v. Corantos s.r.l., Case No. D2000-0759). Although, as stated in those decisions "... the Panel finds that simply stating the reasons is not normally sufficient to meet the Complainantís burden of proof ", the Complainants indicated at least one reason why the Respondent would not be entitled to the domain name: Respondent's own words that "he was unaware he was infringing". Even though the Panel finds such words indicative of a state of mind, there is some uncertainty on whether they can be construed, as Complainants say, to constitute an admission (actually, Respondent denied any wrongdoing). In any case it is a fact that the Respondent failed to put forward, neither in his first reply to Complainant's representatives, nor in the present procedure, any argument or fact to support the existence of any right or legitimate interests in the domain name.

It is the Panel view that Respondentís failure to do so, and the consequences thereof, are relevant.

As stated in an earlier case (General Electric Company v. John Bakhit, Case D2000-0386), "it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond".

In the present case, the Panel finds that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and of the commencement of these proceedings and it is to be assumed that Respondent was fully aware of the Complainantís claim.

In the absence of any submission from the Respondent, the only known circumstances supporting the existence of rights or legitimate interests of the Respondent in respect of the domain name is the mere registration of <zegnasuit.com>. Yet, the Panel concurs with earlier decisions holding that mere registration does not seem sufficient to establish rights or legitimate interests since: "if this was so, all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration" (General Electric, supra). The record here is devoid of any indication of a legitimate right of Respondent to the disputed domain name. Respondent does neither appear to have any connection with the distinctive and protected name ZEGNA, nor to be involved in the manufacture or sale or suits. Under these circumstances this Panel, in accordance with Paragraph 14(b) of the Rules, finds it a fully justified inference, in light of the circumstances that Respondent's admission paired with his default may be reasonably held as indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of oneís own rights.

Moreover, the lack of a reply from the Respondent makes it impossible for the Panel to reasonably make findings different from those stated in the Complaint. According to Paragraph 10 (b) of the Rules, this Panel must treat the Parties to the proceedings with equality and give them a fair opportunity to present their case. This principle imposes a burden not only on the Panel but also on both Parties since the Panel must rely on each Partyís respective input in order to make its finding. Facts and circumstances regarding the Respondentís reasons and justifications for the domain name registration are usually known and easily available to the Respondent itself. Furthermore, the absence of a requirement of professional representation makes it possible for the Respondent to inexpensively contest and argue the Complainantís claims and allegations. By choosing not to do so, the Respondent thus accepts that the risk that Complainantís statements of fact, might be accepted by this Panel (cf. also Paragraphs 10(d) and 14(a) of the Rules).

Yet, in the present case, this Panel does not accept Complainant's statements of fact at their face value, since the circumstances above indicated are such that Respondent does not appear to have rights in, or legitimate reasons for registering, the domain name, and thus this Panel is satisfied that the second condition is met.

3) The Panel finds that the Complaint shows that the domain name was registered and is being used in bad faith.

In order to reach this conclusion the Panel examined separately two issues: a) whether or not bad faith existed when the domain name was registered and b) whether or not the domain name was used in bad faith.

As far as the first issue is concerned, Complainants are aware and disclose that there is here an issue. This is because Respondent's owns words are that he was not aware of infringing Complainants' rights, and would therefore on their face indicate that there was no bad faith when registration took place. However, the Panel may not ignore that Respondent's claim of good faith appears a self-serving and unsupported argument which was made at the time Respondent was replying to an official letter, which maybe threatened with legal actions. It would have been rather unusual if Respondent had admitted to have deliberately acted in bad faith.

The Panel therefore takes the view that such a statement cannot be accepted per se, but rather must be evaluated in light of all the other circumstances, including that Respondent's allegation was not expressed during the present procedure and the fact that Complainants have challenged the alleged Respondent's good faith.

These two circumstances are strictly connected one another, since their mutual relationship may serve as guidance in reasonably assessing the existence of bad faith at registration date.

Complainants allege to be the owners of a US trademark registration dating back many years, and that Respondent could not have ignored that ZEGNA is an internationally famous mark.

If the Respondent had been able to establish in this procedure both that ZEGNA is not a famous mark as well as his unawareness of ZEGNA rights (as he had already done in his e-mail), the Panel might have found (cf. Armani Exchange Case No. D2000-0419), that the Complainant had failed to meet its burden of proof. As a result, the Complaint would have been subject to dismissal, since the Panel could have not found it appropriate to make recourse to Paragraph 12 of the Rules (Further statements) given the relevancy and emphasis that is rightly placed upon this particular aspect of the Complainantís burden of proof.

However, the Respondent did not reply, and the Respondentís failure can be used by the Panel to draw such inferences as it considers appropriate based on the indications of the Complaint and the file. In other words, in a situation where a prima facie case of impropriety has already been established by the combined occurrence of the factors analyzed under Sections 6(1) and 6(2) above, and where the Respondent has failed to proffer arguments in his own favor, the Panel may independently assess the value of the circumstances in order to support a reasonable finding of fact. Only if this analysis were to prove fruitless, would the Panel have no choice but to dismiss the Complaint.

It is shown in the Complaint that the trademark ZEGNA has been registered and consequently used in the US for almost 20 years, and has been the object of hundreds of registrations in several countries around the world and the Complaint alleges that ZEGNA is an internationally known company in the field of fashion, even if it fails to proffer any further evidence of such renown.

In light of these circumstances, and in absence of any counter argument from the Respondent, the Panel finds credible Complainants' allegations; moreover, a quick search of the term ZEGNA in the major Internet search engines shows a large number of hits, all related to such trademark and all indicating that ZEGNA is and has been for a number of years the object of quite extensive US media coverage.

Furthermore, and although the Complaint fails to analyze this aspect, the Panel may not ignore that the Complainantís trademark ZEGNA is not, in the English language, a word but rather a highly unusual personal surname and therefore, the adoption of such word in conjunction with a particular kind of clothing as domain name is strongly suspect and unexplained. The Respondent's choice of the disputed domain name simply cannot have been serendipitous.

The Panel, therefore, finds that the Complaint describes a situation where the renown of the trademark ZEGNA in Respondent's country is credible (also because the Respondent could have denied the renown and not having done so may also be interpreted as an admission that it would have not been such an easy task to accomplish).

Therefore, the Panel finds credible Complainant's allegation that Respondent was aware of the Complainantís earlier and renown trademark rights at the time the domain name at issue was registered. Such an awareness makes it also reasonable to believe that, the Respondent acted in bad faith when he applied for the registration of the domain name <zegnasuit.com>.

The Panel must now establish whether or not there has been use in bad faith.

First of all, the Panel agrees with the Complainants' analysis of Respondent's use.

By registering the domain name <zegnasuit.com> and effectively refusing to turn it over to the Complainant when a proper request was made, and then only changing the domain name administrative contact, the Respondent exercised and still exercises ownership powers over the domain name and this, in the Panelís opinion, constitutes prima facie evidence of use (see, Parfums Christian Dior v. 1 Netpower, Inc., Case No. D2000-0022).

Therefore, the sole issue to be determined is not whether the Respondent used the domain name, but rather whether or not his use was and is in bad faith.

Paragraph 4(b) of the Policy indicates that certain circumstances may be evidence of bad faith. The list of circumstances does not exhaust the Panelís inquiry regarding the element of bad faith.

It is the Panelís view that the Respondentís refusal to turn over the domain name once the Respondent became officially aware of Complainantsí requests, in the absence of any right or legitimate interest in the domain name and the subsequent inconsistent behavior of the Respondent constitute prima facie evidence of continuing use in bad faith (cf. Parfums Christian Dior v. 1 Netpower, Inc, supra).

In light of the lack of reply from the Respondent, such prima facie evidence may be held indisputable and undisputed.

Therefore, the Panel is satisfied that the third condition is also met.

 

7. Decision

In light of the foregoing, the Panel finds that the disputed domain name <zegnasuit.com> is confusingly similar to Complainants' trademark, that Respondent has no legitimate rights or interests in the disputed domain name, and that Respondent has registered and made use of the domain name in bad faith. Accordingly pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <zegnasuit.com> be transferred to the Complainants.

 

 


 

 

Mr. Fabio Angelini
Presiding Panelist

Mr. M Nicolas Ulmer
Panelist

Mr. Paul Michael DeCicco
Panelist

Dated: December 20, 2000