WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A. , Lanificio Ermenegildo Zegna & Figli S.p.A. , Ermenegildo Zegna Corporation v. Mr. Lian Ming
Case No. D2003-0266
1. The Parties
The Complainants are (1) Consitex S.A., a Swiss company with registered office in Stabio, Switzerland; (2) Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company with registered office in Biella, Italy; and (3) Ermenegildo Zegna Corporation, a U.S. corporation with registered office of New York, NY, U.S.A., hereinafter collectively "the Ermenegildo Zegna Group" or "Complainants", represented by Studio Legale Jacobacci e Associati, of 10152 Torino, Italy.
The Respondent is Mr. Lian Ming, of Torino, Italy.
2. The Domain Name and Registrar
The disputed domain name <ermenegildo-zegna.net> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 8, 2003. On April 8, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On April 17, 2003, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. Registrar was requested to send its verification response within 2 days to the Center, but replied on April 17, 2003. Payment of the administration fee was duly received. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform 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 Complaint, and the proceedings commenced on April 17, 2003. Respondent acknowledged receipt of the complaint by e-mail on April 18, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on May 8, 2003.
The Center appointed Christopher Kuner as the sole panelist in this matter on May 15, 2003. 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.
The Panel has not received any requests from Complainants or Respondent regarding further submissions, waivers or extensions of deadlines. The Panel has also not found it necessary to request any further information from the parties. The Panel is of the opinion that the Complainants are in compliance with the relevant formal requirements, and that Respondent was properly notified in accordance with the Rules, paragraph 2(a). The fact that the Registrar sent its verification response on April 17, 2003, and did not respect the two-day time period stipulated by the Center does not constitute a violation of any procedural requirements, as the Rules for Uniform Domain Name Dispute Resolution Policy (the "Policy") do not stipulate a formal requirement pursuant to which the Registrar needs to respond within the time limits set forth by the Center. The Panel notes that the Registrar did not explicitly answer all questions posed by the Center to fulfill its obligations pursuant to Paragraphs 2(a) and 4 of the Policy. However, the Panel has studied Registrarís website and found confirmation that: (1) the Policy applies to the disputed domain name; (2) there is sufficient indication that the language of the registration agreement used by the registrant for the disputed domain name is English; and (3) that the registrant has submitted to the jurisdiction at the location of the principal office of the Registrar, i.e. the State of Washington, for court adjudication of disputes concerning or arising from the use of the domain name.
The proceedings have been conducted in English.
4. Factual Background
Complainants are an internationally well-known group in the field of fashion and trades mostly, but not exclusively, clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewellery, fragrances, services in the field of fashion fabrics (piece goods).
Complainants claim to be the owner of several hundreds of trademark registrations consisting of or incorporating the words ERMENEGILDO ZEGNA. Complainants have attached an overview of all these trademarks in Annex 1 to the Complaint and provided copies of certificates and printouts from trademark databases of three representative trademarks:
- Italian application (renewel) for ERMENEGILDO ZEGNA Nos. TO2002C000651 and T02002C000557, respectively in the name of Lanificio Ermenegildo Zegna & Figli S.p.A. and Consitex S.A. whose first application dates back to 1952;
- U.S. registration for ERMENEGILDO ZEGNA No. 1,033,943 of February 17, 1976, in the name of Lanificio Ermenegildo Zegna & Figli S.p.A.; and
- International registration for ERMENEGILDO ZEGNA No. 410571 of September 13, 1994, in the name of Lanificio Eremengildo Zegna & Figli S.p.A..
A search on the search engines Yahoo, Google and Altavista confirms that ERMENEGILDO ZEGNA is a famous and international trademark.
According to the Registrarís verification response to the Center, dated April 17, 2003, the Respondent registered the domain name <ermenegildo-zegna.net> on March 19, 2003. The administrative, billing and technical contacts are registered by Ganimede srl. Internet users using the URL "www.ermenegildo-zegna.net" were referred to a general portal site with search engine (Annex 12 to the complaint).
On March 21, 2003, Mr. PierLuigi Zoccatelli, a consultant acting on behalf of Complainants, asked Respondent whether "he would be interested in selling the domain name <ermenegildo-zegna.net>. Respondent answered on the same day that "it is, as your request shows, a very valuable domain name, particularly if you want to sell clothing. I would consider selling if for Euro 30,000. To avoid wasting time, please note that there is room for discussion but not much. On the other hand, I will grant a discount if you are interested in other domain names of mine in addition to this one [translation by Complainants]."
Complainants allege that Respondent has illegally registered other domain names that are identical, or confusingly similar with well known trademarks, such as JAEGERMEISTER.IT, AGNONA-LANERIE.COM, FERRARI-SCUDERIA.COM, KINDER-FERRERO.COM, ICEBERGCLOTHINGS.COM (Annexes 5 - 9 of the Complaint).
The Panel has itself gone to the web site "www.ermenegildo-zegna.net", which takes the user to a kind of web portal offering a variety of goods and services, and contains a search engine for domain names. The site seems to be run by eNom, which offers domain name services.
No specific information is provided about the Respondentís business activities.
5. Partiesí Contentions
Complainants contend that it is and has been the owner of the trademark ERMENEGILDO ZEGNA since before World War II, and that the ERMENEGILDO ZEGNA mark is a world famous trademark.
Complainantsí request for relief is based on the following arguments:
A. Respondentís domain name "ermenegildo-zegna.net" is confusingly similar to the trademark ERMENEGILDO ZEGNA owned by Complainants.
Complainants claim that Respondentís domain name is virtually identical to the trademark in which Complainants have rights.
B. The domain name <ermenegildo-zegna> has been registered and is being used in bad faith.
(1) Complainants contend that Respondent must have been aware that the famous trademark ERMENEGILDO ZEGNA belongs to Complainants, and that therefore, registration may only have occurred in bad faith. It may be presumed that if "the Respondent (Ö) knew of the renown of the Complainantís trademarks", a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; there, the Panel found that Respondent could not have ignored that BANCA SELLA is a famous trademark in Italy for banking services). In Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, the Panel noted that "ĎVEUVECLIQUOT.ORGí is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith." In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, it was also suggested that "the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Cliquot]." Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLIQUOT or CHRISTIAN DIOR, it was decided that "the Respondent knew of or should have known of the Complainantís trademark and services at the time it registered the domain name XPEDIATRAVEL.COM, given the widespread use of the Complainantís EXPEDIA website" (Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). Complainants contend that Respondent, located as he is in Italy, cannot conceivably be ignorant of Complainantsí trademark ERMENEGILDO ZEGNA.
(2) Complainants allege that Respondentís bad faith is also evidenced by his registration of several other domain names identical to, or confusingly similar with, well-known trademarks, such as JAEGERMEISTER.IT, AGNONA-LANERIE.COM, FERRARI-SCUDERIA.COM, KINDER-FERRERO.COM, ICEBERGCLOTHINGS.COM (copies in annexes 5 - 9 of the Complaint). The Panel has verified these websites but all of them have been locked.
(3) Complainants never authorised Respondentís activities, nor did they control them. Complainants have no control over what Respondent at the moment of the Complaint included, or will include in the future, in its web site. By the use of the contested domain name Respondent also diverts traffic which would otherwise go to Complainantsí web sites which promote genuine ERMENEGILDO ZEGNA products.
(4) Furthermore, as described above, on March 21, 2003, Mr. PierLuigi Zoccatelli, a consultant acting on behalf of Complainants, asked the Respondent whether "he would be interested in selling the domain name <ermenegildo-zegna.net>. On the same day, Respondent answered that "it is, as your request shows, a very valuable domain name, particularly if you want to sell clothing. I would consider selling it for Euro 30,000. To avoid wasting time, please note that there is room for discussion but not much. On the other hand, I will grant a discount if you are interested in other domain names of mine in addition to this one". Complainants assert that much less than this has been regarded as evidence of "use in bad faith" under the Policy.
C. Respondent has no rights or legitimate interests in respect of the domain name for the following reasons:
(1) There is no evidence, before the dispute, of the Respondentís use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(2) Respondent, upon information and belief, has never been commonly known by the domain name, nor did he do business under the domain name;
(3) Upon information and belief, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain name.
The Complainants have requested that the Administrative Panel transfer the domain name <ermenegildo-zegna.net> to Complainant Consitex S.A.
The Respondent did not reply to the Complainantsí contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that three elements be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration. These elements are as follows:
(1) Respondentís "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;"
(2) Respondent has "no rights or legitimate interests in respect of the domain name;" and
(3) Respondentís "domain name has been registered and is being used in bad faith."
Each of these three elements must be proven by a Complainant to obtain relief. Paragraph 4(b) of the Policy provides nonexclusive criteria for evidencing bad faith registration and use of a domain name. Paragraph 4(c) of the Policy provides nonexclusive criteria for demonstrating a registrantís right or legitimate interests in an domain name.
Because the Respondent has defaulted in providing a response to the allegations of Complainants, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, Paragraph 14(a)), and the Panel may draw such inferences from the Respondentís default as the Panel finds appropriate (Rules, Paragraph 14(a)).
A. Identical or Confusingly Similarity of Respondentís Domain Name and Complainantís Trademark
Complainants have provided substantive evidence that they are the legitimate holder of the ERMENEGILDO ZEGNA trademark. The trademark has been registered in Italy since 1952, in the US since 1976, and international registration has been filed in 1994. The Panel determines that the Complainantsí rights in the trademark arose prior to the Respondentís registration, on March 19, 2003.
The domain name <ermenegildo-zegna.net> is identical to Complainantís trademark, except that (1) the domain name adds the generic top level domain name ".net;" (2) the domain name employs lower case letters, while the trademark is generally used with capital letters; and (3) the domain name uses a hyphen between the words "ermenegildo" and "zegna," while the trademark does not.
The addition of the generic top-level domain name (gTLD) ".net" is without legal significance from the standpoint of comparing "ermenegildo-zegna.net" to ERMENEGILDO ZEGNA since use of a gTLD is required of domain name registrants. ".net" is one of only several such gTLDs, and ".net" does not serve to identify a specific enterprise as a source of goods or services. The fact that the trademark ERMENEGILDO ZEGNA utilizes capital letters does not preclude the disputed domain name from being confused with the trademark.
The Panel also finds that the use of a hyphen between "ermenegildo" and "zegna" is not sufficient to prevent the domain name from being confusingly similar to the trademark ERMENEGILDO ZEGNA.
Therefore, the Panel decides that the disputed domain name <ermenegildo-zegna.net> is confusingly similar to the trademark "ERMENEGILDO ZEGNA" in the sense of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4 (a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrate preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Panel is unaware of any evidence showing Respondentís use of the disputed domain names, or any names corresponding to the domain names, in connection with any bona fide offering of goods or services. There is no evidence demonstrating that Respondent has ever been commonly known by the disputed domain names. No evidence has been forwarded to the Panel establishing that Respondent is making a legitimate noncommercial or fair use of the domain name.
Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainants have established the second element necessary to prevail on their claim that Respondent has engaged in abusive domain name registration.
C. Registered and Used in Bad Faith
Paragraph 4 (a)(iii) Policy sets forth two conjunctive requirements: It requires that the domain name has been registered "and" used in bad faith. Bad faith registration alone does not suffice to obtain relief under the Policy (Telstra Corporation Limited v. Nuclear Marhmallows, WIPO Case No. D2000-0003). The Panel finds that the domain name <ermenegildo-zegna.net> has both been registered and used in bad faith.
The registration has been done in bad faith because Respondent could not ignore that ERMENEGILDO ZEGNA is a famous trademark. Other Administrative Panels have decided likewise in analogous cases, as demonstrated by the references to Panel Decisions in the Complaint (Banca Sella P.v.A v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v. JavierGarcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). The trademark has a long history and was registered in Italy at least back in 1952, and has been registered worldwide.
The Panel finds that the domain name was also used in bad faith. Paragraph 4(b)(i) stipulates that there is bad faith if there are "circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name." Unlike typical "cybersquatting", the Respondent did not actively contact the Complainants to sell the domain name, but offered the domain name for the excessive price of Ä30,000 in its reply e-mail to Complainantsí representative. On the evidence, the Panel finds however that Respondent did register the domain name for the purpose of selling. This can be deduced from the fact that Respondent offers a discount if other domain names are purchased, and that he was not using it for any other purpose.
Furthermore, passive holding of a domain without the intend to sell can also constitute bad faith. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Administrative Panel decided that the passive holding of a domain name may constitute bad faith in situations other than those stipulated in Paragraphs 4(b)(i), (ii) and (iii) of the Policy, if all the circumstances show that the Respondentís passive holding amounts to acting in bad faith. Bad faith is demonstrated in this case by the following elements:
(i) the Respondentís trademark has a strong reputation and is widely known as shown by the evidence;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by the domain name, rather to the contrary, Respondent has offered to sell the domain name for an excessive amount of money;
(iii) internet users going to the domain name are diverted to a portal website, which includes a search engine for domain names and seems to be run by a company offering domain name services; and
(iv) the Respondent acknowledged receipt of the complaint, but has wilfully failed to participate in the proceedings.
For all of these reasons, the Panel decides that Respondentís bad faith has been established.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ermenegildo-zegna.net> be transferred to Consitex S.A.
Dated: May 28, 2003