WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LionHeart Securities Corp.
Case No. D2003-0285
1. The Parties
The Complainants are Consitex S.A. of Switzerland, Lanificio Ermenegildo Zegna & Figli S.p.A. of Italy, and Ermenegildo Zegna Corporation of the United States of America, all represented by Studio Legale Jacobacci e Associati of Italy.
The Respondent is LionHeart Securities Corp, Fort Lauderdale, United States of America.
2. The Domain Name and Registrar
The disputed domain name <zegnapictures.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2003. On April 11, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 14, 2003, Tucows 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 contact. 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. 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.
TheCenter appointed Gerd F. Kunze as the sole panelist in this matter on May 13, 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.
4. Factual Background
Complainants are three companies constituting the Emenegildo Zegna group of companies, originating from Italy and internationally active in the field of fashion. They are the owners of the following trademark registrations for the word Zegna, as evidenced by registration certificates: Italian registration dating back to 1939, originally registered under no 60657; international registration no 176867 of 1954; US registration no 941 547 of 1972; US registration no 1 258 643 of 1982. Whilst the first three trademarks are registered in the name of Lanificio Ermenegildo Zegna & Figli S.p.A; the fourth registration stands in the name of Ermenegildo Zegna Corporation New York. The Complainants have also submitted a list of several hundred further trademark registrations in about 100 countries all over the world, all standing in the name of either Lanificio Emenegildo Zegna S.p.A Italy or in the name of Consitex SA, Switzerland. To simplify the three Complainants and trademark owners are in the following referred to as " the Complainant".
On May 28, 2002, the Respondent registered the domain name <zegnapictures.com> without having activated it.
5. Partiesí Contentions
The Complainant submits that the trademark ZEGNA is internationally well-known for fashion, particularly in the field of clothing, shoes, tissues, fabrics, fashion accessories, belts, fragrances and services relating to fashion and fabrics. As evidence it proposes a cursory Altavista or Google search. It furthermore submits that the United States are one of its main markets. In fact, the cited search machines refer prominently to websites related to the Complainant and particularly to the presence of the Complainant in the United States, including Florida, where the Respondent is located. The Complainant concludes that the Respondent cannot conceivably have ignored its trademark ZEGA when registering the domain name <zegnapictures.com>
It submits that therefore (A) the domain name <zegnapictures> is confusingly similar to a trademark in which it has rights; (B) the Respondent has no rights or legitimate interests in respect of the domain name; (C) the domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainantís contentions. Its administrative contact submitted that the domain name had been registered on behalf of a Mr. Pauwels, who cannot be located.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
A) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
B) the Respondent has no rights or legitimate interests in respect of the domain name; and
C) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name consists of the distinctive word "zegna" that is identical to the Complainantís trademark ZEGNA, registered amongst other countries in the United States and widely used in the United States, and the descriptive term "pictures". No doubt customers of the Complainant in the United States would consider a trademark ZEGNAPICTURES to refer to pictures of or related to "Zegna" fashion articles and to refer to the owners of the trademark ZEGNA. The same would be true for a website <zegnapictures> where customers would be likely to expect finding pictures of fashion articles offered by the Complainant.
The domain name <zegnapictures> is therefore confusingly similar to the trademark ZEGNA in which the Complainant has rights.
B. Rights or Legitimate Interests
The term "zegna" is not a descriptive word, in which the Respondent might have an interest. "Zegna" is a name, which is used and known worldwide to identify the products of the Complainant. Complainant has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
There is no evidence that the Respondent has used the domain name <zegnapictures>. Particularly, none of the circumstances listed under 4c of the Policy, possibly demonstrating rights or legitimate interests, are given. According to the Complainant's submissions, the Respondent does not use (commercially or non-commercially) the domain name and has not demonstrated any preparations to use it, and he has not been commonly known by the domain name. The Respondent has not challenged any of these submissions. In Mondich v. Brown, WIPO Case No. D2000-0004 (February 20, 2000) the Panel decision held that "It is a general principle of United States law that the failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts". This statement has been confirmed, amongst others, in the decisions Alcoholics Anonymous World Services Inc. v. Lauren Raymond WIPO Case No. D2000-0007 (March 13, 2000) and Metabolife International v. Robert Williams WIPO Case No. 2000-0630, (September 12, 2000). Indeed, Respondent's silence allows the interference that any evidence of the Respondent would not have been in his favor.
Finally, registering the domain name on behalf of another person as such does not constitute a legitimate interest in such registration.
The Panel concludes in application of Rule 14(b) that the Respondent has failed to submit any circumstances to demonstrate rights to or a legitimate interest in the domain name as requested under 4(c) of the Policy. The Panelist is therefore satisfied that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Respondent does not actively use his domain name and he has never offered it to the Complainant for sale. It has therefore to be considered whether the simple registration and stockpiling of the domain name may, taking into account all circumstances of the case, may be considered to be registration and use in bad faith. Even if the Respondent has not responded to the Complaint, the Complainant has to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
In that context, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003 (February 20, 2000), that inaction of the Respondent is within the concept of 4a(iii) of the Policy.
(i) Registration in bad faith
Similarly to the Telstra case, there exist problems as to the identity of the Respondent. In response to the notification of Complaint, Mr. Anthony Tarley, administrative contact of the Respondent wrote to the Center as follows: "The domain is not owned by Lionhart Securities Corp. It registered it on behalf of a Mr. CF Pauwels who cannot be located and as such the site will not be renewed in May"
If the submission of the administrative contact of the Respondent is true, the person having the domain name at its disposal has taken deliberate steps to ensure that its true identity cannot be determined and that communication is not possible for the Complainant. Since the Respondent has agreed to register the domain name on behalf of Mr. Pauwels, it has to accept responsibility for bad face intentions of that person. If the submission is not true, the registered owner of the domain name and Respondent in the present case tries to hide its responsibility behind an imaginative person.
Also, neither the Respondent nor Mr. Pauwels, if the Respondent really registered the domain name on behalf of such person, cannot have ignored the fact that "ZEGNA" is a protected trademark of the Complainant in the United States. This can be deducted from the fact that the trademark ZEGNA has been registered in the United States for over 30 years (in the United States registration of a trademark in the USPTO amounts to constructive notice under 15 U.S.C. ß 1072) and that it is intensively used by the Complainant for its fashion articles sold both in many own outlets (including an outlet in Florida, where the Respondent is located) that are bearing the name of the Complainant, and in numerous other outlets offering fashion articles of different brands to customers.
Failing any Response of the Respondent to the Complaint the Panel assumes that the Respondent, a securities corporation, does not conduct any business in the field of activity of the Complainant.
Departing from this assumption it is difficult to conceive that the Respondent had any good faith intention to use the domain name <zegnapictures.com>, when registering it. The same would be true for Mr. Pauwels, should the Respondent really have registered the domain name on his behalf and, failing any arguments of the Respondent as to its relationship to Mr. Pauwels, the bad faith of the Respondent cannot be denied simply relying on the respective submission of its administrative contact.
These findings, with the findings under section 6(b) that the Respondent has no rights or interests in the domain name, leads the Panelist to the conclusion that the domain name <zegnapictures> has been registered in bad faith.
(ii) Use in bad faith
For the Complainant to succeed, he also has to prove that the Respondent is using the domain name in bad faith.
The Administrative Panel in the Telstra case (paragraphs 7.8 to 7.10) has convincingly argued that the provisions of the Uniform Policy in Paragraph 4(b) support the assumption that inaction is within the concept of a domain name being used in bad faith. It depends therefore on all circumstances of the case whether it can be said that the Respondent is acting in bad faith.
The question therefore arises in the present case, what circumstances of passive holding other than those identified in paragraphs 4(b) (I) - (iii) of the Policy can constitute that the domain name is being used by the Respondent in bad faith.
The Panelist considers that the sum of the following circumstances justifies such conclusion:
- The Complainant's trademark ZEGNA is an internationally well-known mark and enjoys a reputation in the United States, including Florida, where the Respondent is located.
- The Respondent (respectively Mr. Pauwels) has made no use what so ever of its domain name and has submitted no evidence whatsoever of any good faith use of the domain name <zegnapictures>.
- Neither has the Respondent communicated to the Complainant any plan for a bona fide use of his domain name by itself or by Mr. Pauwels.
- By registering <zegnapictures.com> the Respondent has precluded the Complainant from using its mark in a corresponding domain name
- at the same time, the existence of the domain name furnishes its holder with an instrument that allows it to activate a website in such a manner as to divert Complainantís customers to its website.
- absent any submission of the Respondent, it is difficult to imagine any plausible future active use of the domain name by the Respondent (or of Mr. Pauwels) that would not be illegitimate, such as being trademark infringement or an infringement of consumer protection legislation.
- Respondent has chosen not to respond to the Complain and not to cooperate with the Complainant to resolve the dispute. Instead his administrative contact simply submitted that the domain name was registered on behalf of a person that could not be located by the Respondent. Supposed that submission is true, Respondent could have offered to transfer the domain name to the Complainant. Also, if that submission is false, the Respondent could have offered to transfer the domain name to the Complainant in order to demonstrate that it did not register or use the domain name in bad faith. Instead the administrative contact of the Respondent submitted that the domain name would not be renewed at its expiry date. In view of the fact that the Respondent chose not to respond to the Complaint, the Complainant is not obliged to trust in that submission of the Respondentís administrative contact. Also the Panelist does not accept such informal communication of the Respondentís administrative contact as a submission of the Respondent, to be considered for its decision. Furthermore, even if one assumes that the Respondent will not to renew the domain name, when it expires, there exists the danger for the Complainant that Mr. Pauwels, indicated by the administrative contact of the Respondent as the person being "the owner" of the domain name would at once register the domain name <zegnapictures.com> in its own name, or that any other third person, e.g.watching expiry dates of domain names, would register the domain name at its expiry (in its own interest or even again on behalf of Mr Pauwels).
Taking into account these particular circumstances the Panel concludes that the Respondent's passive holding of the domain name satisfies the requirements of paragraph 4(a)(iii) of the Policy that the domain name has been registered an is being used in bad faith.
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 <zegnapictures.com> be transferred to the Complainant.
Gerd F. Kunze
Dated: May 15, 2003