WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A. v. Mr. Hugo Bazzo
Case No. D2003-0520
1. The Parties
The Complainant is Consitex S.A., Stabio, of Switzerland, represented by Studio Legale Jacobacci e Associati of Italy.
The Respondent is Mr. Hugo Bazzo, Paratiba, of Chile.
2. The Domain Name and Registrar
The disputed domain name <consitex.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2003. On July 1, 2003, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the domain name at issue. On July 2, 2003, Key-Systems GmbH dba domaindiscount24.com 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 July 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1.
The Center has appointed Peter G. Nitter as the sole panelist in this matter. 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
Complainant is a part of the Ermenegildo Zegna group, one of the best known fashion groups internationally, where it is both the main company manufacturing clothing, and the owner of several trademarks such as ZEGNA and ERMENEGILDO ZEGNA.
Complainant has not registered ‘Consitex’ as a trademark. but has consistently been used on Zegna clothing’s labels as a common law trademark and as an indication of the company operating the factory.
Respondent has registered the domain name <consitex.com>.
5. Parties’ Contentions
Consitex has consistently been used on Zegna clothing’s labels as a common law trademark and as an indication of the company operating the factory. The fashion business, and any consumer interested in the company indicated as the manufacturer of ERMENEGILDO ZEGNA clothing on the same clothing labels, would become familiar with the name ‘Consitex’. All results of a search performed on June 23, 2003, for ‘Consitex’ on the search engine Google refer to Complainant or its subsidiary.
The domain name at issue is identical to the common law trademark of Complainant.
Respondent has no rights or legitimate interests in the domain name at issue.
There is no evidence of Respondent’s use of, or demonstrable 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. The only thing respondent offers through its domain name is a link to a pornographic web site. Nor has respondent ever been commonly known in the normal course of business by the trademark, trade name or domain name ‘consitex’.
Respondent has registered and used the domain name at issue in bad faith.
Respondent must have been aware of the connection between ‘consitex’ and the Zegna group, as he has included a metatag to ‘gruppo Zegna’ on his web site. Respondent’s bad faith is further evidenced by the fact that he has registered several other domain names consisting of well-known Italian trade marks, and linked them to the same pornographic web site. Respondent has furthermore supplied false contact information, which according to previous panel decisions under the URDP is to be regarded as an indication of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel accepts Complainant’s assertion that, as decided in previous panel decisions, it is not strictly necessary that a trademark is registered, and that a common law trademark is sufficient under the Policy.
The Panel further find that Complainant has evidenced that he has established such common law trademark rights in the mark ‘consitex’.
As top level domain extensions are without significance when assessing the similarity between the domain name at issue and Complainant’s trade mark, it is clear that the domain name <consitex.com> is to be regarded as identical to Complainant’s common law trademark ‘consitex’.
B. Rights or Legitimate Interests
As a result of his default, the Respondent has not submitted evidence of any right to or legitimate interest in the contested domain name. Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating its mark. The word ‘consitex’ appears to be an invented word, and is in the opinion of the Panel not a word traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
After having assessed the evidence put forward by Complainant, Respondent’s registration and use of the disputed domain name in connection to its pornographic web site is, in the opinion of the Panel, an intentional attempt to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of his site. By including a metatag to Complainant’s ‘gruppo Zegna’, Respondent has, in the opinion of the Panel, revealed his awareness and knowledge of Complainant’s use of ‘consitex’ as a common law trademark.
Respondent has also, evidenced by the broad range of other domain name registrations that includes well-known Italian trade-marks, engaged in a pattern of cybersquatting, which is a further indication of his bad faith.
Respondent has furthermore provided false contact details. Pursuant to a long range of previous decisions under the Policy, this is also to be regarded as an indication of a registration and use in bad faith.
As a result of the above, the Panel finds that Respondent has registered and used the domain name at issue 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, <consitex.com>, be transferred to the Complainant.
Peter G. Nitter
Dated: August 11, 2003