WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Girolama Pralormo
Case No. D2003-0936
1. The Parties
The Complainants are Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., of Switzerland and Ermenegildo Zegna Corporation, of the United States of America, represented by Studio Legale Jacobacci e Associati, Italy (hereinafter referred to as Complainant or Ermenegildo Zegna Group).
The Respondent is Ms. Girolama Pralormo, Avellino, Italy.
2. The Domain Name and Registrar
The disputed domain name <zegnaermenegildo.biz> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2003. On November 26, 2003, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On November 26, 2003, BulkRegister.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 November 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 18, 2003.
The Center appointed Fabrizio Bedarida as the Sole Panelist in this matter on December 31, 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 language of the proceeding is English.
4. Factual Background
The Complainant is an internationally well-known group in the field of fashion and the owner of several hundred trademarks, filed and/or registered throughout the world, comprising the words "Ermenegildo Zegna". Complainantís first application for the trademark ERMENEGILDO ZEGNA in Italy dates back to 1952.
The Respondent registered the domain name <zegnaermenegildo.biz> on August 26, 2003.
5. Partiesí Contentions
The Complainant submits that:
The Ermenegildo Zegna Group is an internationally well-known group in the field of fashion and the owner of several hundred trademarks including the words "Ermenegildo Zegna".
The ERMENEGILDO ZEGNA is a world-renowned trademark.
The domain name <zegnaermenegildo.biz> is confusingly similar to the trademark ERMENEGILDO ZEGNA owned by Complainant. In fact, using the last name (Zegna) before the first (Ermenegildo) is quite common in Italian as well as it is in other languages, and ERMENEGILDOZEGNA and ZEGNAERMENEGILDO should be regarded as functionally identical, as confirmed by the Panel in its decision concerning the domain name <zegnaermenegildo.net> (Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Alexander Albert W. Gore, WIPO Case No. D2003-0483).
There is no way that Respondent may not have been aware of the famous trademark ERMENEGILDO ZEGNA of Complainant, and registration may only have occurred in bad faith; when it may be presumed that "the Respondent (Ö) knew of the renown of the Complainantís trademarks."
Respondent is located in Italy, where the Ermenegildo Zegna group was founded and has its international headquarters.
Upon information and belief, Respondent has no rights or legitimate interests in respect of the domain name.
There is no evidence 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.
Respondent has never been commonly known in the normal course of business by the trademark, trade name or domain name ERMENEGILDO ZEGNA.
There is no evidence of a bona fide non-commercial or other legitimate fair use by Respondent.
Respondent uses the domain name in bad faith.
That Respondent engages in an activity of trafficking in domain names is confirmed by the fact that she also registered <ciuffo-gatto.net>, a domain name corresponding to a well-known Italian trademark in the field of pet food and pet toys.
Complainant has no control over what Respondent sells or advertises. By the use of the contested domain names, Respondent diverts traffic which would otherwise go to Complainantís websites, and also gains an unfair advantage over all the other retailers and distributors, whose domain names, as long as they have a Web presence, do not incorporate Complainantís well recognisable trademarks.
Respondent is not an authorised distributor or retailer within the Ermenegildo Zegna network.
Complainant alleges (without proving) that some of the products sold by Respondent may not be genuine or at least may be the result of forms of parallel import into the European Union from countries outside the European Union regarded as illegal under Italian law and under the law of several other European Union member states.
Complainant submits that even if the products sold by Respondent were genuine this does not establish a right, nor a legitimate interest, to own the disputed domain name.
The Respondent did not reply to the Complainantís contentions. Thus Respondent has failed to submit any statement. She has not contested the allegations in the Complaint and the Panel shall decide on the basis of Complainantís submissions, and shall draw such inferences from the Respondentís default that it considers appropriate (paragraph 14(b) of the Rules).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:
(1) the domain names are identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain names;
(3) the domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights in the ERMENEGILDO ZEGNA trademark, including registrations in Italy, where Respondent is located. It is unquestionable that Complainantís trademark registrations pre-date Respondentís domain name registration.
The domain name <zegnaermenegildo.biz> is constituted of the words: "Zegna" and "Ermenegildo" both identical to the words constituting Complainantís trademark.
It is immediately clear that this mere order reversal of the words is not sufficient to avoid confusion, especially when they correspond to a well-known trademark that is moreover a patronymic name (Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Mario Giovanni Mario, WIPO Case No. D2003-0699).
In addition, the Panel agrees with Complainantís allegation that in Italian as well as in other languages, it is quite common to use the last name (Zegna) before the first (Ermenegildo). Therefore the domain name <zegnaermenegildo.biz> and ERMENEGILDOZEGNA might be regarded as functionally identical (Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Alexander Albert W. Gore, WIPO Case No. D2003-0483).
In view of all the above, the Panel finds that the disputed domain name is confusingly similar to the Complainantís trademark ERMENEGILDO ZEGNA.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) that before any notice to the respondent of the dispute, he or she used or made 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;
(b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
(c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating the ERMENEGILDO ZEGNA trademark. Respondent does not appear to make any legitimate use of the domain name for her own commercial or non-commercial activities. Respondent has not been known under this domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the above constitutes prima facie evidence of a lack of rights to or legitimate interests in the domain name.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the holderís website or location or of a product or service on the holderís website or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
In absence of contrary evidence, the Panel finds that, given the widespread use and fame of the Complainantís ERMENEGILDO ZEGNA trademark, the Respondent who is also located in Italy, where the Ermenegildo Zegna group has a primary market, could not have ignored Complainantís mark ERMENEGILDO ZEGNA, when she registered the domain name <zegnaermenegildo.biz>. This knowledge is shown by the fact that when typing the URL (address) "www.zegnaermenegildo.biz" the Internet user is redirected to the website retrievable at the URL "www.discounted-ties.com," where it appears that ties are sold under the name E. Zegna. Thus, it appears that Respondent had actual knowledge of Complainantís trademark when she registered the disputed domain name. Actual knowledge of Complainantís trademark and activities at the time of the registration of the disputed domain has been repeatedly considered an inference of bad faith in prior cases (e.g.: Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Panel notes that, the fact that Respondent, who has registered the domain name <zegnaermenegildo.biz>, registered also <ciuffo-gatto.net>, a domain name corresponding to another Italian registered trademark known in the field of pet food and pet toys, jointly with other factors such as the actual knowledge of the existence of third parties rights on corresponding trademarks, may constitute an inference that Respondent is engaged in an activity of trafficking in domain names.
The fact that Respondent chose to register two domain names both corresponding to registered trademarks, may also constitute evidence of registration and use in bad faith, implying also a "pattern of conduct" from which it is presumed that Respondentís only purpose was to register domain names corresponding to well-known trademarks either to sell them for valuable consideration or to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the holderís website or location or of a product or service on the holderís website or location.
Moreover, it cannot reasonably be imagined that Respondent chose for her domain names <zegnaermenegildo.biz> and <ciuffo-gatto.net> as a mere coincidence.
Regarding whether Respondent is selling genuine products or products resulting from a form of parallel import regarded as illegal under the Italian law and under the law of several EU countries, the Panel notes that it is not within the scope of the Policy nor in the power of the Panel to ascertain and then to rule on this issue.
The Panel may only note that these allegations made by Complainant have not been denied by Respondent.
Finally, the Panel agrees with Complainantís statement that trademark laws both in Italy and the European Union clearly establish that a retailer does not acquire trademark rights simply by retailing goods manufactured by other parties. Concluding otherwise with respect to domain names would deprive trademark owners of their rights, since any given product is sold by thousands of retailers, and each of them would be recognised as a potentially legitimate owner of the corresponding domain name. In this sense, there are numerous previous decisions. In the case Ferrero S.p.A. v. Fistagi S.r.l. (WIPO Case No. D2001-0262), the Panel wrote: "The Respondent claims to have a legitimate right to use the Domain Name because it has been authorized by the Complainant to sell the latterís products. Agreeing with Respondentís argument would mean to allow any distributor, wholesale or retailer to register and monopolize a third partyís trademark as a domain name, based on the mere fact that it sells those products"; and "the right to resell or market a product does not create the right to use a mark more extensively than required to advertise and sell the product at issue" (R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201; Motorola, Inc. v. Newgate Internet, Inc., WIPO Case No. D2000-0079). (Ö) "Respondent appears to be just one out of many resellers of Complainantís products. However, the registration of the Domain Name by Respondent suggests a much closer affiliation with Complainant than a mere reseller relationship: it suggests that Respondentís site is the place where consumers can go to get all their questions about [the trademarks and corresponding products] products answered (R.T. Quaife Engineering, Ltd. v. Luton, WIPO Case No. D2000-1201). Therefore, allowing Respondent to register and use the Domain Name would not accurately reflect Respondentís connection with Complainant as the trademark owner."
In addition, as evidenced by Complainant, in the Fistagi case (as in the previous R.T Quaife case) Respondent had been "authorized by the Complainant to sell the latterís products" while, here, there is no authorization whatsoever.
In view of all the above, Respondentís registration and use of the disputed domain name constitutes use in bad faith within the meaning of the Policy.
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 <zegnaermenegildo.biz> be transferred to Consitex S.A.
Dated: January 13, 2004