WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A. , Lanificio Ermenegildo Zegna & Figli S.p.A , Ermenegildo Zegna Corporation v. Jacques Stade
Case No. DBZ2003-0003
1. The Parties
The Complainants are: 1) Consitex S.A., Via Ligornetto, Stabio, Switzerland, 2) Lanificio Ermenegildo Zegna & Figli S.p.A, Trivero, Biella, Italy, 3) Ermenegildo Zegna Corporation, New York, United States of America ("USA").
The Complainants are represented by Studio Legale Jacobacci & Associati, Italy.
The Respondent is Jacques Stade, Paris, France.
2. The Domain Names and Registrar
The disputed domain names <zegna.bz> and <zegna.cc> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2003. On June 27, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On July 2, 2003, eNom 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 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 31, 2003.
The Center appointed Peter G. Nitter as the sole panelist in this matter on August 11, 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
The Complainants are three companies constituting the Ermenegildo Zegna group of companies. The Ermenegildo Zegna Group is an internationally well-known group in the field of fashion and the owner of several hundreds of trademarks including the word ZEGNA throughout the world. These trademarks are listed as Annex 1 to the Complaint.
The Complainants cover mostly, but not exclusively, clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewelry, fragrances and services in the field of fashion fabrics (piece goods).
The Complainants are the owners of among others the following trademarks:
- Italian application (renewal) No. TO99C002257 for ZEGNA, whose first application dates back to 1939, ref. Annex 2;
- U.S. registration for ZEGNA No. 941.547, ref. Annex 3 to the Complaint;
- U.S. registration for ZEGNA No. 1,258,643, ref. Annex 4 to the Complaint;
- International registration for ZEGNA No. 176867, ref. Annex 5 to the Complaint;
The Complainants have been the owner of the trademark ZEGNA before World War II. ZEGNA is a world famous trademark.
The WhoIs database at eNomís web site shows that both domain names were registered by Respondent March 25, 2003.
5. Partiesí Contentions
The domain names <zegna.cc> and <zegna.bz> are confusingly similar or identical with the ZEGNA trademarks owned by the Complainants.
The Respondent must have been aware of the famous ZEGNA trademarks of the Complainants, and registration may only have occurred in bad faith.
That the Respondent operates in bad faith is evidenced by his registration of several other domain names identical to, or confusingly similar with, well-known Italian trademarks, such as <ferrari-scuderia.info>, <nutella.bz> and <ciuffo-gatto.com>, ref. Annexes 6, 7 and 8 to the Complaint.
The Respondent uses the domain names in bad faith. The default pages of the domain names both resolve in a "parking" page which links to publicity for various web sites and services.
On June 11, 2003, Mr. Luca Ciotta, writing under the instructions from the Complainants, asked the Respondent "whether the domain names (zegna.cc and zegna.bz) are for sale". The Respondent answered: "As you know, .cc is currently the most important domain name in the world after .com, and .bz is also very important. I propose Euro 25.000 for each domain name but Euro 40.000 (final offer, valid 48 hours) if you buy both." Reference is made to Annex 9 to the Complaint.
The Respondent has no rights or legitimate interests in the domain names. There is no evidence, before the dispute, of the Respondents use of, or demonstrable preparation to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. The Respondent has never been commonly known by the domain names, nor did he do business under the domain names. There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain names. The Complainants have never authorized Respondentís activities. By the use of the domain names Respondent diverts traffic which would otherwise go to Complainantsí web sites which promote genuine ZEGNA products.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
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(b)).
A. Identical or Confusingly Similar
The domain names in question are <zegna.bz> and <zegna.cc>.
Complainants have provided evidence that they are the legitimate holder of the ZEGNA trademark. The trademark has been registered in Italy since 1939, in the U.S. since 1971, and the international registration is dated 1954. The Panel determines that the Complainantsí rights in the trademark arose prior to the Respondentís registration, on March 25, 2003.
As the addition of ".bz" and ".cc" in the domain names is without legal significance the Panel decides that the disputed domain names are identical to the ZEGNA trademark.
B. Rights or Legitimate Interests
The Respondent has no connection or affiliation with the Complainants. The Complainants have never licensed, authorized or otherwise permitted the Respondent, explicitly or implicitly, to use the Complainantsí trademark in a domain name or in any other manner.
The Respondentís domain names are not used in connection with a bona fide offering of goods or services. The domain names lead to some kind of web portals which contains sites where a variety of goods and services are offered.
The Respondent has not made any legitimate non-commercial or fair use of the disputed domain name.
The Respondent has not been commonly known by the disputed domain name.
The Respondentís activities do not correspond to any of the circumstances set forth in the Policy, paragraph 4(c).
C. Registered and Used in Bad Faith
The ZEGNA trademark has a long history and was registered in Italy as far back as in 1939. The registration has been done in bad faith as the Respondent could not have been unaware of the fact that ZEGNA is a famous trademark. Reference is made to Consitex S.A., Lancificio Ermenegildo Zegna & Figli S.p.A, Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. D2003-0266.
The Panel finds that the domain names also were used in bad faith. The Respondent offered the domain names for the price of EURO 40.000 in his reply to Complainantís representative. The Panel finds that the Respondent did register the domain names for the purpose of selling them. This can also be deducted from the fact that the Respondent offered a discount if the Complainants bought both the domain names. If they bought only one the price would be EURO 25.000.
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 names, <zegna.bz> and <zegna.cc> be transferred to the Complainants represented by Consitex S.A.
Peter G. Nitter
Dated: August 25, 2003