WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Giuseppe Strano
Case No. DBZ2003-0004
1. The Parties
The Complainants are Consitex S.A., Stabio, Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A., Trivero, Biella, Italy; Ermenegildo Zegna Corporation, New York, NY, U.S.A., all represented by Massimo Introvigne and Fabrizio Jacobacci of Jacobacci & Associati, Torino, Italy.
The Respondent is Mr. Giuseppe Strano of Agrigento, Italy.
2. The Domain Name and Registrar
The disputed domain name <ermenegildozegna.bz> is registered with Dominiando S.r.l., Roma, Italy.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2003. On August 5, 2003, the Center transmitted by email to Dominiando S.r.l. a request for registrar verification in connection with the domain name at issue. On August 7, 2003, Dominiando S.r.l. 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 August 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on September 3, 2003.
The Center appointed Edoardo Fano as the sole panelist in this matter on September 10, 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 the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondentís default in responding to the Complaint).
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondentís response.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainants are three companies constituting the Ermenegildo Zegna group of companies (hereinafter referred to as "the Complainant"). The Complainant is internationally well-known in the field of fashion and the owner of hundreds of trademarks including the wording ERMENEGILDO ZEGNA throughout the world, among which there are the following trademark registrations:
- U.S. registration for ERMENEGILDO ZEGNA No. 1,033,943
- International registration for ERMENEGILDO ZEGNA No. 410571
The Complainantís rights in the trademark ERMENEGILDO ZEGNA in Italy dates back to 1952, and the relevant trademark registrations have been duly renewed up to date.
The Respondentís domain name <ermenegildozegna.bz> was registered on June 3, 2003. It resolves to an "under construction" page.
5. Partiesí Contentions
The disputed domain name is confusingly similar to the Complainantís trademarks, it is virtually identical.
Upon information and belief, the Respondent has no rights to or legitimate interests in the disputed domain name, since:
- there is no evidence, before the dispute, of the Respondent 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;
- the Respondent has never been commonly known by the domain name;
- there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name.
The disputed domain name was registered and should be taken as being used in bad faith.
There is no way that the Respondent may not have been aware of the famous trademarks ERMENEGILDO ZEGNA of the Complainant, and registration may only have occurred in bad faith.
On the question of "use" of a domain name in bad faith when there is no actual presence on the Web by the Respondent, there is now an entire body of significant precedents. Most of these quote the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), which stated that "the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. (Ö)"
These "circumstances" include "the strong reputation of Complainant's trademark and its use internationally" and "the Respondent's failure to provide evidence of any actual or contemplated good faith use by it of the domain name" (Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090).
Moreover "(Ö) in many jurisdictions the mere registration of one or more domain names that contains the well- known trademark of others is considered a trademark infringement or an act of unfair competition and thus is believed to be use in the course of trade. (Ö) [T]he Panel also finds that the expected use of the domain name by the Respondent inevitably (and to the Respondentís knowledge) will lead people to believe that the Respondent and the Respondentís site was in some way associated with the Complainant. For this purpose potential use is equivalent to actual use." (Red Bull GmbH v. Harold Gutch, WIPO Case No. D2000-0766).
In the present case there is also an "active" holding through both a "parking" page and an attempt to sell the domain name.
The default page of <ermenegildozegna.bz> resolves to an "under construction" page for a future site. The Complainant has no control of what the Respondent may include in the future in its Web site. By the use of the contested domain name the Respondent also diverts traffic which would otherwise go to Complainantís Web sites which promote genuine ZEGNA products.
Furthermore, the Respondent, asked in writing under instructions from the Complainant, offered to sell the disputed domain name (together with another domain name corresponding to the same trademark of the Complainant as the one at issue, namely <ermenegildozegna.be>) for the amount of Euro 15,000.
The Respondent did not reply to the Complainantís contentions and is in default: no exceptional circumstances explaining the default have been put forward.
A Respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant, in accordance with paragraph 14(b) of the Rules (see also Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080; Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848)
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a Complainant must satisfy in order to succeed:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As far as the first of these elements is concerned, the Panel finds that the Complainant is the owner of the trademark "ERMENEGILDO ZEGNA" both by registration and acquired reputation and that the trademark "ERMENEGILDO ZEGNA" is identical to the disputed domain name <ermenegildozegna.bz>.
It is well accepted that a top-level domain, in this case ".bz", is to be ignored when assessing identity of mark and domain name (see, e.g., VAT Holding AG v. vat.com, WIPO Case No. D2000-0607).
The Complainant has therefore met its burden of proving that the domain name at issue is identical to Complainantís trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a Response in accordance with the Rules, Paragraph 5 and has no obvious connection with the disputed domain name.
This and the fact that the Complainant asserts that the Respondent has no right or legitimate interest in the domain name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.
However, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name and the Panel therefore finds that also test (ii) of the Policy's paragraph 4(a) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes 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 a domain name in bad faith:
(i) circumstances indicating that the Respondent 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location."
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainantís trademark has been already established and the Panel finds that the Respondent, especially because he is located in Italy where the trademark in question is particularly famous, knew or should have known that the disputed domain name <ermenegildozegna.bz> was identical to a well known trademarks of a third party (see, e.g., Veuve Cliquot Ponsardin v. The Polygenix Group Ltd, WIPO Case No. D2000-0163 and, regarding the same well known trademark as the one at issue, Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Lian Ming, WIPO Case No. DWS2003-0001, Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Antonietta Maria Loprete, WIPO Case No. DRO2003-0004, Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Jacques Stade, WIPO Case No. DBZ2003-0003, Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO Case No. D2003-0266).
Further evidence of the registration in bad faith of the disputed domain name lies on the fact that the Respondent registered another domain name identical to the Complainantís trademark, namely <ermenegildozegna.be>.
As regards the use in bad faith of the disputed domain name, apart from the valid Complainantís allegation of "passive holding" as set forth in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) and convincingly proved by the Complainant also as far as the relevant circumstances are concerned, the Panel considers a further important evidence of use in bad faith the fact that the Respondent, when requested whether he was willing to sell the domain name at issue, offered to sell the disputed domain name as well as the domain name <ermenegildozegna.be> for the price of Euro 15,000.
From this it is possible to presume that the Respondentís only purpose was to register domain names corresponding to third partiesí well known trademarks in order to sell them for valuable consideration, which is a circumstance of use in bad faith specifically provided by Paragraph 4(b)(i) of the Policy.
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name 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 <ermenegildozegna.bz> be transferred to the Complainant, namely to Consitex S.A.
Dated: September 11, 2003