WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Stanley Filoramo
Case No. DWS2003-0004
1. The Parties
The Complainants are Consitex S.A. of Stabio, Switzerland, Lanificio Ermenegildo Zegna & Figli S.p.A. of Biella, Italy and Ermenegildo Zegna Corporation of New York, NY, United States of America, represented by Studio Legale Jacobacci e Associati of Torino, Italy.
The Respondent is Stanley Filoramo of Montréal, Québec, Canada.
2. The Domain Name and Registrar
The disputed domain name <zegnaermenegildo.ws> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2003. On November 26, 2003, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On November 26, 2003, Wild West Domains, Inc. 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 December 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2003.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on January 15, 2004. 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 form the Ermenegildo Zegna Group which is internationally well-known in the field of fashion and the owner of several hundreds trademarks including the words ERMENEGILDO ZEGNA, registered throughout the world, including in Canada where the Respondent is located. They cover mostly, but not exclusively, clothing, shoes, tissues, fabrics, fashion accessories, belts, watches, jewellery, fragrances, and services in the field of fashion fabrics.
5. Parties’ Contentions
Complainants contend that ERMENEGILDO ZEGNA is a world famous trademark, having been registered at least as early as 1952, in Italy and still registered in many countries around the world, including the United States of America and Canada, that the domain name at issue is identical or confusingly similar with the trademark in which they have rights, that Respondent has no rights or legitimate interests in respect of the domain name and that the domain name was registered and is being used in bad faith.
In the Complaint, Complainants agree, in accordance with Paragraph 3(b)(xiii) of the Rules, to submit, only with respect to any challenge that may be made by Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of the Complaint, to the jurisdiction of the courts where the Respondent is located.
Identity or confusing similarity
In respect of the first one of these allegations Complainants state essentially the following: "The domain name <zegnaermenegildo.ws> is confusingly similar with the trademark ERMENEGILDO ZEGNA owned by Complainants. In fact, it is identical."
Rights or legitimate interests
Complainants contend that Respondent has no rights or legitimate interests in respect of the domain name at issue, as there is no evidence, before the dispute, of the Respondent’s 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; that Respondent has never been commonly known by the domain name, nor did he do business under the domain name; and that there is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain name, which is used to redirect Internet users to a pornographic web site.
Registration and Use in Bad Faith
Complainants contend that Respondent knows or should have known from a cursory Altavista or Google search that ERMENEGILDO ZEGNA is a registered trademark; that Respondent has registered several other domain names confusingly similar with registered trademarks, all redirecting Internet users to a pornographic web site; that the pattern shows that Respondent is engaging in pornosquatting, i.e. a situation where a cybersquatter tries to take advantage of a well-known trademark and/or trade name to attract Internet users to a pornographic web site; that the site to which the Internet users are directed is commercial, i.e. to access further pornographic images the Internet user is invited to pay; and that actions that create, or tend to create, customer confusion and dilution of the trademark violate trademark law and are, per se, evidence of bad faith.
Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.
Applied to this case, Paragraph 4(a) of the Policy directs that Complainants must prove each of the following:
a) that the domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainants have rights;
b) that Respondent has no rights or legitimate interests in the domain name, and;
c) that the domain name bas been registered and is being used in bad faith.
A. Identity or Confusingly Similarity
Firstly, the Panel notes that from the evidence submitted in this case, ERMENEGILDO ZEGNA has been duly registered as a trademark (see Annex 2 to the Complaint: Italian applications (renewal) for ERMENEGILDO ZEGNA Nos. TO2002C000651 and T02002C000557, respectively, in the name of Lanificio Ermenegildo Zegna & Figli S.p.A. (class 24) and Consitex S.A. (class 25), first application dating back to 1952; Annex 3 to the Complaint: U.S. registration for ERMENEGILDO ZEGNA No. 1,033,943 of February 17, 1976, in the name of Lanificio Ermenegildo Zegna & Figli S.p.A.; Annex 4 to the Complaint: Canadian registration for ERMENEGILDO ZEGNA No. 306344, originally in the name of Lanificio Ermenegildo Zegna & Figli S.p.A., subsequently transferred to Consitex S.A.).
The Panel finds that although not identical, the domain name at issue <zegnaermenegildo.ws> is confusingly similar with the trademarks, as it is actually the reverse of ERMENEGILDO ZEGNA, the second name coming before the first name instead of the contrary as in the trademarks.
B. Rights or Legitimate Interests
From the evidence available, it appears that Respondent is using this confusingly similar domain name - together with several other domain names - to direct Internet users to a pornographic web site. In the view of this Panel, such a use implies, absent any contrary evidence or any exculpating circumstance, that Respondent has no rights or legitimate interests in respect of the domain name within the meaning of Paragraph 4.2(ii) of the Policy.
C. Registration and Use in Bad Faith
Evidence submitted in this case suggests that bad faith is present in the meaning of Paragraph 4(b)(i)-(iv) of the Policy. Indeed, the Panel finds that because Respondent and his business have no connection to the world of fashion and the business of the Complainants in particular, Respondent’s conduct in registering the domain name <zegnaermenegildo.ws> amounts to an act of opportunistic bad faith, as was held in WIPO Case No. D2000-0163, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co. and WIPO Case No. D2000-0226, Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net. In the first case, the Panel noted that <veuvecliquot.org> is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith." In the second case, it was also found that "the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Cliquot]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark."
Furthermore, regarding pornography, it was decided in WIPO Case No. D2000-0079, Motorola, Inc. v. NewGate Internet, Inc., that "while many adult sex sites are perfectly legal and constitute bona fide offerings of goods or services, the use of somebody else’s trademark as a domain name (or even as a meta-tag) clearly does not constitute a ‘bona fide’ offering of goods or services when the web site owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for an adult sex site, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that create, or tend to create, violations of the law can hardly be considered to be ‘bona fide’." The finding that redirection to pornographic sites from a domain name incorporating a well-known trademark is, per se, evidence of bad faith has been confirmed by several other WIPO Panel decisions, such as in WIPO Case No. D2000-0370, Ty, Inc. v. O.Z. Names, finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented web sites is evidence of bad faith; in WIPO Case No. D2000-0362, Oxygen Media, LLC v. Primary Source, finding bad faith even where Respondent merely threatened to develop the domain name in question into a pornography site; in WIPO Case No. D2002-0601, Dell Computer Corporation v. RaveClub Berlin, stating inter alia that "the fact that the pornographic web site uses ‘mouse-trapping’ techniques to prevent visitors from leaving it [a circumstance also applicable to the present case] clearly reinforces the bad faith use of the disputed domain name"; and in WIPO Case No. D2003-0022, Six Continents Hotels, Inc. v. Seweryn Nowak, noting that "the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith."
Furthermore, the Panel finds that the Respondent could hardly ignore that several domain names which are almost identical to the domain name at issue, i.e., <quieroermenegildozegna.com>, <ermenegildo-zegna.net>, <ermenegildozegna.ro> and <ermenegildozegna.bz> have either been cancelled pursuant to WIPO Case No. D2001-0128 or transferred pursuant to WIPO Cases No. D2003-0266, DRO2003-0004 and DBZ2003-0004, and that this circumstance reinforces the bad faith use by the Respondent of the domain name at issue.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, and consistent with a series of previous WIPO decisions under the Policy involving the Ermenegildo ZEGNA trademark, the Panel orders that the domain name <zegnaermenegildo.ws> be transferred to Complainant Consitex S.A.
Date: January 26, 2004