WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com
Case No. D2008-0186
1. The Parties
The Complainants are three companies constituting the Zegna group of companies being: Consitex S.A., Stabio, Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A., Biella, Italy; and Ermenegildo Zegna Corporation, New York, the United States of America (hereinafter collectively “the Zegna Group” or “Complainants”) and are collectively represented by Studio Legale Jacobacci & Associati, Italy.
The Respondent is Varentinuo inc. reg by sopao.com, Beijing, China.
2. The Domain Name and Registrar
The disputed domain name is <z-zegna.com> (the “Domain Name”), registered with HiChina Web Solutions Limited.
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2008 electronically and in hardcopy on February 12, 2008. On February 5, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On February 13, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center dated February 13, 2008 that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on February 15, 2008. The Center verified that the Complaint together with the amendment to 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”).
3.2 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 February 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2008, the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2008.
3.3. The Complaint has been submitted in English requesting that English be the language of the proceedings. The Complainants did not argue that it was unable to communicate in Chinese but had requested for the proceedings to be held in the English language as the Respondent was fluent with the English language as shown by the correspondence exchanged between the Complainants and its domain name agent Dr. Bovolenta together with the Respondent prior to the filing of the Complaint. These arguments will be dealt with in detail later in this decision under the language sub-heading. The Center allowed the Complaint in English and the Response in English or Chinese and appointed a Panel familiar with both languages. The Center left the issue of the language of the proceedings to be determined by the Panel.
3.4 The Center appointed Dr. Colin Yee Cheng Ong to act as sole panelist in this matter on March 26, 2008. The Panel finds that it was properly constituted. It 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
4.1 The Complainants are an internationally well-known group in the field of fashion and the owner of several hundred trademarks including the word “zegna” throughout the world which cover mainly clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewellery, fragrances and services in the field of fashion fabrics.
4.2 Unfortunately apart from the information provided above, the Complainants have not in the main body of their submission and in the context of the listing of the ZEGNA trademarks (as enclosed in Annex 1) specifically provided further details of the ZEGNA trademark as being known worldwide. No details were given in the body of the submissions as to when the first ZEGNA trademark was first registered and if the Complainants had continuously and extensively used the ZEGNA trademarks to conduct its activities, for its increasing range of goods and services. The Complainants have not specifically contended if all of the registrations that it attached in the Complaint are valid, subsisting, unrevoked and uncancelled. No details were provided as to how much was the annual sales of the Zegna products.
However, the Panel will still go through the submissions and evidence provided by the Complainants to determine if there are adequate grounds for the request by the Complainants to succeed. The Complainants submit that in 2004 the Zegna group launched its new trademark, Z ZEGNA or ZZEGNA, and that this brand is now widely used throughout the world.
The Complainants have annexed to the Complaint two trademarks, which include the following (all of which appear to be simple word marks):
– International registration ZZEGNA No. 830975, extended to China and dating back to 2004;
– Hong Kong, SAR of China registration ZZEGNA No. 300076743AA
The Complainants submit that details of other trademarks may be provided upon request but with respect, it is not the duty of the Panel to assist the Complainants to request for further details in a Domain name dispute. The Complainants suggest that they have been the owners of the trademarks ZEGNA since before World War II and ZZEGNA since 2004 and that both the trademarks are world famous trademarks as a cursory Google search would easily confirm. They have however submitted a portfolio of international press clippings to demonstrate the fame of Zegna.
5. Parties’ Contentions
5.1 The Complainants contend that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:
(i) The Domain Name in dispute reproduces precisely and entirely the trademark ZEGNA. That Zegna had also prevailed in a number of cases where the trademark and the domain name were similar and relied upon the decision of Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375. The panel in that decision had commented that “comparing the domain name <zegnasuit> to the registered trademark ZEGNA, it appears that in the former the distinctive part is to be considered ZEGNA and the addition of SUIT does not seem capable to add any distinctiveness.”
The Complainants also relied upon the decision of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Spiral Matrix, WIPO Case No. D2006-0169 wherein that the panel had decided that “The combination of the Complainants’ world famous brand name ZEGNA and the word “suits”, which is part of the Complainants’ core business for which it had acquired an international reputation and with which it is associated, would lead users of the Internet to believe that the site is licensed by or in some way authorised by the Complainants”.
(ii) The Complainants contend that it was not possible for the Respondent not to have been aware of the famous trademarks ZEGNA and ZZEGNA and that the registration may only have occurred in bad faith; when it may be presumed that the Respondent knew of the renown of the Complainants’ trademarks.
5.2 The Complainants contend that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
(i) 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.
(ii) The Respondent, upon information and belief, has never been commonly known by the Domain Name, nor did it do any legitimate business under the Domain Name.
(iii) Upon information and belief, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the Domain Name.
5.3 The Complainants, lastly, contend that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) The Complainants argue that they do not, nor cannot in the future, control what will be, offered by the Respondent’s website. It is stated that the Respondent’s position is for the time being one of “passive holding” of the domain name and that this has been recognised as bad faith by countless panel decisions such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
(ii) Several letters and mails sent both by the Complainants and by their lawyers in China to the Respondent did not lead to a settlement and that this therefore confirmed the Respondent’s unwillingness to deal fairly with the Zegna Group’s trademark rights.
(iii) That the details of the Respondent are incomplete in the WhoIs and a company called Varentinuo, Inc. may not exist in Beijing, an additional indication of bad faith.
The Complainants requests a decision that the Domain Name be transferred to the Complainant Consitex S.A.
5.4 The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Language of Proceedings
6.1 The Complaint was filed in the English language. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed Domain Name is Chinese. The default language of the proceeding is Chinese, being the language of the Registration Agreement, pursuant to the paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties.
6.2 According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
6.3 In the present case, the commencement of the administrative proceeding was notified to the Respondent both in the English and Chinese languages but there was neither a response nor any objection made by the Respondent. Although the Chinese language is the language of the registration agreement for the Domain Name, the Complainants assert that English should be the language of proceedings. The Panel notes that the Respondent has not objected to English as the language of this proceeding even though invited to comment to these matters in Chinese. Although the inability of the Complainants to communicate efficiently in the Chinese language cannot solely be a proper legal basis for not adopting the default language of proceedings, the Panel views that it is significant that there has not been an objection made by the Respondent on the issue of language. Furthermore, it would appear from previous communications between the parties that the Respondent is also fluent in English language. The Panel considered this issue carefully bearing in mind its broad powers given to it by paragraph 11(a) of the Rules. Therefore, in consideration of all the above circumstances, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. However, based on the Panel’s discretion, Chinese language documents, have been reviewed by the Panel.
B. Other Procedural Matters
6.4 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Furthermore, having gone through the series of communications as set out above under the section on Procedural History, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.5 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.6 The Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.7 Notwithstanding the default of the Respondent, it remains incumbent on the Complainants to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainants must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(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.
6.8 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
6.9 Where a respondent chooses not to present any evidence to dispute the claims of a complainant, an inference may be made that such evidence would not have been favorable to the respondent, or that it accepts the factual claims of the complainant, or even that it does not wish to respond or defend its perceived interest in the disputed Domain Name. (See: Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc./ Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808)
C. Identical or Confusingly Similar
6.10 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.11 In line with such provision, the Complainants must prove two limbs, i.e. it enjoys trademark rights; and the disputed Domain Name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.12 The Complainants have appended to the Complaint a list of trademarks that incorporate the ZEGNA trademark. Although these were not specifically emphasized in the body of the submissions, it is clear that the Complainants are the owners of a number of trademarks in various jurisdictions that comprise the word “zegna”. A number of these have already been listed in this decision. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a number of trademarks in which the Complainants have rights.
6.13 In the circumstances, the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
6.14 According to paragraph 4(a)(ii) of the Policy, the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the contested domain name.
The Complainants are thus required to prove that the Respondent has no right or legitimate interest in the disputed Domain Name. However, it is the prevailing consensus view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy or any other right, then the complainant is deemed to have made out this element of the Policy.
6.15 As previously held by other WIPO UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainants”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001)
6.16 The Panel concurs with what was held in the case of Owens Corning v. NA, WIPO Case No. D2007-1143, namely that if a respondent wants to argue that it has a legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.21(ii) of that decision).
6.17 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed Domain Name, or that the Respondent has made non-commercial or fair use of the name. The Respondent has also not used the disputed Domain Name in connection with a bona fide offering of goods or services. The Panel thus finds that the Complainants have made its case that the Respondent has no rights or legitimate interests in the disputed Domain Name which is confusingly similar to the Complainants’ mark.
6.18 Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.
E. Registered and Used in Bad Faith
6.19 The Panel accepts the Complainants’ contention that the Respondent registered the Domain Name with knowledge of the Complainants’ businesses and its use of the “zegna” name. This is inherently probable given the fame of the ZEGNA mark worldwide.
6.20 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. This list is not exhaustive.
6.21 There is no evidence in this case that the Respondent registered the domain name primarily for the purpose of transferring the domain name to the Complainants, or one of its competitors, for excessive value. Nor is there evidence that the Respondent registered the domain name to prevent the Complainants from obtaining the domain name, nor of a pattern of such conduct. There is also no evidence that the Respondent registered the domain name primarily for disrupting the business of the Complainants. Given that the website to which the domain name resolves does not carry any content, other than by way of the text “Bad Request (Invalid Hostname)”, the Respondent also cannot be said to be using the domain name with the intention of attracting for commercial gain Internet users to the website by creating a likelihood of confusion with the Complainants’ marks. This lack of active use of the web site is known as “passive holding”. Passive holding can however, even though it may not fit squarely within any of the four inclusive examples set out in paragraph 4(b) of the Policy, constitute registration and use of a domain name in bad faith; see, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
The Panel is also mindful of the line of prior decisions in which panels have decided that, where a trademark used in a domain name has a high degree of renown and the respondent has no right or legitimate interest in the mark, this of itself suggests opportunistic bad faith (see Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; and Barceló Corporación Empresarial, S.A. v. KPYR / Svetlana Zubovich, WIPO Case No. D2005-1335.
For the reasons set out above, and taking into account the surrounding circumstances, this Panel concludes that there is no plausible actual or contemplated use to which the domain name could be put by the Respondent that would not be illegitimate. The Panel therefore finds that the Respondent registered and used the disputed domain name in bad faith.
6.22 In the circumstances, the Complainants have made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainants. However, the Panel would also add one further point before drawing this decision to a close.
6.23 In coming to its decision the Panel has not given any weight to the Complainants’ unsupported contention that the failure on the part of the Respondent to respond to the several letters and mails sent both by the Complainants and their lawyers in China. The Complainants have concluded that the fact that the Respondent did not lead to a settlement confirmed the Respondent’s unwillingness to deal fairly with the Zegna Group’s trademark rights. It is not clearly stated if the Respondent had responded or even received the letters. However, if the Respondent had received a “cease and desist letter” whether in Chinese or English and did not respond, this can be taken as evidence of bad faith. The Panel accepts that the decision of the panel in America Online, Inc. v. Viper, WIPO Case No. D2000-1198 suggesting that this was one of a number of factors that was taken into account on the issue of bad faith registration and use in that case. Nevertheless, this is something that a panel should only do with great care. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case. Also at all times it must be remembered that a respondent is under no obligation to respond to such a letter. It is always open to a respondent to sit back and make a complainant prove its case.
6.24 Further, if a complainant wants a panel to draw an adverse inference from a failure on the part of a respondent to respond to any “cease and desist letter” or any other “letter before action”, it is essential that the complainant puts that letter before the panel so that it can properly consider the same. The Complainants have failed to do this in this case. Nevertheless, the Panel has been able to conclude that the Respondent registered and used the Domain Name in bad faith without reliance on this material.
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, <z-zegna.com> be transferred to the Complainant Consitex S.A.
Dr. Colin Yee Cheng Ong
Dated: April 14, 2008