WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Endware Kft.
Case No. D2008-1100
1. The Parties
The Complainants are the three companies 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 which collectively constitute the Zegna group of companies (hereinafter collectively “the Zegna Group” or “Complainants”) and which are represented internally.
The Respondent is Endware Kft., Budapest, Hungary.
2. The Domain Name and Registrar
The disputed domain name <zegnaboutique.com> (the “domain name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the “Center”) in hardcopy on July 21, 2008. In response to a notification by the Center dated July 28, 2008 stating that the Complaint had not been submitted in electronic format as required by the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), paragraph 3(b), the Complainants complied with these requirements by further email dated July 28, 2008. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On July 22, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On July 22, 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 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 29, 2008. The due date for Response was August 18, 2008. The Respondent did not submit a formal Response. Accordingly, the Center notified the Parties of the Respondent’s default on August 26, 2008.
The Center appointed Alexander Duisberg to act as sole Panelist in this matter on September 9, 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
The Complainants challenge the registration of the domain name <zegnaboutique.com> by the Respondent.
It results from the undisputed submissions brought forward and evidenced by the Complainants that they are an internationally well-known group in the field of fashion and the owner of several hundred trademarks consisting of or including ZEGNA throughout the world. These trademarks cover mainly clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewellery, eyeglasses, sunglasses, underwear, fragrances and services in the field of fashion and shop signs.
In particular, the Complainants filed evidence of the following trademarks: International trademark No. 176867 ZEGNA (wordmark, registered on behalf of Lanificio Ermenegildo Zegna & Figli S.p.A. on May 7, 1954 in classes 23, 24 and 25, claiming protection also in Hungary) and Community trademark No. 001436708 ZEGNA (figurative mark filed July 24, 1996 and registered on behalf of Consitex S.A. on August 19, 1998 in class 25).
The disputed domain <zegnaboutique.com> name was registered on January 21, 2008 and has not been used.
5. Parties’ Contentions
The Complainants contend that the disputed domain name <zegnaboutique.com> is confusingly similar to the trademarks in which they hold rights for the following reasons:
(a) The disputed domain name incorporates the registered trademark ZEGNA in its entirety and is therefore similar to that trademark. The mere addition of the descriptive term “boutique” is not enough to avoid similarity between the disputed domain name and the trademarks ZEGNA. Given that ZEGNA is primarily used to cover luxury clothing items, the addition of the term “boutique” presents a direct reference to the Complainants’ activities.
(b) The Complainants further contend that the Respondent has no rights or legitimate interests in the domain name. The Respondent is neither commonly known by the domain name, nor does it do any legitimate business under the domain name. Further the Respondent does not have any serious intention to use the disputed domain name and even in the case of a use, it is not possible to understand which kind of legitimate exploitation could be done without infringing the Complainants’ rights.
(c) The Complainants, lastly, contend that the domain name was registered and is being used in bad faith. According to the Complainants it is not possible for the Respondent not to have been aware of the famous trademarks ZEGNA and the registration therefore must have occurred in bad faith. According to the Complainants, the Respondent clearly knew the Complainants’ products and activities and chose, between the thousands of words he could have used, the one whose meaning is strictly connected with such activities, that is “boutique”, the place where the Complainants’ products are sold. Two warning letters sent by the Complainants to the Respondent did not lead to a settlement.
(d) Furthermore, the Complainants argue 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 Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186.
The Complainants request a decision that the domain name be transferred to the Complainant Consitex S.A.
The Respondent did not reply to the Complainants’ contentions.
However, by email sent to the Center on August 18, 2008, the Respondent confirmed that Respondent “cede[s] the right of the above domain to Zegna S.P.A.”
6. Discussion and Findings
A. Procedural matters
First, the Panel must consent to decide whether the Respondent’s email of August 18, 2008 represents a “unilateral transfer” and if so, whether it is still necessary to address the conditions for transfer under paragraph 4(a) of the Policy, or rather to grant such “unilateral transfer”. Prior decisions illustrate that it is within the Panel’s discretion to choose either approach (see, e.g., United Pet Group, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1039, finding that a detailed merits discussion is not necessary when both parties have consented to a transfer order; Vienna Beef Ltd. v. Texas International Property Associates, WIPO Case No. D2007-1133, finding that a full discussion of the merits was appropriate despite Respondent’s alleged willingness to unilaterally transfer).
In the case at hand, the Respondent has informed that it “cede[s] the right of the above domain to Zegna S.P.A.” The Panel assumes that in doing so, the Respondent refers to Lanificio Ermenegildo Zegna & Figli S.p.A. However, the Complainants have requested a decision that the domain name be transferred to another Complainant, i.e. Consitex S.A. Therefore the Parties have asked for the domain name to be transferred to different Complainants. Since the requests of the Parties in this case are not identical, the Panel finds it necessary in these circumstances to make findings of fact or of compliance (or not) with the three requisite elements of the Policy:
The Respondent did not file any formal Response to the Complaint. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (paragraph 4.6) the Respondent’s default does not automatically result in a decision in favour of the Complainants. In fact the Complainants must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainants to support their assertions with actual evidence in order to succeed in a UDRP proceeding (see Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186).
Pursuant to the requirements of paragraph 4(a) of the Policy, transfer of the domain name to the Complainants may only be granted if Complainants demonstrate that each of the following three elements has been satisfied:
(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.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <zegnaboutique.com> is confusingly similar with the Complainants’ trademark ZEGNA.
The Complainants have provided sufficient evidence confirming that they are the owners of a large number of registered trademarks consisting of or including ZEGNA, e.g., International trademark No. 176867 ZEGNA (wordmark, registered on behalf of Lanificio Ermenegildo Zegna & Figli S.p.A. on May 7, 1954 in classes 23, 24 and 25) and Community trademark No. 001436708 ZEGNA (figurative mark filed July 24, 1996 and registered on behalf of Consitex S.A. on August 19, 1998 in class 25). Both trademarks also cover the territory of Hungary where the Respondent is located.
The disputed domain name is not identical but is confusingly similar with these trademarks ZEGNA: The Complainants correctly point out that the domain name is combining the mark with the term “boutique”, describing the Complainants’ points of sale. Therefore, this purely descriptive term is not capable to exclude confusing similarity between the domain name and the trademark ZEGNA (see Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375 and Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LionHeart Securities Corp., WIPO Case No. D2003-0285).
Thus, the Panel is satisfied that the first condition has been met.
C. Rights or Legitimate Interests
The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the disputed domain name <zegnaboutique.com>.
Complainants have not consented to the Respondent’s use of the domain name. The simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
Complainants have asserted in their Complaint that they have never granted the Respondent a license or any other rights in their trademarks. Furthermore, according to the Complainants’ undisputed allegations, the term “zegna” is not a descriptive word, in which the Respondent could have a legitimate interest. In fact ZEGNA is a trademark, which is used and known worldwide to identify the products of the Complainants. The Respondent has not disputed this assertion, nor has it provided any other information suggesting that the Respondent has any rights or legitimate interests in respect of the domain name.
In the absence of any submission from the Respondent, the only known circumstances supporting the existence of rights or legitimate interests of the Respondent in respect of the domain name is the mere registration of <zegnaboutique.com>. Yet, the Panel concurs with earlier decisions holding that mere registration does not seem sufficient to establish rights or legitimate interests since if this was so, all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration (see Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375 and General Electric Company v. John Bakhit, WIPO Case No. D2000-0386).
Under these circumstances this Panel finds that the Respondent has no rights or legitimate interests in the domain name and is therefore satisfied that the second condition is met.
D. Registered and used in Bad Faith
The Respondent does not actively use the disputed domain name and has not offered it to the Complainants for sale. It therefore has to be considered whether the simple registration and “stockpiling” of the domain name may, taking into account all circumstances of the case, be considered to amount to a registration and use in bad faith. Even if the Respondent has not responded to the Complaint, the Complainants have to prove under the Policy that the Respondent has registered and is using the domain name in bad faith.
The Panel is satisfied that the domain name <zegnaboutique.com> was registered and is being used in bad faith for the following reasons.
It is shown in the Complaint that the trademark ZEGNA has been the object of hundreds of registrations in several countries around the world and used accordingly for many decades. Moreover, the Complainants filed extensive material indicating that ZEGNA is and has been for a number of years the object of extensive media coverage. In light of these circumstances, and in absence of any counter argument from the Respondent, the Panel finds Complainants’ allegations credible that the Respondent had no good faith intention to use the domain name <zegnaboutique.com> when registering it.
Furthermore, the Panel may not ignore that the Complainants’ trademarks “ZEGNA” are not representing a mere word but rather a highly unusual personal surname and therefore, the adoption of such word in conjunction with the descriptive term “boutique” as domain name is suspect and unexplained.
Therefore, the Panel finds credible the Complainants’ allegation that Respondent was aware of the Complainants’ earlier and renowned trademark rights at the time the domain name at issue was registered. Such awareness makes it also reasonable to believe that the Respondent acted in bad faith when he applied for the registration of the domain name <zegnaboutique.com>.
Furthermore, the Panel considers that in the case at hand the combination of the following circumstances justifies the conclusion that passive holding constitutes the use in bad faith by the Respondent (see Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186). The Complainants’ trademarks ZEGNA as mentioned above under section 4 are internationally well-known and also cover Hungary, where the Respondent is located. The Respondent has made no use whatsoever of its domain name and has submitted no evidence of any possible good faith use of the domain name <zegnaboutique.com>. Neither has the Respondent communicated to the Complainants any plan for a bona fide use of his domain name. By registering the disputed domain name <zegnaboutique.com> the Respondent has precluded the Complainants from using its mark in a corresponding domain name and at the same time the existence of the domain name furnishes its holder with an instrument that allows it to activate a website in such a manner as to divert Complainants’ customers to its website. Absent any submission of the Respondent, it is difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being trademark infringement or misleading consumers (see Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LionHeart Securities Corp., WIPO Case No. D2003-0285).
Taking into account the particular circumstances of this case, the Panel concludes that the Respondent’s passive holding of the domain name satisfies the requirements of the Policy that the domain name has been registered and is being used in bad faith. Therefore, the Panel finds that the third condition is also met.
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, <zegnaboutique.com> be transferred to the Complainant Consitex S.A.
Date: September 22, 2008