WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Jean Shi aka Jaye Corporation
Case No. D2010-1466
1. The Parties
The Complainants are Consitex S.A. of Switzerland, Lanificio Ermenegildo Zegna of Italy & Figli S.p.A. of Italy, Ermenegildo Zegna Corporation of United States of America represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati of Italy.
The Respondent is Jean Shi aka Jaye Corporation of Beijing, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <zegnagroup.com> is registered with China Springboard, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2010. On September 1, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 2010, China Springboard, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2010. The Respondent submitted the Response on September 25, 2010. The Center received an email communication from Respondent on September 29, 2010.
The Center appointed Douglas Clark as the sole panelist in this matter on October 8, 2010. 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.
On reviewing the case file, the Panel issued a procedural order ("Procedural Order No. 1") on November 8, 2010 regarding to the following three issues:
“i). Regarding the language of the proceedings
The registration agreement is in Chinese. The Complainants have requested that English be the language of proceedings on the basis pre-action correspondence was in English. The Respondent denies the correspondence took place. The Respondent has requested Chinese be the language of proceedings on the basis they do not well understand English. However, the current home page of the disputed domain name resolves to a page written in English. The content of the Response filed by the Respondent shows they could understand the nature of the complaint and adequately respond to it.
The panel therefore determines:
a. To accept the complaint in English.
b. Accept the response in Chinese
c. Any further filings may be in English or Chinese.
d. The panel will issue its decision (and any procedural orders) in English
ii). Regarding the Panel's acceptances of the Response
The Respondent sent a response, apparently on September 25, 2010. However, this was not received by the Center until September 30, 2010 after a default had been notified.
The Panel has determined that the Response should be accepted given that it appears that the Respondent likely did send the Response in time.
iii). The Panel’s Order to the Complainant regarding the filing of reply to the Respondent's Response.
The Response raises issues that the Complainant could not, in the Panel’s view, have reasonably foreseen at the time of filing its Complaint, and therefore the Complainants should be given an opportunity to reply to.
THEREFORE, the Panel orders that the Complainant may within 7 days of receipt of this order file a Reply to the Response that shall be limited strictly to replying to issues pleaded in the Response.
Accordingly, the Complainant shall have until November 15, 2010 to forward any such reply to the Center via email to firstname.lastname@example.org (copied to the Respondent).
The expected due date for Decision is hereby extended to November 22, 2010."
The Complainants transmitted by email to the Center the Reply to the Respondent's response with supporting documents on November 10, 2010. The Respondent submitted a response to the Center to the Complainants' Reply on November 16, 2010.
4. Factual Background
The Complainants are three companies constituting the Zegna group of companies: Consitex S.A of Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A.of Italy; and Ermenegildo Zegna Corporation of the United States. The Complainants are in the fashion industry and the owner of a family of marks incorporating the mark ZEGNA throughout the world. The earliest registration of the ZEGNA mark dates from 1939. ZEGNA is registered in respect of clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewellery, fragrances, services in the field of fashion fabrics (piece goods). Copies of Certificates of registration for ZEGNA in Italy (No.0001260084), United States (No.941547), China (No.1545588, No.640608, No.4159502; No.1484924; No.4159506) as well as International Registration (No.176867) and Community Registration (No.342899) were filed with the Complaint.
The Respondent registered the disputed domain name on October 20, 2008.
5. Parties’ Contentions
The Complainants' main contentions are summarized as follows:
a). Identical or confusingly similar
The Complainants claim that they are the owner of ZEGNA since before World War II. It is a famous trademark worldwide in the field of fashion industry. The Complainants argue that a cursory Google search would easily confirm this statement; a portfolio of international press searches was also annexed to the Complaint.
The Complainants argue that the disputed domain name <zegnagroup.com> is confusingly similar with the trademarks ZEGNA owned by the Complainants. The Complainants explain that Zegna is a business enterprise organized as a group and the Zegna Group is an internationally well-known group in the field of fashion and the owner of several hundred trademarks including the word “zegna” throughout the world. According to the Complainants, there is no way that the Respondent may not have been aware of the famous trademarks ZEGNA and the association between "zegna" and "group" cannot fail to evoke the name, fame, and business of the Complainants.
The Complainants refer to Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Christopher C. Gramly, 12 Galaxies, WIPO Case No. D2004-0416, where the panel concluded that Zegna has no monopoly on all possible variations of ZEGNA used as domain names. However, while Zegnatronic is a combination of ZEGNA with a word unrelated to Zegna's core business, and the panel accepted the idea that it referred to an imaginary planet "Zegnatronic" popularized by the eccentric activities of a San Francisco "street prophet", the word "group" simply describes how the Zegna business is organized, i.e. as a group, and no court would deny a trademark "ZEGNA GROUP" is confusingly similar with ZEGNA.
b). Rights or legitimate interests
The Complainants further state that the Respondent has no right or legitimate interests in respect of the disputed domain name, as 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 disputed domain name resolves in a parking page offering the domain name itself for sale. The Respondent, upon information and belief, has never been commonly known by the disputed domain name, nor did it do business under the disputed domain name.
c). Registered and used in bad faith
The Complainants refer to Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157) and argue that there is no way that the Respondent may not have been aware of the famous trademarks ZEGNA of Complainants, and registration may only have occurred in bad faith; when it may be presumed that "the Respondent (...) knew of the renown of the Complainant's trademarks". Complainants also refer to Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, 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 fath". Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 is also referred to prove this point.
The Complainants also argued that there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. The Complainants believe that selling a disputed domain name itself is a commercial activity. The Complainants conclude that the disputed domain name is used in bad faith. The Respondent capitalizes on the worldwide fame of ZEGNA to attract users to its website. Complainants do not, nor cannot, control what is or will be offered in future by the Respondent's website. The use of a parking page has been considered by panels repeatedly as a form of passive holding or use in bad faith.
Several warning letters sent by the Complainants to the Respondent were never answered, thus confirming the Respondent's unwillingness to deal fairly with the Zegna Group's trademark rights. In addition, a consultant acting on behalf of the Complainants contacted the Respondent offering to purchase the disputed domain name and was told that "I won't sell this domain name lower than USD5000. If your offer was lower than it and [sic] you don't need to send email to me".
The Respondent replied to the Complainant’s contentions on September 25, 2010 in Chinese.
According to the Respondent, the website of the disputed domain name was sponsored by some music fans of the Pianist Riccardo Zegna. As for the evidence submitted by the Complainants that the website was for sale, the Respondent states that it was due to mistakes when displaying the website.
The Respondent refers to several other domain names containing "Zegna", indicating that "Zegna" is a common Italian family name that shall not enjoy any priority when registering.
The Respondent also states that it was not aware of the emails between the Complainants and the website. The person who emailed to Zegna is not a member of the website and the Respondent has no idea who responded. The Complainants should have emailed to the official email address. This Respondent states that this piece of evidence is not relevant.
C. Reply from the Complainants to Procedural Order No. 1
The Complainants submitted Reply to Procedural Order No. 1 regarding to the arguments in the Response of the Respondent. Complainants contend that:
i) Mr. Riccardo Zegna is indeed an Italian jazz musician and he is a distant relative of the family controlling the Zegna Group and his fan base is not very large. Furthermore, the Respondent's website was not about Mr. Zegna until the Complaint was filed to the Center. The Complainants argue that the Respondent transformed its website to the current one after it learnt about the case.
ii) the Complainants further prove that Zegna is a rare family name in Italy and any company that incorporates "Zegna" either has agreements with the Complainant or are not relevant.
iii) Dr. Daniela Bovolenta of Consitex S.A. did correspond with the Respondent. The Complainants produced a declaration by Ms. Daniela Bovolenta to prove that the correspondence did occur.
iv) "Zegna Group" may refer only to the Complainants. Referring to a search result for "Zegna Group" on Google, the Complainants contend that the term "Zegna Group" could only refer to the Zegna Group of companies which includes the three Complainants.
Thus, the remedy sought is transfer of the domain name to Complainant Consitex S.A.
D. Response from the Respondent to the Complainant's Reply
The Respondent submitted a response to the arguments in the Reply of the Complainants. The Respondent submitted documents arguing "Zegna" is a common family name around the world and many companies registered names incorporated the word "Zegna". The Respondent contends that the Complainants are absurd to claim anyone with family name "Zegna" is related to Zegna Group and arbitrary to restrict any company from incorporating the word "Zegna" in a domain name.
The Respondent's response was not filed pursuant to any rule of order of the Panel. Nevertheless, so that the Respondent may feel justice has been done to its position, the Panel accepts the response.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, in order to succeed in the proceedings and obtain transfer of the disputed domain name, the Complainants must establish that each of the three following elements is 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.
A. Identical or Confusingly Similar
The disputed domain name is a combination of two terms "zegna", which is the registered trademark of the Complainants; and "group". The addition of the word “group” does not in anyway distinguish the domain name and in fact is likely to increase confusion that there is an association between the disputed domain name and the Complainants.
Accordingly, the Panel finds the disputed domain name is confusingly similar to the trademark ZEGNA.
B. Rights or Legitimate Interests
The Complainants did not authorize the Respondent to register the disputed domain name or otherwise to use the ZEGNA trademark.
The Respondent has argued that it is a fan group of Riccardo Zegna. However, it has shown no link to Riccardo Zegna and the website the disputed domain name currently resolves to, does not suggest a strong interest by any members of its "group" in Riccardo Zegna. The page states specifically that the information regarding Riccardo Zegna has been copied from the Internet and there are no discussions of Riccardo Zegna. In any event, it appears the Respondent changed the content of the website, from a parking page to its current content, only after the Respondent learnt about this case. In the Panel’s view, the Respondent’s current use of the disputed domain name as a fan site is a mere pretext.
It is clear to the Panel that the website is not bona fide and therefore the Respondent has not established it has any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Similar considerations in relation to the disputed domain name apply as to those relevant to whether the disputed domain name has been registered and used in bad faith.
The disputed domain name was clearly offered for sale on the website. Leaving aside the correspondence which is disputed, the Respondent has not given any explanation why there was a mistake in offering the domain name for sale.
As found already, the Panel considers the current use is not bona fide and accordingly the Panel has no hesitation in finding that the Respondent registered and used the disputed domain name in question 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 disputed domain name <zegnagroup.com> be transferred to the Complainant Consitex S.A.
Dated: November 22, 2010