WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A. , Lanificio Ermenegildo Zegna & Figli S.p.A. and Ermenegildo Zegna Corporation v. John Lee
Case No. D2010-1467
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, United States of America, represented by Studio Legale Jacobacci, Sterpi, Francetti, Regoli, de Haas & Associati, Italy.
The Respondent is John Lee of Guangdong, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <zegnabelts.com> is registered with GoDaddy.com, Inc.
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 GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain name. On the same date, 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.
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 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2010. Due to technical issues with an attachment to the email notification, which was addressed on September 8, 2010, the Center extended the deadline to September 28, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default 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.
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 (“U.S.”). 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), U.S.A (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) are provided.
The Respondent registered the disputed domain name on April 28, 2010.
5. Parties’ Contentions
The Complainants claim that they are the owner of the trademark 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 was also enclosed to prove such statement.
The Complainants state that one of the products of the Zegna Group are belts for men, claim the disputed domain name <zegnabelts.com> is confusingly similar with the ZEGNA trademarks owned by the Complainants. The association between "zegna" and "belts" would easily evoke the name, fame and business of the Complainants.
According to the Complainants, there is no way that the Respondent may not have been aware of the famous trademarks ZEGNA of the Complainants at the time of the registration of the disputed domain name, and registration may only have occurred in bad faith.
The Complainants refer to Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman, WIPO Case No. D2000-1375, regarding <zegnasuit.com>, in which the panel commented that "comparing the domain name <zegnasuit.com> 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. On the contrary, given the fact that ZEGNA is primarily used to cover clothing items, the addition of SUIT elicits a direct reference to the ZEGNA activities and trademark both under a strict likelihood of confusion, but also under a likelihood of association…". The Complainants believe that any court in the world would not deny that a trademark ZEGNA BELTS is confusingly similar with ZEGNA, a trademark well-known inter alia for belts.
The Complainants refer to Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in which 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, and conclude that there is no way that the Respondent would not have been aware of the famous brand ZEGNA of the Complainants at the time of the registration of the disputed domain name. The Complainants cite a number of other UDRP cases referring to the abovementioned point, believing that the Respondent's registration may only have occurred in bad faith.
The Complainants further state that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as there is no evidence, before the dispute, of the Respondent’s use of, or demonstrable preparation to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Respondent does use the disputed domain name in connection with a webpage selling belts with various well-known trademarks and upon visit on August 22, 2010 four ZEGNA belts offered for sale were counterfeits. The Respondent has never been commonly known by the domain name, nor did it do business under the domain name and there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name. The sale of infringing products is in itself 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 which are then offered products either by other manufacturers or infringing the trademark rights of the Complainants. The latter do not, nor cannot, control what is offered by the Respondent's website.
According to the Complainants, several warning messages 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.
The remedy sought is the transfer of the disputed domain name to the Complainant Consitex S.A.
The Respondent did not reply to the Complainant’s contentions.
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.. that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has right; and
ii.. that the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is composed of two parts: “zegna” which is a term that has no meaning in Italy Switzerland, or the U.S.A, where the Complainants are located, nor in China, where the Respondent lives; and “belts” which is a term indicating a kind of clothing accessories. Comparing the disputed domain name <zegnabelts.com> to the registered trademark ZEGNA, "belts" would fail to make it distinctive from ZEGNA. On the contrary, given the fact that ZEGNA is a well-known trademark in the fashion field that produces belts, the addition of “belts” indicates a direct associate between these two, and may lead Internet users to think that the website at the disputed domain name <zegnabelts.com> is somehow related to the Complainants.
Accordingly, the Panel concludes that disputed domain name is confusingly similar to the Complainants’ trademarks and holds that the Complainants have satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainants contend that the Respondent has no right or legitimate interests in the disputed domain name. In regard to this issue, given that the Respondent has not responded, and in accordance with paragraphs 5(e) and 15 of the Rules, the Panel shall decide the dispute based upon the Complaint.
i) The Complainants have rights in the trademark ZEGNA. The Complainants are the holder of multiple trademark registrations for ZEGNA worldwide, based on the December 29, 1939 registration, which is the earliest date of the Complainant's registration of the trademark ZEGNA. The Panel determines that Complainants has right in the trademark ZEGNA.
ii) The Respondent does not have the rights or legitimate interests in respect of the disputed domain name.
There is no evidence on the record that would indicate the Respondent has any rights or legitimate interests in respect of the disputed domain name e.g., as under paragraph 4(c) of the Policy, except for the mere fact that the Respondent has registered this domain name and has used it in a manner hereafter determined to be in bad faith (selling counterfeit belts with trademark ZEGNA).
Hence, the Panel has sufficient reasons to find that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons:
i) the Respondent was fully aware the fame of ZEGNA trademark when registering the disputed domain name. The Complainants are well-known in the fashion field and the earliest registration of trademark ZEGNA is as early as 1937, much prior to the registration date of the Respondent, which is April 28, 2010. Judging from the goods the Respondent provides on-line for sale, the Respondent is fully aware the existence of ZEGNA as a fashion brand.
ii) further from the case record, it appears that the Respondent is using the disputed domain name to sell counterfeit belts which include the counterfeits of the Complainants' products.
Therefore, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith, e.g.,under paragraph 4(b)(iv) of the Policy.
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 <zegnabelts.com> be transferred to the Complainant Consitex S.A.
Dated: November 1, 2010