WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Alexander Albert W. Gore
Case No. D2003-0483
1. The Parties
The Complainants are Consitex S.A., of Switzerland, Lanificio Ermenegildo Zegna & Figli S.p.A., of Switzerland, and Ermenegildo Zegna Corporation, of the United States of America, all represented by Dr. Massimo Introvigne and Dr. Fabrizio Jacobacci, Studio Legale Jacobacci e Associati of Italy.
The Respondent is Alexander Albert W. Gore, of Ukraine.
2. The Domain Name and Registrar
The disputed domain name <zegnaermenegildo.net> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2003. On June 23, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 2, 2003, eNom 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 July 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2003.
The Center appointed Gunnar Karnell as the sole panelist in this matter on August 4, 2003. 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 three companies, in the names of which the Complaint has been submitted to the present proceedings, act jointly as the "Ermenegildo Zegna Group". They will here, together, be referred to by the term the Complainants. However, the claim is aimed at getting the domain name at issue transferred to the Complainant Consitex S. A.
The Complainants found their Complaint in particular on the trademark ERMENEGILDO ZEGNA as registered initially in 1952, in Italy (Nos. TO2002C000651 and TO2002C000557, both applications for renewals by Lanificio Ermenegildo Zegna & Figli S.p.A and Consitex S. A.), and later in the U. S. A. (No 1,033,943, 1976-02-17 by Lanificio Ermenegildo Zegna & Figli S.p.A.) as well as world wide internationally, inter alia by registrations extended to cover Ukraine, the location of the Respondent.
The domain name was registered on May 7, 2003.
5. Parties’ Contentions
The Ermenegildo Zegna Group is internationally well known in the field of fashion, owning hundreds of trademarks including the words ERMENEGILDO ZEGNA all over the world.
The domain name <zegnaermenegildo.net> is confusingly similar to the trademark ERMENEGILDO ZEGNA. In Italian as well as in other languages the last name is put before the first name and ERMENEGILDOZEGNA and ZEGNAERMENEGILDO should be regarded as functionally identical.
The Respondent, who has registered other domain names that correspond to internationally well known Italian trade marks, must have been aware of the Complainants’ well known trademark and registered the domain name in "opportunistic bad faith".
The respondent has no rights or legitimate interests in respect of the domain name, not having used it or any corresponding name in connection with a bona fide offering of goods or services and never having been commonly known by the domain name nor for doing business using the name. The Respondent does not make any legitimate non-commercial or fair use of it.
Instead, it is used in bad faith. The default page of <zegnaermenegildo.net> resolves in a pornographic portal in Italian, selling various services connected with pornography. This is evidence of bad faith by "pornosquatting", i. e. taking advantage of a well known trade mark and/or trade name to attract Internet users to a pornographic, commercial web site. In answer to a letter from the Complainants’ attorney, not containing any offer to buy the domain name but calling attention to the Complainants’ intellectual property rights in the domain name at issue as well as in another one, the Respondent answered that "If you are unhappy with the current content [of the site], it can be changed. But you should buy the domain names: $25.000 for one of them, $40.000 (a bargain, considering the real value) if you buy both at the same time." Even if the Respondent did not actively make contact to sell the domain name at issue, he evidently registered it for selling.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
For reasons given by the Complainants the Panel finds that the domain name <zegnaermenegildo.net> is confusingly similar to the trade mark ERMENEGILDO ZEGNA. The confusion created by the similarity is exacerbated by the use of the domain name for a portal in Italian language.
B. Rights or Legitimate Interests
The Respondent has not used the opportunity rendered to give indications about any rights or legitimate interests in the domain name. The Panel finds that information provided by the Complainants about the Respondent and his activities conclusively shows that there have been no such rights or legitimate interests, nor do they presently exist.
C. Registered and Used in Bad Faith
The Respondent has registered a number of domain names which mirror internationally well known trade marks to which he cannot possibly have acquired any rights. The Panel is convinced that the Respondent, when registering the domain name at issue in these proceedings, was well aware of the Complainants’ trade mark ERMENEGILDO ZEGNA and intentionally turned its parts around, binding them together for the domain name, knowing that the use of the contorted mark would, for his pornographic site, create confusion among visitors to the site and tarnish the reputation of the mark. The registration under such circumstances and the ensuing use of the domain name in its pornographic context is evidence of bad faith. Also the offer to sell the name under such circumstances as mentioned by the Complainants is an act of use in bad faith of a kind that may here be presumed to have been contemplated by the Respondent already when he had the name registered.
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, <zegnaermenegildo.net> be transferred to the Complainant Consitex S. A..
Dated: August 13, 2003