WIPO Domain Name Decision: D2007-0280

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A. and Ermenegildo Zegna Corporation v. Wang Guoxiang

Case No. D2007-0280

1. The Parties

Complainants are three companies under the Zegna group of companies: Consitex S.A., a Swiss company with its registered office in Stabio, Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company with its registered office in Biella, Italy; and Ermenegildo Zegna Corporation, a United States of America corporation with its registered office in New York, New York, United States of America. The authorized representative is Jacobacci & Associati, Torino, Italy,

The Respondent is Mr. Wang Guoxiang of Hangzhou City, China.

2. The Domain Name and Registrar

The disputed domain name <zegna.mobi> is registered with Beijing Innovative Linkage Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2007. On February 27, 2007, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd a request for registrar verification in connection with the domain name at issue. On February 28, 2007, Beijing Innovative Linkage Technology Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant contact details. 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 March 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2007.

The Center appointed Linda Chang as the sole panelist in this matter on April 23, 2007. 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.

Language of Proceeding

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, with regard to the circumstances of the case.

In the present case, the registration agreement for the disputed domain name was made in the Chinese language. However, it is the Panel’s understanding that the Respondent should have the capability of understanding the English language if he is interested in a domain name such as <zegna.mobi>. This understanding is supported by the information on the webpage of “www.zegna.mobi”. Under the column of “Contact us”, the contact details are clearly displayed in both the Chinese and English languages. This fact suggests that the owner of the domain name/website is clearly inviting English communications.

On the other hand, the Complainants are not able to communicate in Chinese and therefore, if the Complainants were required to submit all documents in Chinese, the administrative proceeding would be unduly delayed and the Complainants would have to incur substantial expenses for translation. Therefore, the Panel decides that English shall be the language of the administrative proceeding.

4. Factual Background

The Complainants are three companies in the Zegna group of companies: Consitex S.A., a Swiss company; Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company; and Ermenegildo Zegna Corporation, a United States of America corporation. The Complainants are internationally operating in the field of fashion. They own the trademark registration of ZEGNA throughout the world. The registrations cover clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewellery, fragrances as well as services in the field of fashion fabrics. It is particularly worth mentioning that the ZEGNA trademark has been registered in Italy (No.882107), with an application date as early as 1939; in China (No. 969347) in 1997; and in the United States of America (No.941547) in 1971.

The Respondent registered the domain name at issue in September 2006. Although the Complainants made an effort to approach the Respondent for a transfer of the domain name, they received no feedback, which eventually led to a deadlock of the transfer.

5. Parties’ Contentions

A. Complainants

Identical or Confusingly Similar

The Complainants contend that the domain name at issue <zegna.mobi> is confusingly similar to the trademark ZEGNA owned by Complainants. The Complainants also contend it is beyond doubt that ZEGNA is a world famous trademark. The Complainants offer that a cursory Altavista or Google search would easily confirm the fact. A portfolio of international press on the fame of ZEGNA is enclosed with the Complaint (Annex 6).

Rights or Legitimate Interests

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the domain name based on the following facts and deductions:

- there is no evidence, before the dispute, of the Respondent’s use of, or demonstrable preparation to use, the domain name at issue in connection with a bona fide offering of goods or services. Respondent used the domain name <zegna.mobi> merely by offering searches and advertising himself and certain of his activities. As of February 9, 2007, the use of the domain name <zegna.mobi > did not appear to comply with the specific requirements required for maintaining a <.mobi> domain name;

- Respondent, upon information and belief, has never been commonly known by the domain name, nor did he do any legitimate business under the domain name;

- there is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain name.

Registered and Used in Bad Faith

The Complainants further contend that the Respondent capitalizes on the worldwide fame of ZEGNA to attract Internet users to its own website who are looking for information about the Complainants. The Complainants contend that although the Respondent maintains a website, judging from the contents of the website, the Respondent’s act is similar to “passive holding” of a domain name, which is recognized as bad faith registration and use in countless previous WIPO UDRP decisions.

The Complainants also contend that several letters and mails sent both by Complainants and by their lawyers in China to the Respondent did not lead to a settlement. The Complainants contend they have good reasons to assume that the Respondent is not willing to deal fairly with the Complainants.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has 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

It is obvious that the essential part of the domain name at issue is identical with the trademark ZEGNA to which the Complainants have trademark rights in many parts of the world – in particular in the countries of Italy, China and the United States of America. As <.mobi> is the generic indicator of the gTLD, the mere addition of this symbol does not create any elements for the domain name to be distinctive from the trademark. Therefore, the domain name at issue is identical or confusingly similar to the trademark held by the Complainants.

The Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The information on record does not indicate the Respondent is known by the subject domain name nor is authorized to use the Complainant’s mark. Although the Respondent default does not mean it will automatically lose the case, the information provided to the Panel does not lead to any of the situations as provided under paragraph 4(c) of the Policy that would indicate the Respondent’s possession of legitimate rights or interests in the domain name at issue.

The Panel is therefore satisfied that the Complainants have met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel noted the following information in reviewing this present case:

- The Respondent is maintaining a website under the domain name “www.zegna.mobi”, but it is almost an empty site except for i) the contact details of the owner of the domain name or/and the website in English and Chinese languages, and ii) an offer for sale notice under the column of “News” of the site although no specific price is quoted;

- Considerable amount of materials on record indicate ZEGNA as a trademark possesses a high reputation in the field of fashion industry worldwide.

Whether passive holding of a domain name constitutes bad faith registration and use may depend on the reputation of the trademark to which the domain name at issue is confusingly similar to or identical. In case the trademark is well known, it is the consensus view amongst the WIPO panelists that bad faith is deemed to be found. In the present case, as stated above, the website under the domain name at issue is almost empty except for the contact details and an offer for sale notice of the domain name at issue. Taking into account the reputation and the inventive characters of the trade mark ZEGNA, the Panel is led to an inference that the choice of word of the domain name at issue was not by accident. The Respondent knew or should have known ZEGNA as a trademark when he registered the domain name at issue.

The Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <zegna.mobi> be transferred to the Complainants.

Linda Chang
Sole Panelist

Dated: May 9, 2007