WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Kentech, Inc.
Case No. D2006-0734
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. The Complainants are represented by Studio Legale Jacobacci e Associati of Torino, Italy.
The Respondent is Kentech, Inc. of Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name is registered with Domain Contender, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2006. On June 14, 2006, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain name at issue. On June 19, 2006, Domain Contender, LLC 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 June 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July�10,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2006.
The Center appointed Anthony R. Connerty as panelist in this matter on July 24, 2006. 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 registered in Switzerland, Italy, and the United States of America. Together they constitute the Zegna Group of companies. The Zegna Group is the owner of several hundred trademarks worldwide.
Annex 1 to the Complaint lists trademark registrations in over 100 countries around the world. Annexes 2, 3, 4 and 5 to the Complaint contain copies of representative trademarks: an Italian registration “Zegna” No. 882107 (whose first application dates back to December�1939); a Kenyan registration “ ERMINGILDO ZEGNA” No. 40266 (renewed for a further period of 14 years from December 16, 1999); an international registration “Zegna” No. 941547 (December 13, 2000); and a U.S. registration “Zegna”(registered August 22, 1972).
The Respondent registered the domain name on February 7, 2006.
5. Parties’ Contentions
A. Complainants
The Complaint, and a portfolio of international press cuttings submitted as an Annex to the Complaint, shows the history of the Zegna Group and its various activities worldwide.
Ermenegildo Zegna founded the firm in 1910 in Trivero in the Biellese mountains in Italy. He turned the town into a kind of “Sun City”: the Zegna hospital, the Zegna swimming pool, the Zegna School, and the Zegna Oasis - 28 nature trails in the Trivero hills (in 2004 the Zegna Oasis won the main award in a scheme designed to encourage companies which make contributions to cultural projects).
Ermingildo’s sons Angelo and Aldo took over the textile company in the 1960s and diversified its activities to include ready-made garments. These were followed by knitwear, accessories and sportswear. By 2004, the Zegna family revenue exceeded 600 million euros, was employing 5,000 people on four continents, and had nearly 400 boutiques worldwide. The Group opened branches in Austria, France, Germany, Britain, Spain, Turkey, Mexico, the United States, Japan, SARS of China, Republic of Korea, Singapore, Taiwan and Australia. The fashion house Group was amongst the first to arrive in Beijing, and by 2004 had over 50 shops in China. The managing directors of the Group are the fourth generation of the family.
As mentioned earlier, the Group has trademarks registered in over 100 countries around the world. These cover mostly, but not exclusively, clothing, shoes, fabrics, fashion accessories, belts, watches, jewellery, fragrances, and services in the field of fashion fabrics.
The request in the Complaint filed with the Center is for the transfer to the Complainant Consitex S.A. of the disputed domain name .
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate: paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4 (a)(ii). The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii), paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The Complaint contends that the domain name is confusingly similar to the trademarks “Zegna” owned by the Complainants. The Complaint adds that the main products of the Zegna Group is suits for men. The association between Zegna and suits “cannot fail to evoke the name, fame, and business” of the Complainants.
The disputed domain name incorporates in its entirety the Complainant’s Zegna trademark. That factor alone would be sufficient to satisfy the “confusingly similar” requirement. See The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137: “numerous WIPO panels have found that a domain name that wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy”.
The addition of the word “suits” does not assist the Respondent. If anything, the additional word strengthens the case against the Respondent since that word describes the main product of the business of the Complainants operated under the “Zegna” trademark - and therefore the likelihood of confusion on the part of Internet users is increased. See for example the decision in ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No.�D2002-0517.
Further, the incorporation of “.org” does not help the Respondent. It has long been held by WIPO panels that the addition of “.com” is non-distinctive because it is a gTLD required for registration of a domain name. See for example, Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No.�D2000-0127: “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants.” The same principle must apply to the incorporation of “.org”.
The Panel is satisfied that the Complainants have proved the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As mentioned earlier, paragraph 4(c) of the Policy sets out a number of circumstances, without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) before any notice to the respondent of the dispute, use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) where the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) where the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As to sub-paragraph(i), it is the belief of the Complainants that the Respondent has no rights or legitimate interests in respect of the domain name. There is no evidence that, before the dispute, the Respondent used the domain name in connection with a bona fide offering of goods or services: “Respondent does use the domain name in connection with a Web search page linking to a number of services and products (some of them offered by direct competitors of Complainant). The search result seems to operate under the principle of the ‘sponsored search’, i.e. those who pay more show up in the top positions in the search results.”
As to sub-paragraph (ii), the Complainants contends that, as far as they are aware, the Respondent has never been commonly known by the domain name.
Finally, as to sub-paragraph (iii), the Complainants contends that there is no evidence that the Respondent is making a legitimate non-commercial or fair use of the domain name. Quite the reverse, as shown by the sponsored search system.
The Panel is satisfied that the Complainants have proved the requirements of paragraph 4(a)(ii) of the Policy, and the Panel notes the failure of the Respondent to put in a response to the Complainants’ evidence and submissions.
C. Registered and Used in Bad Faith
The Complainants, for the purposes of paragraph 4(a)(iii), must show that the Respondent both registered and is using the disputed domain name in bad faith.
As mentioned earlier, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
Of relevance on the facts of this case are the circumstances set out in paragraph 4(b)(iv), namely, that the Respondent, by using the domain name, has “intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complaint makes the following points:
(1) the Respondent must have been aware of the Zegna trademarks when it registered the disputed domain name (as mentioned earlier, one of the Zegna Groups trademarks is registered in Kenya);
(2) the Zegna trademark was the subject of an earlier WIPO case in 2006. The Respondent in that case was Spiral Matrix. The disputed domain name was . The Complaint states that “ Spiral Matrix, the Respondent in that case, is a Kenyan company whose address and phone number are the same as Kentech’s, the Respondent in the present case.”
In that case, Consitex S.A., Lanificio ErmenegildoZegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Spiral Matrix, WIPO Case No. D 2006-0169, the sole panelist stated that “it is inconceivable that the Respondent could not have been aware of the ZEGNA brand at the time the domain name was registered given the world-wide reputation which the brand had acquired and the number of registered trademarks owned by the Complainants, which predate the registration of the domain name. The fact that the Respondent chose to link the words “Zegna” and “suits” is of itself a compelling indication that the Respondents were only too well aware of ZEGNA.”
The Panel ordered the transfer to the Complainants of the domain name .
(3) “the fact that the domain name was registered in bad faith is strongly confirmed by the fact that Kentech has long been in the business of cybersquatting and registering domain names identical to famous international trademarks, and panels have consistently decided against Kentech in several cases”. The Complaint then lists a number of WIPO cases in which Kentech was a respondent:
WIPO Case No. D 2005-0890
WIPO Case No. D 2005-1196
WIPO Case No. D 2006-0227
WIPO Case No. D 2006-0292
WIPO Case No. D 2006-0345
(4) As stated earlier, Respondent uses the domain name in connection with a Web search page linked to a number of services and products (some of which are offered by direct competitors of the Complainants). The search result evidently operates under the principle of the ‘sponsored search’, that is, those who pay more show up in the top positions in the search results. The Respondent is therefore using the disputed domain name in bad faith: it “capitalises on the worldwide fame of Zegna to attract users which are then redirected through its search page to a number of different websites, none of them associated with the Zegna Group, and some in direct competition to it.”
(5) several warning letters sent both by the Complainants and by their lawyers in Kenya to the Respondent had never been answered.
The Respondent had an opportunity under the Policy and under the Rules to put in a Response. It has chosen not to do so.
In the circumstances, and on the basis of the matters stated above, the Panel finds that the disputed domain name was both registered and is using in bad faith.
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 be transferred to the Complainants.
Anthony R. Connerty
Sole Panelist
Dated: August 6, 2006
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