The Complainant is 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 (“US”), represented by Jacobacci & Associati, Italy.
The Respondent is Zhang Xuemei of the US. 2. The Domain Name and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2013. On November 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 16, 2013 and November 19, 2013, 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.
On November 20, 2013, the Center transmitted an email to the Complainant, requesting the Complainant to correct a spelling mistake as to the Respondent’s address. The Complainant transmitted by email to the Center its Amended Complaint on the same day.
According to the confirmation from the Registrar, the disputed domain names were set to expire on December 31, 2013. The Center transmitted an email to the parties reminding the expiry issue of the disputed domain names. According to the public WhoIs information dated December 12, 2013, the current expiration date of the disputed domain names is December 31, 2014.
The Center verified that the Complaint together with the Amended 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 Amended Complaint, and the proceedings commenced on November 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 30, 2013. 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 A. Complainant
The Complainant (the Zegna group of companies) comprises three companies incorporated in Switzerland, Italy and the US.
The Complainant is the owner of numerous registrations worldwide for the trademarks ERMENEGILDO ZEGNA and EZ (the “Trade Marks”).
The Trade Marks are well-known trademarks in the fashion field. B. Respondent
The Respondent is apparently an individual based in the US. C. The Disputed Domain Names
The disputed domain names were registered on December 31, 2012. D. The Websites at the Disputed Domain Names
The websites at the disputed domain names (the “Websites”) appear to promote and offer for sale leather belts and wallets under the Trade Marks of the Complainant. They also appear to offer for sale products of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is one of the world’s leading fashion groups. The Trade Marks are well-known trademarks used by the Complainant worldwide. The Trade Marks were first used before World War II.
The disputed domain names are confusingly similar to the Trade Marks. They incorporate the Trade Marks in their entirety, together with the non-distinctive words “2013” and “tw”, which corresponds with Taiwan Province of China, where the Complainant operates and its Trade Marks are well-known.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent is not commonly known by the disputed domain names and is not making a bona fide commercial use of the disputed domain names.
The disputed domain names have been registered and used in bad faith.
The Respondent has used the disputed domain names in respect of the Websites which offer for sale leather belts and wallets under the Trade Marks, which have been examined by the Complainant and confirmed to be counterfeits. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the date of registration of the disputed domain names by many decades.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain name comprises the Complainant’s ERMENEGILDO ZEGNA trade mark in its entirety together with the year “2013”, separated by hyphens.
The disputed domain name comprises the Complainant’s EZ trade mark in its entirety together with the year “2013” and the letters “tw” (the commonly-used acronym for Taiwan Province of China), separated by a hyphen.
The use of hyphens, the year “2013” and the letters “tw” does not serve to distinguish the disputed domain names from the Trade Marks in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Marks and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain names even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain name by many decades. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the Complainant has filed compelling evidence to show that the disputed domain names have been used in respect of the online sale of counterfeit Ermenegildo Zegna leather wallets and belts. The Panel further notes that the Websites appear to offer for sale products of the Complainant’s competitors.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Complainant asserts that the Respondent has registered and used the disputed domain names in respect of Websites offering for sale counterfeit leather wallets and belts. The Complainant claims to have examined such goods in order to determine they are not genuine Ermenegildo Zegna goods, although it should be noted the Complainant has not filed any evidence with respect to such examination. The Respondent has not filed any Response and, in all the circumstances, the Panel determines it is reasonable to conclude that the goods offered for sale on the Websites are likely counterfeit. Even if they are not counterfeit, in all the circumstances, and given in particular the repute of the Trade Marks, the Panel concludes the unauthorised offer for sale on the Websites of goods under the Trade Marks, absent any disclaimer as to the Respondent’s relationship with the Complainant, amounts to clear evidence of bad faith. Moreover, as previously noted the Websites also appear to offer for sale products of the Complainant’s competitors.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith registration and use has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to the Complainant Consitex S.A.
Sebastian M.W. Hughes
Sole Panelist
Dated: January 13, 2014
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