WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Oleg Filipov-Guevreyan
Case No. DLA2003-0002
1. The Parties
The Complainants are (1) Consitex S.A., Stabio, Switzerland; (2) Lanificio Ermenegildo Zegna & Figli S.p.A., Biella, Italy; and (3) Ermenegildo Zegna Corporation, New York, United States of America, hereinafter collectively "the Ermenegildo Zegna Group" or "Complainants" represented by Dr. Massimo Introvigne and Dr. Fabrizio Jacobacci, Torino, Italy.
The Respondent is Oleg Filipov-Guevreyan, Los Angeles, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GAA International, c/o Dreamhost, of Huntington Park (CA), United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2003. On August 14, 2003, the Center transmitted by e-mail to GAA International a request for registrar verification in connection with the domain name at issue. On August 20, 2003, GAA International transmitted by e-mail 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 August 21, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on September 17, 2003.
The Center appointed Madeleine de Cock Buning as the sole panelist in this matter on September 25, 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 following information is derived from the Complaint and supporting evidence submitted by the Complainants.
Complainants are an internationally well-known group in the field of fashion and trades inter alia in clothing, shoes, tissues, fabrics, fashion accessories, belts, watches, jewellery, fragrances, services in the field of fashion fabrics.
Complainants are the owners of numerous of trademark registrations consisting of or incorporating the words ERMENEGILDO ZEGNA. Complainants have attached an overview of all these trademarks in Annex 1 to the Complaint and provided copies of certificates and printouts from trademark databases of three representative trademarks:
- Italian (renewal) application for ERMENEGILDO ZEGNA Nos. TO2002C000651 and T02002C000557, respectively in the name of Lanificio Ermenegildo Zegna & Figli S.p.A. and Consitex S.A., first application 1952;
- U.S. registration for ERMENEGILDO ZEGNA No. 1,033,943 of February 17, 1976, in the name of Lanificio Ermenegildo Zegna & Figli S.p.A.; and
- International registration for ERMENEGILDO ZEGNA No. 410571 of September 13, 1994, in the name of Lanificio Eremengildo Zegna & Figli S.p.A.
The Respondent registered the domain name on June 18, 2003. Internet users visiting the web site connected to this domain name are redirected to a pornographic portal with the title tag "Ermenegildo Zegna Los Angeles Girls". Upon payment pornographic material can be viewed on this web site.
5. Parties� Contentions
A. Complainants
Complainants contend that they are the owners of the trademarks ERMENEGILDO ZEGNA since before World War II, and that the ERMENEGILDO ZEGNA marks are world famous trademarks.
Complainants� request for relief is based on the following arguments:
i) Complainants claim that Respondent�s domain name is confusingly similar to the trademarks ERMENEGILDO ZEGNA owned by Complainants.
ii) Complainants claim that Respondent has no rights or legitimate interests in respect of the domain name for the following reasons:
- there is no evidence of the Respondent�s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
- upon information and belief of Complainants, Respondent has never been commonly known by the domain name, nor did he do business under the domain name;
- there is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain name; and
- Complainants never authorised Respondent�s activities. Complainants have no control over what Respondent includes on its web site.
iii) Complainants claim that the domain name has been registered and is being used in bad faith essentially because:
- Respondent must have been aware that the famous trademarks ERMENEGILDO ZEGNA belong to Complainants, and that therefore, registration may only have occurred in bad faith;
- Respondent is a "pornosquatter" trying to take advantage of well-known trademarks and/or trade names to attract Internet users to a commercial pornographic web site;
- Respondent also registered several other domain names identical to or confusingly similar with well-known trademarks, such as , , and ; and
- when Respondent was asked whether the domain name was for sale, the Respondent answered: "I can tell you they (the domain names) make a lot of money. I really like the business, would sell only for USD 15.000,= each.".
B. Respondent
The Respondent did not reply to the Complainants� contentions.
6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
However, as previously indicated, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainants' assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision.
The Respondent's default does not automatically result in a decision in favour of the Complainants. The Complainants must still prove the elements required by the Policy paragraph 4(a). In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainants must prove that each of the three following elements are satisfied:
1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights (see below, section 6.A);
2) The Respondent has no rights or legitimate interests in respect of the domain name (below, section 6.B); and
3) The domain name has been registered and is being used in bad faith (see below, section 6.C).
Pursuant to Paragraph 15 (a) of the Rules, the Panel shall 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 applicable. Moreover, in accordance with Paragraph 14 (b) of the Rules, the Panel may draw such inference as it considers appropriate from the Respondent's failure to reply to the Complainants' assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel's decision is based upon the Complainants' assertions and evidence and inference drawn from the Respondent's failure to reply.
A. Identical or Confusingly Similarity of Respondent�s Domain Name and Complainants' Trademark
Complainants have provided substantive evidence of their rights to the ERMENEGILDO ZEGNA trademarks. These well-known trademarks have been registered in Italy since 1952, in the US since 1976, and an international registration has been registered in 1994. The Panel observes that the Complainants� rights in the trademarks arose prior to the Respondent�s registration of the disputed domain name on June 18, 2003.
The domain name is identical to Complainants' trademarks, except that the suffix ".la" is added. When comparing the disputed domain name and the trademarks, the addition of the ".la" suffix is irrelevant for determining whether the domain name is identical or confusingly similar to the trademarks. Rather, one looks at the second-level domain for such a determination, since the ".la" suffix is merely descriptive of the registry services.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the trademarks ERMENEGILDO ZEGNA.
B. Rights or Legitimate Interests
Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainants' assertions, it is upon the Panel to consider whether the Respondent's use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to the Policy paragraph 4 (c), the following circumstances, if proven, demonstrate a registrant's rights or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the registrant (as an individual, business, or other organisation) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainants' marks.
To satisfy the requirements of Policy paragraph 4(c) (i), the Respondent's use of the disputed domain name must be in connection with a "bona fide" offering of goods or services. In the circumstances of this case the Respondent's use of the disputed domain name is not "bona fide" within the meaning of the Policy paragraph 4 (c) (i) since there is no apparent legitimate justification for the Respondent's registration and use for a pornographic web site of the domain name that is confusingly similar to the Complainants' trademarks. Complainants have not licensed or otherwise permitted Respondent to use their trademarks.
In addition, the Panel draws an adverse inference from the Respondent's failure to provide any explanation or rationale for its use of the disputed domain name for its web sites.
Policy paragraph 4(c) (iii) is not applicable. The Respondent is using the domain name for commercial web pages with pornographic material that can be viewed upon payment.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, thus Complainants have established the second element.
C. Registered and Used in Bad Faith
Policy paragraph 4(a) (iii) requires the Complainants to prove that the Respondent registered and has used the disputed domain name in bad faith. The language of Policy paragraph 4(a) (iii) requires that both bad faith registration and bad faith use be proved.
Policy paragraph 4(b) provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainants who are the owners of the trademarks or service marks or to a competitor of the complainants, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owners of the trademarks or service marks from reflecting the marks in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation or endorsement of its web site or location or of a product or service on its web site or location.
The Complainants inter alia rely on the Policy paragraph 4(b)(iv), which requires a Complainant to establish that the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to its web sites for commercial gain.
The Panel finds that the Respondent registered and is using the disputed domain name in order to confuse and divert Internet traffic to its web site, based upon the following circumstances:
1) there is no apparent connection or relationship between the disputed domain name and the Respondent or its web site or its content;
2) Respondent has not denied any knowledge of the Complainants or its trademarks;
3) Respondent apparently knew of the Complainants' trademarks since he chose to register and use the domain name that is so obviously connected to the well-known trademarks of Complainants for his pornographic web site; and
4) there is no other apparent legitimate justification for the Respondent's registration and use of the disputed domain name for its web site. In fact it appears that the main reason to register and use the disputed domain name for a commercial pornographic web site is to intentionally attempt to attract customers who are looking for the products or services associated with the Complainants' trademarks. This use of the trademarks can not only create a likelihood of confusion with the Complainants' marks as to the source, sponsor ship, affiliation or endorsement of its web site, but also creates dilution of the marks. (Motorola, Inc. vs NewGate Internet, Inc. (WIPO Case D2000-0079)).
In addition, the Panel draws an adverse inference from the Respondent's failure to provide any explanation or rationale for its use of the disputed domain name for its web site.
The Complainants also rely upon other circumstances (i.a., Policy paragraph 4(a) (i)) for contending that the Respondent has registered and is using the disputed domain name in bad faith. Given the Panel's determination based upon Policy paragraph 4 (a) (iv), it is not necessary for the Panel to determine whether these additional grounds are a basis for a finding of bad faith domain name registration and use.
The Panel therefore concludes that there is sufficient evidence that Respondent's registration and use of the domain name is 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 Complainant Consitex S.A.
Madeleine de Cock Buning
Sole Panelist
Date: October 9, 2003
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