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. DLA2003-0005
1. The Parties
The Complainants are Consitex S.A., Stabio, Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A., Trivero, Biella, Italy; and Ermenegildo Zegna Corporation, New York, United States of America, represented by Studio Legale Jacobacci e Associati, Torino, Italy.
The Respondent is Oleg Filipov-Guevreyan, Los Angeles, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GAA International / LA Names Corporation. The country code top-level-domain ".la" has been assigned to the Lao People�s Democratic Republic, although is often used by entities based in the Los Angeles area.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2003. On November 26, 2003, the Center transmitted by email to GAA International / LA Names Corporation a request for registrar verification in connection with the domain name at issue. On December 16, 2003, the Center submitted to GAA International/LA Names Corporation a reminder with respect to the request as of November 26, 2003. On December 16, 2003, GAA International / LA Names Corporation 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 together with the amendment to 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 December 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on January 7, 2004.
The Center appointed Zbyněk Loebl as the sole panelist in this matter on January 20, 2004. 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 has been derived from the Complaint and the supporting evidence and materials submitted by the Complainants.
Zegna Group is an internationally-known group in the field of fashion and the owner of several hundreds of trademarks including the words "Zegna" throughout the world. They cover mostly, but not exclusively, clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewelry, fragrances, and services in the field of fashion fabrics (piece goods).
The Complainants are the owners of the trademark "ZEGNA" and have registered or applied for its registrations in the jurisdictions listed in Annex 1 to the Complaint. Furthermore, the Complainants have enclosed proof of registration or application of the following representative trademarks:
- Italian application (renewal) No. TO99C002257 for "ZEGNA", first registration of which dates back to 1939 (Annex 2 to the Complaint);
- U.S. registration for "ZEGNA" No. 941,547 (Annex 3 to the Complaint);
- International registration for "ZEGNA" No. 176867 (Annex 4 to the Complaint).
The Respondent has previously registered domain names which were identical or confusingly similar to famous Italian trademarks and was either using them to redirect Internet traffic to sex websites or offering them for sale to the owners of the trademarks for high prices. As a result, in several instances, the WIPO Panels ordered the transfer of such domain names. (See Section 5A below for specific citations).
5. Parties� Contentions
A. Complainants
The Complainants contend that the disputed domain name is confusingly similar to, and is in fact identical with, the trademarks owned by the Complainants.
The Complainants contend that they have been the owners of the trademark ZEGNA since before World War II and that ZEGNA is one of Zegna Group�s internationally known trademarks. The Complainants assert that even a cursory search on Altavista or Google would prove that ZEGNA is a famous trademark.
The Complainants contend that the Respondent has no rights or legitimate interests in respect to the domain name, and they invoke the following arguments:
- There is no evidence, before the dispute, of the Respondent�s use of, or demonstrable preparation for the use of, the domain name, or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
- The Respondent, upon information and belief, has never been commonly known by the domain name or conducting business under the domain name; and
- Upon information and belief, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name.
The Complainants assert that the domain name is being used in bad faith. Given the renown and widespread use of the trademark, ZEGNA, it is impossible that the Respondent would not have known of it. The Respondent has been using the domain name for the purpose of redirecting Internet traffic to a pornographic website. Furthermore, as additional evidence of the Respondent�s bad faith, the Complainants point to the fact that the Respondent has registered other domain names, which were confusingly similar to well-known Italian trademarks, for example, , , (information regarding these domain names is attached as Annexes 6,7,8 to the Complaint). Moreover, the Respondent registered a domain name , which was confusingly similar to another trademark owned by the Complainants. The case was submitted to the WIPO Domain Name Dispute Resolution Procedure and the WIPO Panel found that the domain name was registered in bad faith and required its transfer. The circumstances of that case were similar to those of the present case.
B. Respondent
The Respondent did not reply to the Complainants� contentions.
6. Discussion and Findings
The Respondent has been given notice of the proceeding in accordance with the Rules. The Respondent has failed to file any reply to the Complaint and has not sought to answer the Complainants� assertions, evidence or contentions in any manner.
The Respondent�s default does not automatically result in a decision rendered in favor of the Complainants. Since the Respondent has not filed a response and, consequently, has not contested any of the Complainants� contentions, this case shall be decided based on the allegations and documents submitted by the Complainants. In order to have the decision rendered in their favor and obtain the transfer of the domain name, the Complainants must establish that the case satisfied three conditions required by the Policy.
The requisite conditions are as follows:
- The disputed domain name is identical or confusingly similar to a trademark owned by the Complainants;
- The Respondent does not have any rights or legitimate interests in respect to the disputed domain name; and
- The disputed domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the trademark registered and used by the Complainants, ZEGNA. The trademark was registered in many countries, inter alia, in Italy (1939) and in the United States (1943). The Complainants also obtained an international registration (1954).
B. Rights or Legitimate Interests
The Panel concludes that the Respondent does not have rights or legitimate interests in respect to the disputed domain name. The Respondent, in failing to submit a response, also failed to prove the existence of his rights or legitimate interest in the disputed domain name by defeating the following assertions of the Complainants:
- No information was presented to prove that the Respondent has been commonly known by the disputed domain name, either by means of possessing a trademark or otherwise.
- No information was presented to prove that the Respondent is making a legitimate noncommercial use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. It appears from the materials presented in the case, that the Respondent was engaged in selling pornographic videos and "sex tools" through its online sex "boutique", which clearly shows the commercial use of the disputed domain name.
- No information was presented to prove that before any notice to the Respondent of the dispute, the Respondent was using, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. As mentioned above, the Respondent was using the disputed domain name for a sex "boutique". While the operation of adult sex websites is not illegal per se and may qualify for bona fide offerings of goods and services, "the use of somebody else�s trademark as a domain name (or even as a meta-tag) clearly does not constitute "bona fide" offerings of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or mega-tag is to attract customers who were not looking for an adult sex website, but were instead looking for the products associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what the trademark laws are meant to prevent. And actions that create, or tend to create, the violations of the law can hardly be considered "bona fide"." See, Motorola, Inc. v. NewGate Internet, Inc, WIPO Case No. D2000-0079.
The Panel finds that the evidence and materials presented by the Complainants are sufficient to prove the absence of rights or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
The Complainants� trademark is internationally well-known. The Respondent could not have been unaware of its existence. Furthermore, the Respondent is known to have been previously and repeatedly involved in the same type of cybersquatting by registering domain names incorporating or consisting of famous trademarks and either redirecting them to adult sex websites or offering them for sale to the owners of the trademarks at excessive prices. The Respondent was ordered to transfer the domain names he registered in bad faith to the owners of the trademarks by several WIPO Panels. See, Helmut Lang S.a.r.l. v. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0004; Agnona S.p.A. v. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0003; Sparco S.p.A. v. Mr. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0001; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0002. Furthermore, the Respondent was previously engaged in the same type of violative activity with respect to another well-known trademark of the Complainants and was ordered to transfer the domain name. See, Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Oleg Filipov-Guevreyan, WIPO Case No. DLA2003-0002. The circumstances of the latter case are strikingly similar to those of the present case.
Given the selection of domain names registered by the Respondent, it seems fair to conclude that the Respondent had substantial knowledge of famous trademarks on the Italian market. Therefore, the registration of domain names which are confusingly similar to those trademarks serves as additional evidence of "opportunistic bad faith". See, Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., D2000-0163, where the Panel notes that the domain name at dispute in this case "is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith". See also, Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226; and Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, where the Panel takes into consideration the "widespread use and fame of the domain name".
Moreover, the precedent WIPO decisions dealing with cases of pornosquatting stated that the fact of redirecting Internet traffic from the domain name, which is identical to a well-known trademark, to a pornographic website is, per se, evidence of bad faith. See, e.g., Ty, Inc. v. O.Z. Names, WIPO Case No. D2000-0370; Youtv, Inc. v. Alemdar, Nat. Arb. Forum Case No. FA94243.
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 Complainant Consitex S.A.
Zbyněk Loebl
Sole Panelist
Date: February 3, 2004
Full & Egal Universal Law Academy