WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming
Case No. DWS2003-0001
1. The Parties
The Complainants are three companies constituting the Ermenegildo Zegna group of companies: Consitex S.A., with registered office at Stabio, Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A., with registered office at Trivero, Biella, Italy; and Ermenegildo Zegna Corporation, with registered office at New York, NY United States of America (hereinafter collectively: "Complainants"). All represented by Dr. Massimo Introvigne and Dr. Fabrizio Jacobacci of Jacobacci & Associati, Torino, Italy.
The Respondent is Mr. Lian Ming, Torino, Italy.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2003. On May 28, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 29, 2003, eNom 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 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on July 4, 2003.
The Center appointed Isabelle Leroux as the sole panelist in this matter on July 14, 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 Ermenegildo Zegna Group is an internationally well-known group in the field of fashion.
The Complainants throughout the world have filed several hundreds of trademarks including the word ZEGNA.
These registrations include national registrations, for example Italy (since 1939) where the Respondent is located, and international registrations, the earliest dated from 1954.
The Respondent registered on March 25, 2003, the domain name .
5. Parties� Contentions
A. Complainants
The complainants contends that:
The domain name is confusingly similar with the famous trademark "ZEGNA".
Because of the "ZEGNA" trademark�s well-known character, the Respondent could not have ignored the trademark "ZEGNA", and the domain name registration may only have occurred in bad faith. (see: Veuve Cliquot Ponsardin v. The Polygenix Group Ltd, WIPO case No. D2000-0163)
Moreover, the Respondent is located in Italy, so he cannot conceivably ignore Complainants� trademarks.
It is also interesting to notice that the Respondent has registered several other domain names identical or similar with well-known trademarks.
There is no evidence of the Respondent use or demonstrable preparation to use of the litigious domain name and the Respondent has never been commonly known by the domain name and there is no evidence that Respondent making a legitimate non-commercial or fair use of the domain name.
Finally on April 8, 2003, an employee of the Complainants asked the Respondent whether he would be interested in selling the domain name and the Respondent proposed the sum of 30,000 �. This fact can be considered as an evidence of bad faith.
Consequently, the domain name is used in bad faith and this unauthorized use diverts traffic.
B. Respondent
The Respondent did not reply to the Complainants� contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
"A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable."
Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) that the domain names registered by the Respondent are identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and used in bad faith.
A. Identical or Confusingly Similar
The prior trademarks of the Complainants "ZEGNA" are identical to the domain name . The addition of the ccTLD ".ws" would not affect the attractive power of the word Zegna. Indeed, it do not confer to the whole a new meaning involving the absence of risk of confusion with the trademarks "ZEGNA."
The registration of the domain name at issue could be considered as an infringement of the trademarks belonging to the Complainants.
Thus, the domain name generates confusion with the trademarks of the Complainants
B. Rights or Legitimate Interests
The Registrant of the domain name at issue has not filed any Response to the Complaint and then has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.
The Complainants do not appear to have licensed or otherwise authorized the Respondent to use its trademarks or to apply any domain name incorporating the trademarks. Therefore, prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy since the website accessible under the litigious domain name is a portal website offering various services.
By not submitting a Response, the Respondent has failed to demonstrate that he has rights or legitimate interest in the domain name.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy to register a domain name consisting of the well-known trademark of a third party.
C. Registered and Used in Bad Faith
The Policy (paragraph 4(b)), indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith.
The bad faith of the Respondent is established by the following elements:
- The "ZEGNA" trademarks are well-known thus the Respondent could not ignore the existence of these well-known trademarks at the time of registering the domain name (see: Sony Kabushifi Kaisha also trading as Sony Corporation v. Sin, Eonmok WIPO case No. D2000-1007; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd. WIPO case No. D2000-0163). Bad faith is strengthened by the fact that the Respondent lives in Italy where Complainants are established.
- The Respondent tries to divert Internet users in registering a domain name which is not used in good faith but in connection with a portal website. Such a use diverts consumers from official Complainants websites. The absence of any good faith use of the domain name is element of the bad faith of the Respondent.
- Following a proposition from a Complainants employee, the Respondent offered to sell its rights on the disputed domain name in return for the excessive price of 30,000 �. Consequently, the panel considers that the Respondent registered the domain name for the purpose of selling. (see Sony kabushiki Kaisha aka Sony Corporation v. Salvatore Vetro WIPO case No. D2001-0575).
- There is no doubt that the Respondent make it a pratice to register domain names which infringe well-known trademarks since he registered several other domain names including well-known trademarks such as: , ; (see Julia Roberts v. Russell Boyd WIPO case No. D2000-0210; Time Warner Entertainment Company v. John Zuccarini, Cupcake Patrol WIPO case No. D2001-0184).
- The Respondent�s bad faith has been already established by a panelist in charge of a similar case opposing the Complainants to Mr. Lian Ming concerning the domain name (Consitex SA, lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming WIPO case No. D2003-0266).
Thus, the Panel concludes that the domain name was registered and is being used 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 Complainant Consitex SA.
Isabelle Leroux
Sole Panelist
Dated: July 28, 2003
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