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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna España S.A v. Ocxon Media S.A.
Case No. D2001-0128
1. The Parties
Complainants are the Ermenegildo Zegna group of companies: Ermenegildo Zegna Corporation, a U.S. corporation with registered office at 9 West 57th Street, New York, NY 10019, U.S.A.; Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company with registered office at Via Roma 99/100, 13835 Trivero, Biella, Italy; Consitex S.A., a Swiss company with registered office at Via Ligornetto, CH-6855 Stabio, Switzerland; and Ermenegildo Zegna España S.A., a Spanish company with registered office at Ctra. de Sta. Perpetua a Sentmenat, Km. 5,900, 08213 Polinya, Barcelona, Spain. The four companies (hereinafter collectively the "Complainants") are represented in this proceeding by Mr. Massimo Introvigne, Esq. and Mr. Fabrizio Jacobacci, Esq., of Jacobacci & Perani, Torino, Italy.
Respondent is Ocxon Media S.A., Moll de Barcelona, Barcelona 8039, Spain.
2. The Domain Name and Registrar
The domain name at issue is <quieroermenegildozegna.com>, registered with Registrars.com, 475 Sansome Street, Suite 570, San Francisco, California 94111, U.S.A.
3. Procedural History
The Complainant submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules"). The copy of the Complaint submitted by e-mail was received by the WIPO Center on January 24, 2001, and the hardcopy of the Complaint submitted by courier was received by the WIPO Center on January 31, 2001. An Acknowledgement of Receipt dated January 26, 2001, was sent by e-mail by the WIPO Center to the Complainant.
A Request for Registrar Verification was dispatched by the WIPO Center to the Registrar by e-mail on January 29, 2001. The Registrar responded by e-mail to the WIPO Center on January 29, 2001.
On January 31, 2001 the WIPO Center sent a Complaint Deficiency Notification regarding paragraph 13 of the Complaint, about the Complainant’s choice of jurisdiction clause.
On February 1, 2001 the WIPO Center received by e-mail the amendment of said paragraph, and on February 6, 2001 the hard copy of the amendment.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent on February 8, 2001, by courier, fax and e-mail. No Response was filed by the Respondent. The WIPO Center proceeded to notify the Respondent’s default on February 28, 2001.
Subsequent to the notification of Respondent default, and in accordance with the request in the Complaint, the WIPO Center after receiving the Statement of Acceptance and Declaration of Impartiality and Independence of Ms. Anna Carabelli, Mr. Roberto Bianchi (presiding panelist) and Mr. Mario A. Sol Muntañola, proceeded to appoint these three panelists on March 20, 2001. A decision shall be provided by this Administrative Panel, absent exceptional circumstances, by April 2, 2001. The Panel finds that it has been properly constituted.
The case before this Administrative Panel is being conducted in the English language in accordance with the registration agreement. Therefore the language of the decision shall be in English.
4. Factual Background
The Ermenegildo Zegna Group is the owner of several hundreds of trademarks including the words ERMENEGILDO ZEGNA throughout the world. They cover mostly, but not exclusively, clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewelry, fragrances, services in the field of fashion fabrics (piece goods). Three representative trademarks are relevant for this case:
- U.S. Registration No. 1011590 ERMENEGILDO ZEGNA for knitted outerwear in the name of Ermenegildo Zegna Corporation, renewed for 10 years on May 27, 1995 and dating back to 1974, with first use claimed in the year 1937;
- Italian registration No. 634484 ERMENEGILDO ZEGNA of Lanificio Ermenegildo Zegna & Figli S.p.A. of February 24, 1992 / November 21, 1994 for, inter alia, fabrics (the original registration included also clothing and, with respect to these products, was assigned to Consitex S.A.), renewal of Italian registrations Nos. 110522 of April 30, 1952 / February 4, 1953, and 274644 of December 22, 1971 / August 3, 1973;
- International registration No. R410571E ERMENEGILDO ZEGNA of Consitex S.A. (dating back to 1973), for (inter alia) fabrics, tissues and clothing;
- Spanish registration No. 1325903 ERMENEGILDO ZEGNA of April 10, 1989, formerly in the name of Ermenegildo Zegna España S.A. and now in the name of Consitex S.A.
The Ermenegildo Zegna Group is the owner of the trademark ERMENEGILDO ZEGNA since at least the 1930’s.
On May 19, 2000, Respondent registered the domain name at issue with Registrars.com.
5. The Parties’ Contentions
The complainants contend that:
(a) The domain name quieroermenegildozegna.com ("I want Ermenegildo Zegna" or "I love Ermenegildo Zegna" in Spanish) is confusingly similar with the trademarks ERMENEGILDO ZEGNA of Complainants;
(b) There is no way that Respondent may not have been aware of the famous trademark ERMENEGILDO ZEGNA (which enjoys very significant sales in Spain, Respondent’s home country), and registration may only have occurred in bad faith; when it may be presumed that "the Respondent (…) knew of the renown of the Complainant’s trademarks", a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, case no. D2000-1157). In Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., case no. D2000-0163, the Panel noted that "‘VEUVECLIQUOT.ORG’ 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." In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, case no. D2000-0226, it was also suggested that " the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Cliquot]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark ." Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLIQUOT or CHRISTIAN DIOR, it was decided that "the Respondent knew of or should have known of the Complainant’s trademark and services at the time it registered the domain name XPEDIATRAVEL.COM, given the widespread use of the Complainant’s EXPEDIA website" (Expedia, Inc. v. European Travel Network, Case No. D2000-0137.);
(c) Respondent has no rights or legitimate interests in respect of the domain name. Respondent’s trade name does not include ERMENEGILDO ZEGNA, nor does it trade under these names. Any project by Respondent to create Web sites under the "quieroermenegildozegna.com" domain name will not constitute rights or legitimate interests, since it would obviously infringe Complainants’ trademarks;
(d) The domain name is used in bad faith. On the question of "use" of a domain name in bad faith when there is no actual Web page by Respondent, nor an offer for selling the domain name, there is now an entire body of significant precedents. Most of these quote the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows (case no. D2000-0003), in that the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Among the circumstances indicating that "passive holding" amounts to "use in bad faith", Telstra listed cases where "the Complainant’s trademark has a strong reputation and is widely known", and "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law." Telstra has been quoted in a number of subsequent decisions;
(e) Respondent did agree that although it owns "a portfolio of thousands of domain names", "the cancellation of the referenced domain name" was somewhat in order (doc. 5). However, having promised to cancel the domain name on October 24, 2000, and apologized for having remained "incommunicado" for a while (doc. 5), Respondent remained incommunicado again after that date and did not care to answer half a dozen reminders from Complainant. The domain name still stands in the name of Respondent (doc. 6);
(f) Complainants request that the Panel order the cancellation of the domain name.
Respondent has not responded to the complaint and, following the notification of default, has not made any submission whatsoever.
6. Discussion and Findings
Respondent is in default. According with the Rules, in case of failure by the respondent to provide a response to the allegations of the complainant – as in the present case -, the Panel is directed to decide the administrative proceeding on the basis of the complaint (Paragraph 14 (a)), and "shall draw such inferences therefrom as it considers appropriate" (Paragraph 14 (b)).
A respondent has generally in his hands the opportunity to provide with evidences to be opposed to the claims and contentions of the Complainant; if he does not use them it may be inferred that such evidences would not have been favorable to him, or that he finds the statements of the Complainant right, or else that his interest in the domain name is so scarce that it is not worth his while to respond. In any case, silence is a choice of the Respondent, so if he does bring doubts forward or contradicts the statements of the Complainant, the latter shall prove the three elements required by the Policy without further opposition than his own ability to explain them. (See: Franpin, S.A. v. Paint Tools, S.L,. case no. D-2000-0052; InfoSpace.com, Inc. v. Hari Prakash, case no. D-2000-0076; Easyjet Airline Company Ltd. v. Andrew Steggles, case no. D-2000-0024; Bartecard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, case no. D-2000-0177 or Pomellato S.p.A. v. Richard Tonetti, case no. D-2000-0493).
Notwithstanding the above, the Panel must in any case establish whether the complaint succeeded in proving that each of the three elements listed in paragraph 4 (a) of the Policy are present (see Deutsche Bank AG v. Diego-Arturo Bruckner -WIPO case D2000-0277). Indeed, as held in Cortefiel S.A. v. Miguel Garcìa Quintas - WIPO case D2000-0140, the Panel should not decide in the complainant’s favor solely given the respondent’s default.
In the instant case, prior to this proceedings, Respondent appears to have even stated that cancellation of the domain name registration should proceed.
Identicality or Confusingly Similarity
Complainants have established sound rights in the ERMENEGILDO ZEGNA mark, including a registration in Spain, where Respondent has its domicile. The relevant trademark registrations pre-date the domain name registration.
Beyond doubt the Panel finds that the domain name at issue is confusing similar to such mark. The addition of "quiero" to the complainantґs mark reinforces the impression that at registering the domain name Respondent aimed precisely at Complainantsґ mark. "Quiero" in Spanish means "I want" or "I love". This suggests that Respondent loves or wants the goods covered by the well known mark, or that he loves the mark or wants it for himself. In both cases there is a recognition by Respondent that the mark is pre-existing to the domain name registration.
Complainants have proved that the first prong of the Policy (Paragraph, 4(a)(i)) is present.
Lack of Rights or Legitimate Interests
On October 24, 2000, prior to the instant proceeding, Respondent’s representative Mr. Hans Marteau expressly stated to Mr. Introvigne (Complainantsґ representative) that Respondent intended to apply for cancellation of the domain name at issue, and that Respondent would bear the cost of cancellation.
Although Respondent later failed to proceed with its announced cancellation of the domain name registration, it is difficult to imagine a more concrete acknowledgement that Respondent lacks any rights or legitimate interests in the domain name.
On the other part, on March 24, 2001 the Panel through its presiding panelist independently checked the contents of the <quieroermenegildozegna.com> web site. The attempt resulted in a message stating that "the page cannot be shown" and that "the server could not be found", which is a DNS error message. This also means that for all practical purposes the web site is not used.
Together with the lack of any response by Respondent in this proceeding, the lack of use of the web site corresponding to the domain name at issue allows the Panel to infer that Respondent lacks any rights or legitimate interests in the domain name. Thus, the second prong of Policy, Paragraph 4(a) is present.
Bad Faith Registration
Although Complainants have not expressly addressed this point, and that they rely on their evidence that Respondent lacks rights or interests in the domain name, under the circumstances of this case, and because Respondent is in default, the Panel is satisfied that Respondent registered the domain name in bad faith. Its letter of October 24, 2000 is particularly supporting of such finding since Respondent acknowledged to Complainants that cancellation of the domain name should proceed at Respondent’s own cost. Respondent did not even attempt to explain why - if it were not in bad faith - it had registered the domain name.
Use in Bad Faith
The web site corresponding to the domain name has not been used (see 4 above). Respondent is in default. Respondent has failed to comply with its offer to Complainantґs representative that it would apply for cancellation of the domain name registration.
Such inactivity strongly recalls the situation on which the Telstraґs reasoning is based. Complainants have quite appropriately directed the Panel’s attention to this WIPO case (D2000-0003), together with its progeny, in that inaction in relation to the domain name - if relevant circumstances are present - may be found to equal positive bad faith action.
Jointly considered, Respondent’s conduct, including its default, its declared will to cancel of the domain name registration, and the subsequent permanence of a registration on which no rights or legitimate interests have been neither alleged nor evidenced, are all found by this Panel to be relevant circumstances evidencing that the domain name is being used in bad faith.
Because all three limbs of the ICANN Policy have been proved by Complainants to be present, the Panel requires, pursuant to Policy, Paragraph 4(i) and Rules, Paragraphs 14 and 15, that the registration of the <quieroermenegildozegna.com> domain name be cancelled.
Roberto A. Bianchi
Mario A. Sol Muntañola
Dated: March 30, 2001