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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Piero Gerolanda
Case No. DLA2003-0006
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. The Complainants are represented by Studio Legale Jacobacci e Associati, Italy. The Complainants are hereafter collectively referred to as "Complainant".
The Respondent is Piero Gerolanda, Agrigento, Italy.
2. The Domain Name and Registrar
The disputed domain name <essenzadizegna.la> 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 25, 2003. In reply to the Center’s Complaint Deficiency Notification the Complainant filed an amendment to the Complaint on December 18, 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, GAA International / LA Names Corporation transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint by e-mail and registered mail, and the proceedings commenced on December 18, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was January 7, 2004. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 8, 2004.
The Center appointed Geert Glas as the sole panelist in this matter on January 14, 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 different entities which filed the Complaint are all part of the Zegna Group, an international group in the field of fashion. Consitex S.A. owns several trademarks which either consist of the word ZEGNA as such or the words ERMENEGILDO ZEGNA ESSENZA DI ZEGNA. Most relevant to this dispute are its international (no. 797021) and Community (no. 2900587) trademarks consisting of the words ‘Ermenegildo Zegna Essenza Di Zegna’ and its international (no. 176867A) and Community (no. 000631697) trademarks consisting of the word ‘Zegna’.
The above trademarks are used by Complainant to identify and distinguish clothing, fragrances and cosmetics. In particular, ‘Essenza Di Zegna’ is the name of the main product of Complainant in the field of fragrances and cosmetics. Yves Saint Laurent is the licensed manufacturer of this fragrance.
On August 20, 2003, the Respondent registered the domain name <essenzadizegna.la>.
The contact data on the .la WHOIS database seems to be inaccurate. The notifications could not be delivered to the postal address of the Respondent as well as to postmaster e-mail address. However, the transmissions of notifications to Respondent’s personal e-mail address have been successful.
The URL resolves to a web page, on which the perfume ‘Obscene Erotic Parfum’ is sold.
The title of the web page is ‘Zegna YSL Fragrances from LA’. This title refers to YSL, i.e. Yves Saint Laurent, which is the licensed manufacturer of the Essenza Di Zegna fragrance. Under the perfume, a Dutch slogan is featured, which translates to ‘a fragrance that will attract every man’ (free translation). At the moment of this decision, it is impossible to order the advertised perfume from the website, as the order button seems to be malfunctioning.
It should be noted that the source code of the web page refers to the identical web page "www.erotiekshop.nl/2635.htm", which is part of a web page owned by an Amsterdam-based company under the name ‘Anytimes’.
Parallel to the contested domain name, Respondent has registered numerous identical domain names (with different country codes), in particular <essenzadizegna.be>, <essenzadizegna.se>, <essenzadizegna.cn>, <essenzadizegna.it> and <essenzadizegna.us>. Under the name of an individual (also living in Agrigento, Italy) the domain name <essenzadizegna.net> has been registered. Similarly, under the name of another individual (living in the same street in Agrigento, Italy) the domain names <essenzadizegna.info> and <essenzadizegna.nl> have been registered.
Since Complainant’s Complaint, several of the above domain names have been subject to arbitration and subsequent transfer to Complainant, in particular <essenzadizegna.it> and <essenzadizegna.info>. Most of the other domain names resolve to a web page with an error message, but offer the possibility to search amongst a variety of erotic products, including the Obscene Erotic Parfum.
5. Parties’ Contentions
Concerning the requirement of identity or confusing similarity, Complainant argues that the domain name <essenzadizegna.la> is confusingly similar with the trademarks of Complainant and with the name of Complainant’s main fragrance.
Concerning the requirement of lack of rights or legitimate interests in the domain name, Complainant argues that:
(i) there is no evidence the domain name or a name corresponding to the domain name has been used before the dispute with a bona fide offering of goods or services;
(ii) Respondent has never been commonly known by the domain name, nor did he do business under the domain name; and
(iii) there is no evidence Respondent is making a legitimate non-commercial or fair use of the domain name.
Concerning the bad faith of Respondent, Complainant argues that:
(i) in view of the fame of the ESSENZA DI ZEGNA trademark, Respondent can only have registered the domain name in bad faith;
(ii) the fact that Respondent provides false contact information in the WHOIS records, is a further indication of his bad faith;
(iii) the fact that the domain name resolves to a web page solely devoted to the sale of an erotic perfume, further indicates Respondent’s bad faith;
(iv) in a similar proceeding concerning the domain name <essenzadizegna.it>, Respondent offered to sell the domain names for the amount of 250.000 EUR, constituting further proof of bad faith.
In view of the above, Complainant requests the Panel to issue a decision that the contested domain name be transferred to Complainant.
The Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, Respondent is obliged to submit to a mandatory administrative proceeding in the event that Complainant asserts that (i) the domain name is identical or confusingly similar to a trademark of Complainant; (ii) Respondent does not have legitimate rights or interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.
Hereafter, the Panel discusses each of these three elements. Pursuant to Paragraph 15 of the Rules, the Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, Rules and any principles of law that it deems appropriate.
Paragraph 14 of the Rules provides that the Panel may draw such inferences
from the default of a party as it considers appropriate. However, pursuant to
UDRP case law, the Panel may not find in favour of Complainant solely given
Respondent’s default (Ermenegildo Zegna Corporation, Lanificio Ermenegildo
Zegna & Figli S.p.A., Consitex S.A. and Ermenegildo Zegna España
S.A. v. Ocxon Media S.A., WIPO Case No.
D2001-0128 and Cortefiel, S.A. v. Miguel García Quintas, WIPO
Case No. D2000-0140).
A. Identical or Confusingly Similar
Complainant has submitted sufficient evidence that it is is the owner of several trademarks both consisting of the word ZEGNA and of the words ERMENEGILDO ZEGNA ESSENZA DI ZEGNA. It has equally submitted sufficient evidence that it markets its main fragrance under the name Essenza Di Zegna.
The Panel holds that the domain name is confusingly similar to the above trademarks. Respondent’s domain name incorporates the ZEGNA trademark as well as the three last words of Complainant’s ERMENEGILDO ZEGNA ESSENZA DI ZEGNA trademark.
Pursuant to established UDRP case law, the addition of a country code (in
casu .la) is of no relevance to the identity between domain name and trademark,
as the country codes generally do not serve to identify a specific enterprise
as a source of goods or services (Consitex S.A., Lanificio Ermenegildo Zegna
& Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO
Case No. D2003-0266). Moreover, the place where a domain name has been registered
is irrelevant if the corresponding trademark has acquired world-wide fame (Microsoft
v. Azra Khan, WIPO Case No. D2003-0481).
Moreover, the risk of confusing similarity is greater when the corresponding
trademark is well-known, as is the case here. In this respect, Christian
Dior Couture SA v. Liage International Inc., WIPO
Case No. D2000-0098 stated that "to allow <babydior.net> and
<babydior.com> domain names to remain with Respondent would contribute
worldwide to erode the marks of complainant in a manner contrary to the international
obligations of the U.S. (because of the TRIPs) and to the most recent restatement
of world intellectual property law standards as embodied in Art. 16 para. 6
TRIPs" (see also CELLEX-C International Inc. v. Jaye Pharmacy and Absolute
Cellex C., WIPO Case No. D2003-0423 and Microsoft
v. Azra Khan, WIPO Case No. D2003-0481).
For the foregoing reasons, the Panel decides that the contested domain name <essenzadizegna.la> is confusingly similar to Complainant’s trademarks ZEGNA and ERMENEGILDO ZEGNA ESSENZA DI ZEGNA in the sense of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has sufficiently demonstrated that Respondent is not licensed or otherwise authorised to use the trademarks of Complainant.
The Panel is unaware of any evidence showing either of the three above-mentioned
elements to be applicable as Respondent has failed to submit any evidence that
disproves Complainant’s credible allegations (Microsoft v. Azra Khan,
WIPO Case No. D2003-0481 and Consitex S.A.,
Lanificio Ermenegildo Zegna & Figli S.p.A. and Ermenegildo Zegna Corporation
v. Mr. Mario Giovanni Mario, WIPO Case No. D2003-0699).
For the foregoing reasons, the Panel decides that Respondent does not have any rights or legitimate interests on the contested domain name <essenzadizegna.la> in the sense of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.
Paragraph 4(a)(iii) provides for a cumulative requirement of registration in
bad faith and use in bad faith (Consitex S.A., Lanificio Ermenegildo Zegna
& Figli S.p.A. , Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO
Case No. D2003-0266). Bad faith registration solely does not suffice to
obtain relief under the Policy (Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003).
In view of the above-established fact that ZEGNA and ERMENEGILDO ZEGNA ESSENZA
DI ZEGNA are well known trademarks, it is inconceivable that, at the moment
of registration, Respondent, who is an Italian national, could have been unaware
of the existence of these trademarks. Consequently, this Panel holds that registration
could only have been made in bad faith (Banca Sella s.p.a v. Mr. Paolo Parente,
WIPO Case No. D2000-1157, Veuve
Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group CO.,
WIPO Case No. D2000-0163, Geniebooks.com
Corporation v. William E. Merritt, WIPO
Case No. D2000-0266, Expedia, Inc. v. European Travel Network, WIPO
Case No. D2000-0137 and Consitex S.A. , Lanificio Ermenegildo Zegna &
Figli S.p.A. , Ermenegildo Zegna Corporation v. Mr. Lian Ming, WIPO
Case No. D2003-0266).
Furthermore, the Panel holds that Respondent equally used the domain name in bad faith. Four factors point to this finding.
1. Under Paragraph 4(b)(i) of the Policy, the domain name owner may not hold the domain name primarily for the purpose of selling it in excess of the documented out-of-pocket costs directly related to the domain name.
In a parallel proceeding concerning the domain name <essenzadizegna.it> against the same Respondent, Respondent sent a sollicited reply to Complainant’s lawyers, proposing: "If Zegna wants to buy back our business, it should buy back different things from us, including also several thousands of bottles of the fragrance OBSCENE and lesser amounts of other products, as well as the sites and names. Our financial advisor has assessed this business at two hundred and fifty thousand euro (bottles included, which we have no interest in keeping if we lose the names)" (free translation). The Italian Board of Arbitration ordered transfer of the domain name in its decision of September 1, 2003.
Although this proposal was made in the context of a different arbitration (prior to registration of the contested domain name), it shows Respondent’s willingness to sell its domain names for an amount significantly in excess of its out-of-pocket costs.
2. Under Paragraph 4(b)(iv) of the Policy, the domain name owner may not create a likelihood of confusion with Complainant’s mark in order to attract, for commercial gain, Internet users to its web page. The Panel finds that such confusion was present. The title of the web page, ‘Zegna YSL Fragrance from LA’, cannot be otherwise explained than as an attempt to attract customers who are looking for the Essenza Di Zegna perfume produced by Yves Saint Laurent (the manufacturer under license of Complainant’s Essenza Di Zegna fragrance).
3. Under Paragraph 4(b)(iii) of the Policy, the domain name owner cannot prevent
the domain name owner from reflecting its trademark in a corresponding domain
name, provided that the domain name owner engages in a pattern of such conduct.
The Panel finds that such pattern of conduct is present. As noted higher, a
series of domain names including the word "essenzadizegna", e.g. <essenzadizegna.be>,
<essenzadizegna.it>, <essenzadizegna.us>, <essenzadizegna.net>,
<essenzadizegna.info>, <essenzadizegna.se>, <essenzadizegna.nl>,
<essenzadizegna.cn>, etc., have been registered by Respondent or by persons
with an almost identical name and address to Respondent. UDRP case law has accepted
a pattern of conduct in cases where as few as four domain names had been registered
(Potomac Mills Limited Partnership v. Gambit Capital Management, WIPO
Case No. D2000-0062; see also Time Warner Entertainment Company, L.P.
v. Harper Stephens, WIPO Case No. D2000-1254
and ISL Marketing AG, and The Federation Internationale de Football Assosiation
v. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO
Case No. D2000-0034).
4. The Panel refers to the DHL tracking report, which could not be delivered
and was consequently returned to shipper marked "Address Information needed;
contact DHL". Prior panel decisions show that false/inaccurate contact
information indicates sufficient to establish bad faith registration and use
under the Policy (Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; BellSouth
Intellectual Property Corporation v. Real Yellow Pages, WIPO
Case No. D2003-0413; Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO
Case No. D2003-0849). In Action Instruments, Inc. v. Technology Associates,
WIPO Case No. D2003-0024, the Panel stated that
"providing false contact information violates paragraph 2 of the Policy,
which requires a registrant to represent that the statements it "made in [its]
Registration Agreement are complete and accurate." Maintaining that false contact
information in the WHOIS records (which can easily be updated at any time) after
registration constitutes bad faith use of the domain name because it prevents
a putative complainant from identifying the registrant and investigating the
legitimacy of the registration".
For the foregoing reasons, the Panel decides that there is sufficient evidence of Respondent’s bad faith both in registration and in use of the contested domain name <essenzadizegna.la> in the sense of Paragraph 4(a)(iii) of the Policy.
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 <essenzadizegna.la> be transferred to Complainant.
Dated: January 28, 2004