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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. Mr. Christopher C. Gramly, 12 Galaxies

Case No. D2004-0416

 

1. The Parties

The Complainant is Consitex S.A. of Stabio, Switzerland, Lanificio Ermenegildo Zegna & Figli S.p.A. of Trivero, Biella, Italy, and the Ermenegildo Zegna Corporation of New York, New York, United States of America, collectively called “the Zegna Group”, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Mr. Christopher C. Gramly, San Francisco, California, of United States of America, represented by himself.

 

2. The Domain Name and Registrar

The disputed domain name <zegnatronic.com> is registered with Schlund + Partner.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2004. On June 8, 2004, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain name at issue. On June 11, 2004, Schlund + Partner 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 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2004. The Response was filed with the Center on July 4, 2004.

The Center appointed Mr. P-E H Petter Rindforth as the sole panelist in this matter on July 9, 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.

The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Rules, and the Supplemental Rules. The case before the Panel was conducted in the English language.

 

4. Factual Background

Complainants are three companies constituting the Ermenegildo Zegna group of companies (Consitex S.A., of Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A., of Italy; and Ermenegildo Zegna Corporation, of the USA).

The Complainants are in the fashion industry and the owners of several hundred trademarks including the word ZEGNA throughout the world. ZEGNA is registered in respect of clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewellery, fragrances and services in the field of fashion fabrics (piece goods). Copies of the Certificates of Registration for ZEGNA in Italy (No. 882107), USA (Nos. 941,547 and 1,258,643) as well as International Registration (No. 176867) are provided as Annexes 2 – 5 of the Complaint. A full list of Complainant’s ZEGNA trademark registrations is provided as Annex 1 of the Complaint. The first ZEGNA trademark was registered in Italy in 1939.

The Respondent registered the disputed Domain Name <zegnatronic.com> on January 8, 2004.

 

5. Parties’ Contentions

A. Complainant

The Complainants claim to be internationally well known in the field of fashion and argue that a cursory Altavista or Google search would easily confirm that statement. Complainants refer to the fact that they are and have been the owners of the trademark ZEGNA since before World War II.

Complainants state that <zegnatronic.com> is confusingly similar to ZEGNA, and that adding “tronic” to ZEGNA leads Internet users to believe that this is a site the Complainants use for electronic commerce, as “tronic” normally indicate the e-commerce presence, or other activities in the wider field of “electronics”.

According to the Complainants, there is no way that Respondent may not have been aware of the famous trademark ZEGNA at the time of registration of the disputed Domain Name.

Complainants refer to (among others) Veuve Cliquot Ponsardin v. The Polygenix Group Ltd (WIPO Case No. D2000-0163, in which 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”) and conclude that Respondent has shown opportunistic bad faith when registering <zegnatronic.com>.

The Complainants further state that Respondent has no rights or legitimate interests in respect of the Domain Name, as there is no evidence, before the dispute, of the Respondent’s use of, or demonstrable preparation to use, the Domain Name or a name corresponding to <zegnatronic.com> in connection with a bona fide offering of goods or services; the only use has been offering a parking page advertising domain name registration services. The Respondent has never been commonly known by the Domain Name and there is no evidence that he is making a legitimate non-commercial or fair use of the Domain Name.

The Respondent has not replied to e-mail communications from Complainants’ lawyers asking inter alia to explain why a ZEGNA-derivative domain name had been registered.

The Complainants conclude that the disputed domain name is used in bad faith. The default pages of <zegnatronic.com> resolve to a parking page offering domain name registration services (a copy of the said web page is provided as Annex 6 of the Complaint). Complainants refer to Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003, stating that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”). The concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.

Complainants cite a number of other UDRP cases referring to the abovementioned Telstra case, all regarding a mere passive holding where the domain name does not resolve in an active web page. Complainants state that in the present case the Domain Name is active since a web page advertising Internet registration services (so called “parking page”) is actually reached through <zegnatronic.com>, and that by the use of the disputed Domain Name Respondent diverts traffic which would otherwise go to Complainants’ web sites which promote genuine ZEGNA products.

The remedy sought is transfer of the domain name to Complainant Consitex S.A.

B. Respondent

The Respondent states that he lives in San Francisco, California, USA where he has resided and worked for several years. Respondent refers to Mr. Frank Chu, “another resident of the San Francisco area” and “an eccentric member of the community”. Mr. Chu “may be homeless, he has no visible means of income and he spends his days pacing the streets of downtown San Francisco carrying a sign” (two photographs of Mr. Chu are attached to the Response). According to the Respondent, Mr. Chu has been engaged in this activity for several years and his signs “consistently contain words of his own creation that have no meaning in English or any other language, such as ‘Hexagogatronic’, ‘Medtox’, ‘Quintronic’, ‘Hextrotronic’, and ‘Zegnatronic’, all of which are recognized by him as being part of the 12 Galaxies”.

Respondent further states that Mr. Chu is a well known person in San Francisco and that he never misses an opportunity to appear on camera (television, etc) in order to show his signs and spread his message about the 12 galaxies, Bill Clinton, George Bush and other issues. It was in viewing one of Mr. Chu’s signs several years ago that Respondent first saw the words “12 Galaxies,” “Zegnatronic” and “Zegnatronic Rocket Society.” There is also a well-known nightclub in San Francisco called “The 12 Galaxies”, after Mr. Chu, and he is always an honored guest at the club and drinks for free.

Respondent claims that, in keeping with the spirit of Mr. Chu’s inventive signs and reputation throughout the San Francisco area, Respondent thought that it would be a good business opportunity to register the disputed Domain Name for the purpose of marketing and selling merchandise based on Mr. Chu, dividing any profits earned with Mr. Chu.

The Respondent claims to have registered <zegnatronic.com> after having searched the Internet via the search engine Google in order to make sure that the name was not taken or being used by a business or other organization for some other legitimate purpose. Respondent refers to Complainants’ suggestion to search the Altavista or Google and informs that his search for “zegnatronic” revealed no references to ZEGNA but only to Mr. Chu. Respondent argues that he had never heard about the ZEGNA mark or the Complainants prior to receiving the Complaint, and concludes that this indicates that the ZEGNA trademark is not as famous as stated by the Complainants.

Respondent does not dispute the nature of the Complainants’ worldwide business interests or Complainants’ right to the trademark ZEGNA, however he strongly repudiates all allegations made by the Complainants.

Respondent states that he has spent seven years building e-commerce websites for Fortune 500 global corporations and that he has never heard of a single e-commerce website containing the suffix “tronic.”

Further, Respondent denies having received any e-mail or other forms of communication from Complainants’ lawyers prior to receiving the Complaint, despite the fact that Complainant had all contact details of the Respondent.

Respondent contests the accusations of having used the Domain Name in bad faith and states that Respondent and a partner have been actively engaged in developing their marketing plan for Mr. Chu-related merchandise and that they have not finished their preparation yet. According to the Respondent, it is not uncommon for businesses to register domain names months, if not years, in advance of actually launching a business-related website.

It is the opinion of the Respondent that the Telstra case, as well as other related UDRP decisions cited by the Complainants, are not comparable with the present dispute, as the infringements are much more blatant in the prior cases and the domain names were identical or almost identical to the trademarks of internationally known corporations. Respondent points out that his use of the word “zegnatronic” clearly relates to Mr. Chu and not to the Complainants and their ZEGNA mark.

The Respondent denies having registered the disputed Domain Name with the intention of transferring it to the Complainants for a profit, to transfer the Domain Name to a competitor to the Complainants, to disrupt the business of the Complainants or to otherwise harm the Complainants or achieve some illegitimate commercial gain through the registration of <zegnatronic.com>.

Reverse Domain Name Hijacking

Respondent demands a finding of reverse domain name hijacking against Complainant.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainants must prove each of the following:

(i) that the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainants are the owners of several hundred trademark registrations for ZEGNA (word marks, figurative marks and the word ZEGNA in local letters) throughout the world, as shown by Annex 1 – 5 of the Complaint. ZEGNA is registered mainly in respect of goods and services in the fashion field.

The relevant part of the Domain Name is “zegnatronic”.

The Domain Name and the Complainants’ mark are not identical.

The Complainants argue that the disputed Domain Name is confusingly similar to the ZEGNA trademark, and that adding “tronic” to the mark ZEGNA leads Internet users to believe that the connected site is the one the Complainants use for electronic commerce. The Panel notes that adding a more or less generic term to a trademark does not automatically lessen the risk of confusion. On the contrary, if the addition is a term associated with the business of the Complainant it can even add to the similarity between the domain name and the trademark in question (see ACCOR v. Jose Manuel Fernandez Garcia, WIPO Case No. D2002-0988). In other cases, the addition has been neutral, with limited ability to distinguish the domain name from Complainant’s trademark (see Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102).

It is the opinion of the Panel that the suffix –tronic in general may suggest that the complete word “zegnatronic” is related to goods and / or services in the electronic field. The associative aspects of –tronic therefore makes the word “zegnatronic” less similar to the trademark ZEGNA, as the latter is not used or known for electronic goods / services but mainly for products of fashion.

Furthermore, “zegnatronic” is an existing word, apparently invented by Mr. Frank Chu. Internet users may read the disputed Domain Name as the word “zegnatronic”, rather than the trademark ZEGNA with the addition of –tronic. On the other hand, as suggested above, there are some WIPO UDRP decisions finding that confusing similarity may be found in cases involving a domain name consisting of a famous trade mark with the addition of a, or part of a, generic word.

However, because of the finding of the Panel about the Respondent’s bad faith in registering the domain name, it is not necessary to make a final determination under this element of the Policy.

B. Rights or Legitimate Interests

The Complainants state that Respondent has no rights or legitimate interests in respect of the Domain Name as there is no evidence, before the dispute, of use / demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, nor is the Respondent commonly known by the Domain Name or is making a legitimate non-commercial or fair use of the Domain Name.

Complainants also state that Respondent has not replied to e-mail communication from Complainant’s lawyers, prior to the dispute.

Regarding the latter, Complainants have failed to prove that they have sent the alleged e-mails. This Panel therefore accepts Respondents statement that he has not been approached by the Complainants or by their representatives prior to the Complaint.

Respondent claims that he registered <zegnatronic.com> for the purpose of marketing and selling merchandise based on Mr. Chu. Normally, such claim should be required to be supported by an outlined business plan or at least some sort of affidavit. In this case, no specific marketing plan has been presented to the Panel. Moreover, taking into account the fact that the planned business actions likely will have to be actively supported by Mr. Chu and there is little evidence of support in the case file, some may argue that it is Mr. Chu who has a legitimate interest, not the Respondent, Mr. Gramley

However, because of the finding of the Panel about the Respondent’s bad faith in registering the domain name, it is not necessary to make a final determination under this element of the Policy.

C. Registered and Used in Bad Faith

The third requirement for the Complainant to prove is whether the Domain Name has been registered and is being used in bad faith. Paragraph 4 (b) of the Policy regulates the kind of evidence and circumstances, “in particular but without limitation” that shall be evidence of the registration and use of a domain name in bad faith.

The ZEGNA trademark, in the name of the Complainants, is indeed well protected by a number of registrations throughout the world. It may also, as claimed by the Complainants, be well known in the field of fashion, although no documents supporting this statement have been provided by the Complainants.

It is also a fact that Mr. Frank Chu exists, that he is a well known individual in the San Francisco area, and that he has invented the word “zegnatronic”, although the source and meaning of the said word is not perfectly clear to the Panel.

The Respondent claims to have had no knowledge of Complainants’ trademark prior to

registration of the disputed Domain Name. As a resident of San Francisco he has knowledge of Mr. Chu and his activities, including the “12 Galaxies”, “Zegnatronic” and “Zegnatronic Rocket Society”. The Panel is – without any certain proof of the contrary – prepared to accept the Respondent’s statement in this matter.

Accordingly, the Panel concludes that the Complainants have failed to prove that <zegnatronic.com> is registered in bad faith.

The Complaint includes a number of references to Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), in which case it was established that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. It is the opinion of this Panel that the present dispute differs from the Telstra case in a number of aspects:

- The disputed Domain Name is not identical to the Complainant’s trademark

- Complainant has not provided any documentation (except from trademark registrations), sales or advertising figures to support its claim that ZEGNA has a strong reputation and is widely known in the USA (the country of Respondent)

- Respondent has not taken any steps to conceal his true identity

- Respondent has not provided any false contact details

Complainants states that the Domain Name is active since a web page advertising Internet registration services is actually reached through “www.zegnatronic.com”. A copy of the default page for “www.zegnatronic.com” is provided as Annex 6 of the Complaint. From the said page, as well as from the Whois information (Annex 7 of the Complaint), it is obvious for the Panel that the Domain Name is hosted by a company called “1&1 Internet Inc.” and that the said company has created a parking page containing their logo, the text “THIS DOMAIN HAS JUST BEEN REGISTERED FOR ONE OF OUR CUSTOMERS!” in large capital letters, followed by the text “Domain registration and webhosting at most competitive prices!” in smaller capital letters.

In determining if a domain name has been registered and is being used in bad faith, the Panel must look at the totality of circumstances. It is a complex question whether use of the domain name for a default/parking page constitutes use or inactive use within the Policy. The Panel find that a respondent’s failure to develop a site is not as such evidence of bad faith registration.

Against the rather unusual background of this case, and the paucity of the documentary evidence presented, the Panel concludes that the Complainant has failed to prove that the Domain Name is used in bad faith.

Reverse Domain Name Hijacking

The Respondent suggests that the Complainants are guilty of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined in paragraph 15 (e) of the Rules as filing the complaint “in bad faith, for example in an attempt to harass the domain-name holder”.

Just like the panel finds no evidence in the record of knowledge on the part of the Respondent about the trademark ZEGNA before the Complaint, there is nothing in the case suggesting that the Complainants should have known about “zegnatronic” of the “12 galaxies” before they filed the Complaint.

Further, there is no evidence of harassment from the Complainants, and the accusations and presumptions filed against the Respondent are well within the scope of what the Panel finds acceptable from a trademark owner who discovers a domain name that may infringe its trademark rights.

The Panel therefore states that this is not a case of Reverse Domain Name Hijacking.

 

7. Decision

The Panel concludes that the Complainants have failed to prove that Respondent has registered and is using the Domain Name in bad faith.

Therefore, pursuant to paragraphs 4 of the Policy and 15 of the Rules, the Panel denies the Complainants’ request to transfer the disputed Domain Name to the Complainant Consitex S.A.

 


 

P-E H Petter Rindforth
Sole Panelist

Date: July 21, 2004

 

Источник информации: https://internet-law.ru/intlaw/udrp/2004/d2004-0416.html

 

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