This is the award issued by me as arbitrator in a dispute under the Stichting Internet Domeinregistratie Nederland (SIDN) Regulations for Arbitration on .nl Domain Names (the Arbitration Regulations) between Consitex S.A. et al. (Plaintiffs) and Mattia Gerolanda (Defendant) in relation to the domain name (the Domain Name).

1. THE PROCEEDINGS

1.1. Parties to the Arbitration

The Plaintiffs are part of the Ermenegildo Zegna group, active in the fashion business, and consist of the following companies: Consitex S.A; Lanificio Ermenegildo Zegna & Figli S.p.A.; Ermenegildo Zegna International N.V.

Pursuant to Arbitration Regulations, Article 13.1, multiple parties may act as Plaintiffs if and insofar as they are involved in the Complaint or have an interest in it. The Tribunal finds that each of the Plaintiffs has an interest in the Complaint. Plaintiffs Consitex and Lanificio Ermenegildo Zegna & Figli are owners of the trademarks which form the basis for the Complaint, while Ermenegildo Zegna International N.V. enjoys trade name protection in The Netherlands, which right also forms part of the basis for the Complaint.

The Plaintiffs are represented by Dr. Massimo Introvigne. Pursuant to Arbitration Regulations, Article 14.1, Mr. Introvigne has submitted a written party authorization to this effect.

The Defendant in this proceeding is Mr. Mattia Gerolanda. The Whois records for the Domain Name indicate that the Defendant has registered the Domain Name under the actual Dutch address of one of the Plaintiffs. However, the Plaintiffs have pointed out that the Defendant has never been associated or affiliated in any way with Ermenegildo Zegna International N.V., and contend that the Defendant resides at the Italian address indicated above.

1.2. Arbitration Agreement, Rules, Place of Arbitration, Applicable Law and Language

This case has been submitted to the WIPO Arbitration and Mediation Center (the Center) under the SIDN Regulations for Registration of .nl Domain Names (the Registration Regulations) for domain names registered with SIDN, the Registry for the country code top-level domain for the Netherlands, which provide in relevant part:

"21.1 Any party that considers that by registering and/or using one or more Domain Names or Personal Domain Names a Domain Name Holder is infringing its Benelux trademark right or rights (including rights to Community trademarks) and/or its Dutch trade name right or rights may institute arbitration proceedings regarding the Domain Name before the Domain Name Arbitration Tribunal.

21.2 The Domain Name Holder of a Domain Name or a Personal Domain Name which has been applied for, or for which a Migration, likewise a Change of Domain Name Holder has taken place after the date on which the Registration Regulations have come into force, declares in advance that he/she/it shall submit to the judgment rendered by the Domain Name Arbitration Tribunal should any third party institute arbitration proceedings before the said Tribunal regarding a Domain Name or Personal Domain Name registered in the name of the said Domain Name Holder.

[….]

21.4 SIDN shall determine separate regulations for the manner in which arbitration on a Domain Name shall be instituted before the Domain Name Arbitration Tribunal, the manner in which the said proceedings shall be dealt with, and the cost of submitting and dealing with arbitration proceedings regarding a Domain Name."

The Arbitration Regulations in turn provide in relevant part:

"By accepting the SIDN Regulations for Registration of .nl Domain Names (either expressly or tacitly), all holders of a Domain Name which has been applied for, or for which a Migration or Change of Domain Name Holder has taken place after the date on which the SIDN Regulations for Registration of .nl Domain Names have come into force, undertake in advance that they will submit to the provisions of these Regulations for Arbitration on .nl Domain Names in existing or future disputes arising from the registration and/or use of a Domain Name in the event that a third party submits a Complaint against them within the meaning of Article 6 of these Regulations. All other Domain Name Holders may voluntarily submit to the provisions of these Regulations.

Third parties that submit a Complaint within the meaning of Article 6 of these Regulations against one or more Domain Name Holders shall by doing so be deemed to have undertaken to abide and be bound by the provisions of the Regulations."

Article 3.1 of the Registration Regulations provides in relevant part:

"3.1 An Applicant for a Domain Name who/that wishes to Register a Domain Name or Personal Domain Name shall provide the Participant he/she/it has selected with the following documents:
(a) for a Domain Name: a Registration Contract, signed by the Applicant for a Domain Name, according to the model specified by SIDN;"

By communication of August 13, 2003 SIDN have confirmed to the Center that the Participant through which the domain name is registered is Ascio Technologies Inc., of Copenhagen, Denmark; that the Defendant registered the Domain Name on June 27, 2003; and that the Arbitration Regulations apply to the Domain Name. In this connection, SIDN have submitted a copy of the Defendant’s Domain Name registration contract that expressly confirms the applicability of the Registration Regulations, including, in particular, submission to arbitration.

In accordance with Arbitration Regulations, Article 17.4, the place of arbitration is Amsterdam, the Netherlands.

Pursuant to Arbitration Regulations, Articles 11.3 and 11.4, the Tribunal shall act in accordance with the Arbitration Regulations and shall rule in accordance with Dutch law.

Pursuant to Arbitration Regulations, Article 17.2, the language of the present proceedings is English.

1.3 Procedural History

The Complaint was filed with the Center on August 7, 2003. The Center has confirmed receipt of the Complaint to the Plaintiffs on August 11, 2003.

The Center has verified the Complaint’s compliance with the formal requirements of the Arbitration Regulations and has ascertained that the required fee amount was properly paid to the Center.

On August 13, 2003, SIDN confirmed to the Center the status of the Domain Name, the identity of the Defendant as the current registrant and the applicability of the Arbitration Regulations to this Domain Name. SIDN further confirmed that it had locked the Domain Name registration and that the Domain Name will remain locked during the pending arbitration proceeding in accordance with Article 8 of the Arbitration Regulations.

On August 15, 2003, the Complaint was notified to the Defendant in accordance with Arbitration Regulations, Article 7.1. In accordance with Arbitration Regulations, Article 5.5, the Center has sent copies of the notification to all addresses mentioned in the Complaint, both via e-mail and via post. At the same time, the Center notified the parties and SIDN in accordance with Arbitration Regulations, Articles 7.1 and 7.3, that, on the same date, the arbitration proceedings had formally commenced.

The Defendant failed to submit a Statement of Defence within the time period provided for in Arbitration Regulations, Article 9. On September 8, 2003, the Center notified the Defendant of its default, indicating also that, in accordance with Arbitration Regulations, Article 9.4, the case would proceed and the Tribunal would have to rule on the basis of the Complaint, granting the remedy requested unless the Tribunal would consider the Complaint to be baseless.

Taking into account the Plaintiffs’ request pursuant to Arbitration Regulations, Article 6.3, for the appointment of a sole arbitrator, the Center in accordance with Arbitration Regulations, Article 10.1, on September 8, 2003 sent to the parties a list of three potential arbitrators from the Pool of Arbitrators. Neither party returned such list to the Center expressing a preference regarding the arbitrator to be appointed as provided in Arbitration Regulations, Article 10.2.

Pursuant to such Article, the Center on September 17, 2003 appointed Mr. Hub J. Harmeling (residing in Heemstede, the Netherlands) as the sole arbitrator in this matter. On the same date, in accordance with Arbitration Regulations, Article 10.9, Mr. Harmeling submitted a completed Statement of Acceptance and Declaration of Impartiality and Independence, confirming acceptance of this assignment in writing and declaring not to have any personal or business connection with any of the parties. Also on September 17, 2003, the Center informed the parties of the appointment of the Arbitration Tribunal and of the target date by which the award should be submitted to the Center, as provided in Arbitration Regulations, Article 10.11.

2. SUMMARY OF SUBMISSIONS

2.1. Plaintiffs

Within the Ermenegildo Zegna fashion group, Consitex S.A. is the main manufacturer of clothing within the group. It also manufactures cosmetics and fragrances under the trademark ERMENEGILDO ZEGNA. Plaintiff Consitex S.A. is the owner of the following trademark registrations for ERMENEGILDO ZEGNA:

Community Trademark Registration No. 1525633
Community Trademark Registration No. 2161677
Community Trademark Registration No. 2516524

Lanificio Ermenegildo Zegna & Figli S.p.a. is the main manufacturer of cloth and fabrics within the group and is the owner of International Trademark Registration No. 410571 for ERMENEGILDO ZEGNA, which also covers the Benelux.

Ermenegildo Zegna International N.V. is Consitex’s licensee for the trademark ERMENEGILDO ZEGNA in a number of countries, including the Benelux countries. Also, it uses in the Netherlands the trade name Ermenegildo Zegna International, entitling it to protection of this name under the Dutch Trade Name Act.

The Plaintiffs contend that the Domain Name is identical to the Plaintiffs’ trademark ERMENEGILDO ZEGNA and to the trade name held by Ermenegildo Zegna International N.V.

According to the Plaintiffs, the Defendant uses the Domain Name to advertise under the heading "Ermenegildo Zegna: Hot, Wild, Obscene" an "erotic" cosmetic product. The web page at www.ermenegildozegna.nl also offers links to pornographic websites.

The Plaintiffs contend that the Domain Name is part of an elaborate infringing operation whereby persons whose last name is Gerolanda, all located in Agrigento, Italy, offer erotic cosmetics and similar products for sale through domain names incorporating (variations on) the Plaintiffs’ trademarks. In this connection, the Plaintiffs have submitted Whois information on , , , , , and , all registered in the name of persons having Gerolanda as their last name. In this context, plaintiff Consitex S.A. has stated that it is the owner of several trademarks ERMENEGILDO ZEGNA ESSENZA DI ZEGNA.

The Plaintiffs contend that the abovementioned registration and/or use of the Domain Name constitutes an infringement of the Plaintiffs’ trademark and trade name rights, and request the Tribunal to find that:

• The Plaintiff Ermenegildo Zegna International N.V. shall become the holder of the Domain Name instead of the Defendant, so that the award shall replace the form required by SIDN for the Change of Domain Name Holder;
• The Defendant be prohibited from registering domain names similar to the contested Domain Name in the future, liable to a penalty of EUR 5,000.-;
• The Defendant shall pay the costs of the procedure, including the Plaintiffs’ costs for legal assistance which at the time of filing of this Complaint amount to approximately EUR 2,500.;
• The award, in accordance with Arbitration Regulations, Article 23.5, be declared enforceable regardless of whether an appeal against the award is lodged.

2.2. Defendant

The Defendant has not responded to the Plaintiffs’ contentions.

3. FINDINGS

Reference is made to the facts and regulations set out in section 1.2 of this award. The Defendant has registered the Domain Name on June 27, 2003. Pursuant to Article 21 of the Registration Regulations in force on that date, the Defendant thereby submitted to arbitration proceedings in relation to claims by third parties that by registering and/or using the registered domain name, the domain name holder is infringing a Benelux trademark right and/or Dutch trade name right. SIDN have submitted records confirming the applicability of this arbitration procedure to the Domain Name. The Plaintiffs’ submission of the Complaint thus establishes a valid arbitration agreement between the parties.

Considering the foregoing, as well as the legal basis of the Plaintiffs’ Complaint under Dutch trademark and trade name law, the Tribunal determines, pursuant to Arbitration Regulations, Article 11.2, that it is competent to hear the present dispute, noting also that the legal consequences of these proceedings are at the free disposal of the parties in the sense of Article 1020, section 3, of the Dutch Code of Civil Procedure.

According to the Arbitration Regulations, Article 9.4, which covers the situation where, as is the case here, the Defendant has failed to submit a timely Statement of Defence, the Tribunal shall rule on the dispute on the basis of the Complaint. This Article further states that the award shall grant the remedy, except if the Tribunal considers the complaint to be baseless.

Upon review of the Complaint and its exhibits, the Tribunal finds that the Plaintiffs have sufficiently demonstrated their rights in the trademark ERMENEGILDO ZEGNA and their rights in the trade name Ermenegildo Zegna International. The Tribunal also finds that the Domain Name is identical or at least highly similar to such trademarks and trade name. The Tribunal has taken note of the record of this case in relation to the Defendant’s registration and use of the Domain Name. Taking into account Article 13, section 1 of the Benelux Trademark Act, Article 9 of the Community Trade Mark Regulation, and Articles 5 and 5a of the Dutch Trade Name Act, the Tribunal does not consider the Complaint to be baseless. Accordingly, the Tribunal grants the remedy and orders that, as requested, the Plaintiff Ermenegildo Zegna International N.V. shall become the holder of the Domain Name instead of the Defendant.

As to the remaining remedies requested by the Plaintiffs, this Tribunal, without prejudice to determinations by other Tribunals, decides to interpret the default provision of Arbitration Regulations, Article 9.4 as not obliging the Tribunal to grant in full each and every one of the remedies sought. In this regard, the Tribunal has taken into account, inter alia, the (potential) direct monetary consequences of the third and fourth remedies mentioned in Arbitration Regulations, Article 3.1; the separate existence of cost provisions in Arbitration Regulations, Article 28.8 and Annex 4; and, finally, the use of the singular term ‘remedy’ in Arbitration Regulations, Article 9.4.

Taking into account the undisputed facts asserted with regard to the Defendant’s conduct, both with regard to the Domain Name and with regard to certain other domain names related to the Domain Name, the Tribunal issues a prohibition for the Defendant to register, as of the date of notification of this award, .nl domain names similar to the Domain Name. The Tribunal further determines that this prohibition shall be liable to a penalty of EUR 5,000.- for each domain name registered in contravention of this prohibition.

Considering that the award is rendered in favor of the Plaintiffs and taking into account the obvious, if not indeed deliberate, character of the infringement, the Tribunal awards the Plaintiffs’ claim for payment by the Defendant of the administration costs and of the Tribunal’s fee in a total amount of EUR 2,250.-. On the Plaintiffs’ claim for payment by the Defendant of the costs of legal representation – which according to the Plaintiffs amount to EUR 2,500.- at the time of filing of the Complaint – , the Tribunal awards EUR 1,500.-, which amount the Tribunal considers appropriate in light of the limited complexity of the case and the concise nature of the Complaint.

The Plaintiffs have also requested that the Tribunal declare the award enforceable regardless of whether an appeal against the award is lodged. Considering the default nature of this case and taking into account the absence of specific arguments for this request in the Complaint, the Tribunal, within its discretion under Arbitration Regulations, Article 9.4, declines to issue such declaration.

4. DECISION

With reference to the facts and findings set out above, the Tribunal, in accordance with Arbitration Regulations, Article 23, decides as follows:

1. The Plaintiff Ermenegildo Zegna International N.V. shall become the holder of the Domain Name .

2. The Defendant is prohibited from registering .nl domain names similar to the Domain Name as of the date of notification of this award, subject to a penalty of EUR 5,000.- for each domain name registered in contravention of this prohibition.

3. The Defendant shall pay to the Plaintiffs the administration costs of this proceeding and the Tribunal’s fee, in a total amount of EUR 2,250.-, and shall further pay to the Plaintiffs EUR 1,500.- as reasonable costs of the Plaintiffs’ legal representation.

4. With regard to any payments due to the Plaintiffs under Decisions 2 and 3 above, the payment to one Plaintiff shall discharge the Defendant of such payment obligation to the other Plaintiffs.

5. All other and further claims made by the Plaintiffs in this procedure are denied