This is the arbitration 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 Tatiana Gerolanda (Defendant) in relation to the domain name ‹essenzadizegna.nl› (the Domain Name).

1. The Parties

The Plaintiffs are (1) Consitex S.A., Mendrisio, Switzerland; (2) Lanificio Ermenegildo Zegna & Figli S.p.A., Biella, Italy; and (3) Ermenegildo Zegna International N.V., Amsterdam, the Netherlands hereinafter collectively "Plaintiffs" represented by Dr. Massimo Introvigne, Torino, Italy.

The Defendant is Tatiana Gerolanda, Agrigento, Italy.

2. The Domain Name and Participant

The disputed Domain Name ‹essenzadizegna.nl› is registered with the Participant Ascio Technologies Inc., Copenhagen, Denmark.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2003.

The Center has confirmed receipt of the Complaint to the Plaintiffs on September 30, 2003.

On October 2, 2003, the Center transmitted by e-mail to SIDN a request for Registry Verification in connection with the Domain Name.

On October 2, 2003, SIDN transmitted by e-mail to the Center its verification response confirming that the Defendant is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. SIDN also confirmed in its response to the Center that the Regulations for Arbitration on .nl Domain Names ("Arbitration Regulations") apply to the Domain Name. With regard to this, SIDN has 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. SIDN further confirmed that it had locked the Domain Name registration and that the Domain Name registration will remain locked during the pending arbitration proceeding in accordance with Article 8 of the Arbitration Regulations.

The Center verified that the Complaint satisfies the formal requirements of the Arbitration Regulations and that Plaintiffs have made payment of the required amount to the Center.

In accordance with the Arbitration Regulations, Articles 5.5, 7.1 and 7.3 the Center formally notified the Defendant of the Complaint, and the proceedings commenced on October 2, 2003.

In accordance with the Arbitration Regulations, Article 9, the due date for a Statement of Defence was October 23, 2003. The Defendant did not submit a Statement of Defence. Accordingly, the Center notified the Defendant's default on October 27, 2003.

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 to the Center such list expressing a preference regarding the arbitrator to be appointed as provided in Arbitration Regulations, Article 10.2.

The Center appointed Madeleine de Cock Buning as the sole arbitrator in this matter on November 6, 2003. The Tribunal finds that it was properly constituted. The Tribunal has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Arbitration Regulations, Article 10.9.

4. Factual Background

The Plaintiffs are part of the Ermenegildo Zegna group, active in the fashion business.

Trademarks

Plaintiff Lanificio Ermenegildo Zegna & Figli S.p.a. is the owner of International Trademark Registration No. 410571 for ERMENEGILDO ZEGNA, which also includes the Benelux.

Plaintiff Consitex S.A. is the owner of Community Trademark Registrations for ERMENEGILDO ZEGNA (No. 1525633, 2161677 and 2516524) and is the owner of the trademark ERMENEGILDO ZEGNA ESSENZA DI ZEGNA (International Registration No. 797021 and Community Trademark Application No. 2900587).

Plaintiff Ermenegildo Zegna International N.V. is Consitex's licensee for the trademark ERMENEGILDO ZEGNA in a number of countries, including the Benelux, and uses the trade name Ermenegildo Zegna International in the Netherlands.

Domain Name

The Defendant registered the Domain Name ‹essenzadizegna.nl› on June 27, 2003. The Domain Name was used to advertise under the title tag "Sucesso Erotico con Essenza di Zegna" (Erotic success with Essenza di Zegna) an erotic cosmetic product. The web page at www.essenzadizegna.nl also offered links to pornographic websites.

5. Parties' Contentions

A. Plaintiff

The Whois records for the Domain Name indicate that the Defendant has registered the disputed Domain Name under the actual Dutch address of one of the Plaintiffs. The Plaintiffs contend that the Defendant has never been associated or affiliated in any way with Ermenegildo Zegna International N.V., and that the Defendant resides at Agrigento, Italy as indicated above.

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 ‹essenzadizegna.info›, ‹essenzadizegna.net›, ‹essenzadizegna.be›, ‹essenzadizegna.cn›, ‹essenzadizegna.biz›, ‹essenzadizegna.se› and ‹essenzadizegna.us›, all registered in the name of persons having Gerolanda as their last name.

The Plaintiffs contend that their registered trademark ERMENEGILDO ZEGNA is largely used and well known in the Netherlands for a variety of fashion products, whereas their registered trademark ERMENEGILDO ZEGNA ESSENZA DI ZEGNA is largely used and well known in the Netherlands for fragrances and cosmetics. Furthermore, ESSENZA DI ZEGNA is the name of Plaintiff Consitex's main fragrance.

The Plaintiffs contend that the Domain Name ‹essenzadizegna.nl› is confusingly similar to Plaintiffs' trademarks ERMENEGILDO ZEGNA and ERMENEGILDO ZEGNA ESSENZA DI ZEGNA and to the trade name held by Ermenegildo Zegna International N.V.

The Plaintiffs contend that the registration and/or use of the Domain Name ‹essenzadizegna.nl› 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 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 3,500;
• the award, in accordance with Arbitration Regulations, Article 23.5, be declared enforceable regardless of whether an appeal against the award is lodged.

B. Defendant

The Defendant did not reply to the Plaintiffs' contentions.

6. Discussion and Findings

Applicability of Regulations and Competence

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 has submitted records confirming the applicability of this arbitration procedure to the Domain Name. The Plaintiffs' submission of the Complaint therefore 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.

Jurisdiction, Place of Arbitration and Language

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 proceedings is English.

Plurality

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 is part of the basis for the Complaint.

Defendant Default

In accordance with the Arbitration Regulations, Article 9.4, with regard to 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.

Findings

Taking note of Plaintiffs' assertions and evidence, Defendant's registration and use of the Domain Name, which domain name is highly, and probably confusingly, similar to Plaintiffs' trademarks and trade name, and taking into account Article 13, section 1 of the Benelux Trademark Act, Article 9 of the Community Trade Mark Regulation, as well as Articles 5 and 5a of the Dutch Trade Name Regulation, the Tribunal does not consider the Complaint to be baseless.

The Tribunal therefore 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. This reward shall replace the form required by SIDN for the Change of the Domain Name Holder.

As to the remaining remedies requested by the Plaintiffs, as was found in the Award in Consitex S.A. et al. vs. Mattia Gerolanda, (WIPO Case 2003NL1), this Tribunal interprets 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 view of the undisputed facts concerning Defendant's conduct, both with regard to the Domain Name and with regard to several other domain names similar 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 ‹essenzadizegna.nl›. This prohibition shall be liable to a penalty of EUR 5,000.- for each domain name registered in defiance of this prohibition.

Considering that the award is rendered in favor of the Plaintiffs and taking into account the obvious, if not 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 3,500 at the time of filing of the Complaint -, the Tribunal awards EUR 1,000, which the Tribunal considers appropriate considering the limited complexity of the case.

The Plaintiffs have also requested that the Tribunal declares 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.

7. Decision

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

• the Plaintiff Ermenegildo Zegna International N.V. shall become the holder of the Domain Name ‹essenzadizegna.nl›;
• the Defendant is prohibited from registering .nl domain names similar to the Domain Name ‹essenzadizegna.nl› as of the date of notification of this award, subject to a penalty of EUR 5,000 for each domain name registered in defiance of this prohibition;
• the Defendant is to 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 1,000 as reasonable costs of the Plaintiffs' legal representation;
• 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;
• all other and further claims made by the Plaintiffs in this procedure are denied.