This is the Award issued by me as Sole Arbitrator in a dispute between Consitex S.A. and Lanificio Ermenegildo Zegna & Figli S.p.A (Claimant) and Mr. Salvatore Tramacere (Respondent) regarding a dispute over the domain name <ermenegildozegna.pl> (the Domain Name).

1. THE PROCEEDINGS

1.1. Parties to the Arbitration

The Claimant consists of two members of the Ermenegildo Zegna group of companies: Consitex S.A., a Swiss company with registered office at Via Laveggio, Mendrisio, Switzerland and Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company with registered office at Via Roma 99/100, 13835 Trivero, Biella, Italy. The Claimant’s business is the manufacture and sale of apparel, jewelry and fragrance.

The Respondent is an individual who runs an Internet business from Via Mercalli 21, 20122 Milan, Italy.

1.2. Arbitration Agreement, Rules and Place of Arbitration

1.2.1 This instant case has been submitted under Articles 6-9 of the WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL (the Expedited Rules; available at http://arbiter.wipo.int/en/domains/rules/cctld/expedited/pl/index.html). Both parties have signed the Arbitration Agreement dated July 29, 2003 in accordance with Article 6 of the Expedited Rules.

1.2.2 The version of the WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL applicable to the present arbitral proceedings is, pursuant to Article 2 (b) of the Expedited Rules, that in effect as of the date of commencement of this arbitration.

1.2.3 In accordance with Article 34 of the Expedited Rules, the Sole Arbitrator has decided that the Place of Arbitration be Geneva, Switzerland.

1.3. Procedure

1.3.1 In accordance with Article 6 of the Expedited Rules, on July 25, 2003, the Claimant notified the WIPO Arbitration and Mediation Center (the Center) in writing of the Claimant’s intention to file the present case. As stated above, both parties signed the Arbitration Agreement on July 29, 2003. Following a further exchange of communications among the Center and the parties, the parties agreed, pursuant to articles 45 and 48 of the Expedited Rules, that the language of the proceedings shall be English, and that the applicable laws shall be those of the United States of America.

1.3.2 On August 7, 2003, the Claimant transmitted to the Center and to the Respondent the Request for Arbitration together with the Statement of Claim (together, the Statement of Claim) in accordance with Article 10 of the Expedited Rules.

1.3.3 Pursuant to Article 8 of the Expedited Rules, the date of commencement of the arbitration is August 7, 2003.

1.3.4 On August 11, 2003, the Respondent transmitted to the Center and to the Claimant the Answer to the Request together with the Statement of Defense (together, the Statement of Defense) in accordance with Article 12 of the Expedited Rules.

1.3.5 On August 18, 2003, after receipt of an unqualified Statement of Acceptance, Impartiality and Independence, the Center appointed the undersigned, Mr. Dennis A. Foster, as Sole Arbitrator pursuant to Article 15 of the Expedited Rules.

1.3.6 On September 9, 2003, the Sole Arbitrator issued Tribunal Procedural Order No.1 regarding further written statements. No further written statements were submitted.

1.3.7 On September 25, with reference to Article 46 of the Expedited Rules, in Procedural Order No. 2, the Sole Arbitrator declared the proceedings closed.

2. SUMMARY OF SUBMISSIONS

2.1. Claimant

In its Statement of Claim, the Claimant states the following:

The products of ERMENEGILDO ZEGNA are on sale and well-known in Poland.

ERMENEGILDO ZEGNA is a world famous trademark.

The Domain Name <ermenegildozegna.pl> is confusingly similar to the trademark ERMENEGILDO ZEGNA owned by Claimant. In fact, it is identical.

There is no way that Respondent may not have been aware of the famous trademark ERMENEGILDO ZEGNA of Claimant, and registration may only have occurred in bad faith.

Respondent has no rights or legitimate interests in respect of the Domain Name:

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 the Domain Name in connection with a bona fide offering of goods or services.

The Respondent has never been commonly known by the Domain Name, nor did he do business under the name.

The Respondent is not making a legitimate non-commercial or fair use of the Domain Name.

The Domain Name is used in bad faith. The default page of resolves to a pornographic portal with the title tag "Ermenegildo Zegna PL.

The Respondent is selling various services connected with pornography at the domain name web site.

That redirection to pornographic sites from a domain name incorporating a well-known trademark is, per se, evidence of bad faith has been confirmed by several ICANN panel decisions. These decisions were in cases where a cybersquatter tried to take advantage of a well-known trademark to attract Internet users to a pornographic web site. In particular: a well-known trademark is used; the site to which the user is redirected is obviously pornographic; the site is commercial, i.e., in order to access further pornographic images, the internet user is invited to pay; and there is a "mouse-trapping effect" making it more difficult for the casual internet user to leave the pornographic web site.

The Claimant seeks the remedy of transfer of the Domain Name, to Coinsitex S.A. and the award of the costs of the arbitration proceedings, including legal expenses in the amount of Euro 2,500.

2.2. Respondent

In his Statement of Defense, the Respondent states the following:

Respondent believes and claims that Internet addresses should be free for use by the first registrant thereof, under the general rule "first come, first served."

Claimant, large multinational companies, knew that was free but did not register it and in fact left it in the public domain.

Respondent has a legitimate interest in the Domain Name and uses it in good faith for perfectly legitimate adult entertainment services. These services, as the international press has reported, represent 25% of all Internet activity and 50% of world e-commerce activity. If they do not represent an "interest" in the e-commerce field, what does?

The use of .pl to indicate a "porno level" (a common expression in the adult entertainment field) may in fact be very useful for future business under the domain ".pl." Just as Tuvalu sells thousands of domain names because ".tv" is read as "television," not as the Island of Tuvalu, and ".ws" is read as "Web Site" rather than "Western Samoa," the fact that ".pl" may in the future be perceived as "porno level" will be beneficial to Polish tax payers and to whoever profits from the sale of ".pl" domain names, since many more of them will be sold to the adult entertainment industry which, as stated before, is a large (if not the largest) part of all business transacted via the Internet.

Because of its legitimate interest in <ermenegildozegna.pl>, Respondent is confident that the Claimant’s requests will be denied.

3. FINDINGS

In making these findings, the Sole Arbitrator applies the Expedited Rules, in particular Articles 45 and 48 of the Expedited Rules.

The Sole Arbitrator notes that in an exchange of e-mails dated August 6, 2003, the parties agreed that the language of this arbitration would be English, and that the substantive law to be applied to this Domain Name dispute would be that of the United States of America.

The Sole Arbitrator finds that the relevant United States law applicable to this Domain Name dispute is the "Anticybersquatting Consumer Protection Act," P.L. 106-113 (November 29, 1999) ("the relevant U.S. Law"). The relevant U.S. Law provides in pertinent part:

"A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section if, without regard to the goods or services of the parties, that person […]

(i) has a bad faith intent to profit from that mark, […] and

(ii) registers, traffics in, or uses a domain name that […]

in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark […]

(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to […]

(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services […]

(V) the person’s intent to divert consumers from the mark name that could harm the goodwill represented by the mark either for commercial gain or with the intent to tarnish or disparage the mark by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site".

Applying the relevant U.S. Law to the arbitration at hand, the Sole Arbitrator finds that the Claimant has shown that it has numerous trademark registrations of its trademark contained in the Domain Name, . The Sole Arbitrator also finds that the Claimant’s trademark is a famous one because it is used and known all over the world, including in Poland, where the Domain Name is registered, and where the Claimant also has several registered trademarks (Complaint Annex 1). The Respondent does not contest these facts.

However, pursuant to the relevant U.S. Law at Sec. 3002 subparagraph (B)(i)(III), the Respondent contends that his use of the Domain Name to offer paid pornographic entertainment is a bona fide or legitimate use. The Respondent bases his assertion on statistics that purport to show that a substantial part of the commercial activity on the Internet is related to pornography.

Even if the Sole Arbitrator would accept as true the Respondent’s contention about the volume of commercial pornography on the Internet, the Sole Arbitrator does not see how this is a "bona fide offering of goods or services" in the context of this dispute. On the contrary, the Sole Arbitrator finds that the Respondent’s commercial pornography web site using the Claimant’s famous trademark is a violation of the bad faith provisions of the relevant U.S. Law at Sec. 3002, subparagraph (B)(i)(V). The Sole Arbitrator believes that the Respondent is using the Claimant’s famous trademark to "divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain […]". The Sole Arbitrator finds this describes exactly what the Respondent is doing. That the Respondent’s association of the Claimant’s famous trademark with pornography harms the Claimant trademark’s goodwill is manifest; and the fact that the Respondent’s pornographic entertainment has advertising satisfies the commercial requirement.

The Sole Arbitrator therefore finds that the Respondent’s registration of the Domain Name violates the relevant U.S. Law. On this basis, the Sole Arbitrator decides to grant the Claimant’s transfer request.

4. DECISION

Based on the foregoing considerations and reasons, the Sole Arbitrator issues his Final Award in Geneva, Switzerland, on October 17, 2003, holding as follows:

The Domain Name, <ermenegildozegna.pl>, shall be transferred from the Respondent to the Claimant Consitex S.A. in accordance with Article 36(a) of the WIPO Expedited Arbitration Rules for Domain Name Dispute Resolution under .PL.

5. COSTS

Having regard to Article 59 of the Expedited Rules, the Sole Arbitrator hereby fixes the costs of arbitration as follows:

In light of the concise and expeditious nature of the present proceeding, no further payments or reimbursements are due from or to the parties in this arbitration.

6. NOTIFICATION AND PUBLICATION OF THE AWARD

Pursuant to Article 64 of the Expedited Rules, this Award will be published in full at the web site of the WIPO Arbitration and Mediation Center. The Award is signed in four (4) originals and is to be notified by the Center as follows:

6.1 one original to the Representative of the Claimant;

6.2 one original to Respondent;

6.3 one original to be retained by the WIPO Center;

6.4 one original retained by the Sole Arbitrator; and

6.5 one original to the Registry NASK.