WIPO Domain Name Decision: D2006-1443

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A. and Ermenegildo Zegna Corporation v. The Xiamen Jiyang’s farm of zoology breed aquqtics

Case No. D2006-1443

1. The Parties

The Complainants are Consitex S.A., Switzerland, Lanificio Ermenegildo Zegna & Figli S.p.A., Italy and Ermenegildo Zegna Corporation, United States of America, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is The Xiamen Jiyang’s farm of zoology breed aquqtics, People’s Republic of China.

2. The Domain Names and Registrar

The disputed domain names <zegna-menswear.com> and <zegnamenswear.com> are registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2006. On November 14, 2006, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain names at issue. On November 15, 2006, Bizcn.com, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 23, 2006. 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 the Respondent of the Complaint, and the proceedings commenced on November 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2006. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on December 20, 2006.

On December 21, 2006, the Respondent submitted to the Center in Chinese three e-mail communications indicating inter alia that it had sent its response in the matter on December 11, 2006. On the same day, the Center advised the Respondent that it was not in receipt of said response and requested the Respondent to submit it soonest. On January 9, 2007, the Respondent forwarded to the Center a translation of its previous communications annexing e-mail communications between the parties.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January 8, 2007. 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 Complainant consists of three companies which together constitute the Zegna group of companies: (i) Consitex S.A., a Swiss company with registered office in Stabio, Switzerland; (ii) Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company with registered office in Biella, Italy; and (iii) Ermenegildo Zegna Corporation, a U.S. corporation with registered office in New York, United States of America.

The Complainant is an international group of companies in the field of fashion retail. It is the owner of several hundred trademarks including the word ZEGNA and examples of the Complainant’s trademark registrations are as follow:

- Italian registration ZEGNA No. 882107, whose first application dates back to 1939;

- Chinese registration ZEGNA No. 969347;

- International registration ZEGNA No. 747160;

- U.S. registration ZEGNA No. 941547 of 1971.

The majority of the Complainant’s trademarks are applied on clothing, shoes, tissues, fabrics, fashion accessories, belts, watches, jewellery, fragrances, and services in the field of fashion fabrics.

The Complainant submits it has been the owner of the trademark ZEGNA since before the 1940s.

The Respondent’s domain names were registered on May 23, 2006.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain names <zegnamenswear.com> and <zegna-menswear.com> are confusingly similar with the Complainant’s trademark ZEGNA. In fact, the main product of the Complainant Zegna Group is menswear. Consequently, the Complainant argues that the association between “zegna” and “menswear” would evoke the name, fame, and business of the Complainant. The Complainant is aware that, in the case of <zegnatronic.com> (Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Christopher C. Gramly, 12 Galaxies, WIPO Case No. D2004-0416), the panel has concluded that Zegna does not have a monopoly over all possible variations of ZEGNA that are used as domain names. However, while “zegnatronic” is a combination of ZEGNA with a word unrelated to Zegna’s core business (”tronic”), and the panel accepted the idea that it referred to an imaginary planet “Zegnatronic” popularized by the eccentric activities of a San Francisco “street prophet”, the word “menswear” in contrast describes Zegna’s main products and core business. In fact, the Complainant contends that its arguments have prevailed in a number of similar cases. One such case involves the domain name <zegnasuit.com> in Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375. In this case, the Panel commented that “comparing the domain name <zegnasuit.com> to the registered trademark ZEGNA, it appears that in the former the distinctive part is to be considered ZEGNA and the addition of “suit” does not seem capable to add any distinctiveness. On the contrary, given the fact that ZEGNA is primarily used to cover clothing items, the addition of “suit” elicits a direct reference to the ZEGNA activities and trademark both under a likelihood of confusion, but also under a likelihood of association, since consumers may be induced in believing that “zegnasuit” is a sector of activity, or specialized trademark of the Complainants”. Other similar cases include <zegnapictures.com> in Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LionHeart Securities Corp., WIPO Case No. D2003-0285 and <zegnasuits.com> in Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Spiral Matrix, WIPO Case No. D2006-0169, in which the panel commented that “[t]he combination of the Complainants’ world famous brand name ZEGNA and the word “suits”, which is part of the Complainants’ core business for which it had acquired an international reputation and with which it is associated, would lead users of the Internet to believe that the site is licensed by or in some way authorised by the Complainants”.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain names based on the following reasons:

- there is no evidence, of the Respondent use of, or demonstrable preparation to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services. Respondent does use the domain name <zegnamenswear.com> (without hyphen) in connection with a Web search page linking to a number of services and products (some of them offered by direct competitors of Complainant). The search tool under the website seems to operate under a principle of “sponsored search”, i.e. those advertisers who pay more show up in the top positions in the search results. As of October 30, 2006, the domain name <zegna-menswear.com> (with hyphen) does not seem to resolve to an active web page;

- the Respondent, upon information and belief, has never been commonly known by the domain names, nor did it do any legitimate business under the domain names;

- upon information and belief, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the domain names. The use of the sponsored search system is in itself a commercial activity.

Bad Faith

The Complainant contends that the registration of the disputed domain names was in bad faith as it is not possible for the Respondent to claim that it was not aware of the Complainant’s famous trademarks ZEGNA. The Complainant cited a number of cases to support its contention. In Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163, 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”. In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, it was also suggested that the domain name is so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith. The Complainant also refers to Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137. The Complainant argues that in this present case, the very fact that the Respondent did associate ZEGNA with “menswear” confirms that it has not ignored the fame of the Complainants’ trademarks ZEGNA, particularly for menswear.

The Complainant further contends that the domain names are used in bad faith. As for <zegnamenswear.com>, the Complainant contends that the Respondent capitalizes on the worldwide fame of ZEGNA to attract users which are then redirected through its search page to a number of different websites, none of them associated with the Complainant Zegna Group, and some in direct competition to it. The Complainant submits it does not, nor cannot, control what is offered by the Respondent on its website. As for <zegna-menswear.com>, the Respondent’s “passive holding” of the domain name was an act recognized as bad faith by several UDRP panel decisions including Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Several letters and emails were sent by the Complainant and its lawyers in China to the Respondent but these have not resulted in a settlement and the Complainant contends that these incidents confirmed the Respondent’s unwillingness to deal fairly with the Complainant Zegna Group and its trademark rights.

B. Respondent

The Respondent did not submit a formal response but forwarded a submission on December 21, 2006 and January 9, 2007.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the mark ZEGNA in many countries throughout the world.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download the Complainant’s fashion products.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark ZEGNA and (b) the addition of the words ‘menswear’ after it, continuously in one word for one of the domain name <zegnamenswear.com> and separated by a hyphen in the other <zegna-menswear.com>. The most prominent and distinctive part of the domain names is the word ZEGNA which is the Complainant’s registered trademark. The word ‘menswear’ is descriptive of the Complainant’s products, especially when the Complainant’s core business is in retail fashion specializing in men’s fashion. The word ‘menswear’ does not serve to distinguish the Respondent’s domain names from the Complainant’s trademark ZEGNA. To the contrary, given the considerable reputation that the Complainant’s trademark enjoys in relation to its men’s fashion products, the addition of the words ‘menswear’ to the mark ZEGNA evokes an association with the Complainant and its products. There is indeed a great likelihood that someone looking at the domain names <zegnamenswear.com> and <zegna-menswear.com> may think that they belong to the Complainant. In the present case, the word ‘menswear’ refers to the Complainant’s core business and products which evokes the association of the domain names with the Complainant’s trademark.

Bearing in mind the following factors, in particular (a) the considerable reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s mark ZEGNA; (c) the dominant component of the disputed domain names; and (e) that the disputed domain names evoke an association with the Complainant’s trademark and its core business, the Panel therefore finds that the disputed domain names <zegnamenswear.com> and <zegna-menswear.com> are confusingly similar to a trademark or service mark ZEGNA in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. the Respondent has not provided evidence of a legitimate use of the domain names or reasons to justify the choice of the words “zegnamenswear” and “zegna-menswear” in its business operations especially when the Respondent appears to be in the business of farming or breeding aquatics from its trade name “The Xiamen Jiyang’s farm of zoology breed aquatics”;

2. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain names incorporating the trademark;

3. there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the domain names in connection with a bona fide offering of goods or services;

4. the Complainant and its mark ZEGNA enjoys a considerable reputation with regard to the retail fashion industry in particular men’s fashion in Italy and in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the ZEGNA mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain name. The Respondent’s communications of December 21, 2006 and of January 9, 2007 did not contain submissions by the Respondent to demonstrate or assert that he has rights or legitimate interests to the disputed domain names. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent appears to be unable to adduce evidence of any rights or legitimate interests to the disputed domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or 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 the complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product.

The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain names in bad faith.

Firstly, the Panel finds that the Complainant and its mark ZEGNA enjoys a considerable reputation with regard to the retail fashion industry especially for men’s fashion in Italy and in several other countries. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of association with the Complainant and its fashion products.

The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. Furthermore, the Respondent has through the use of confusingly similar domain names created a likelihood of confusion with the Complainant’s trademark and this constitutes a misrepresentation to the public that the Respondent’s website is associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain names and the conduct of the Respondent as far as the website to which the domain names resolve are indicative of registration and use of the disputed domain names in bad faith.

Furthermore, the Respondent’s communications of December 21, 2006 and January 9, 2007, revealed the negotiations between the Complainant and the Respondent on the proposed sale of the disputed domain names. When negotiations broke down between the parties, the Respondent replied in its email on October 20, 2006, that there is a third party who is interested in the sale of these domain names and the Respondent was prepared to enter into negotiations with this third party. With regard to the issue of whether statements made in settlement discussions or sale negotiations are evidence of bad faith, the consensus of the Panelists as stated in ‘The WIPO Overview of Panel Views on Selected UDRP Questions’ is that:

“Consensus view: Evidence of offers to sell the domain name in settlement discussions is admissible under the UDRP, and is often used to show bad faith. This is because many cybersquatters often wait until a trademark owner launches a complaint before asking for payment and because panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort. Also the legal criteria for showing bad faith directly specifies that an offer for sale can be evidence of bad faith.

Relevant decisions:
CBS Broadcasting, Inc. v. Gaddoor Saidi WIPO Case No. D2000-0243 , Transfer
Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. WIPO Case No. D2000-1525 among others, Transfer
McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd. WIPO Case No. D2004-0078, Transfer”.

In this present case, the Panel finds that the evidence suggests that the Respondent does not have any genuine intention to use the domain names in relation with a bona fide offering of goods and services. One of the disputed domain names <zegnamenswear.com> (without hyphen) resolved to a website that connects with a Web search page linking to a number of services and products (some of them offered by direct competitors of Complainant) and the search result appears to operate under the principle of the “sponsored search”, i.e. those who pay more would have their websites displayed in the top positions of the search results. The other domain name <zegna-menswear.com> (with hyphen) does not seem to resolve onto an active Web page and the Respondent is holding on to this domain name passively. Passive holding of domain names have consistently been held by UDRP panelists to constitute bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Consequently, the Panel accepts the Complainant’s submission that these facts coupled with all the other evidence proves that the Respondent has registered and is using the disputed domain names in bad faith.

7. Decision

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 names <zegna-menswear.com> and <zegnamenswear.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: January 22, 2007