ADMINISTRATIVE PANEL DECISION
Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Antonietta Maria Loprete
Case No. DRO2003-0004
1. The Parties
The Complainants are three companies constituting the Ermenegildo Zegna group of companies: Consitex S.A. of Stabio, Switzerland, Lanificio Ermenegildo Zegna & Figli S.p.A of Biella, Italy and Ermenegildo Zegna Corporation of New York, United States of America (hereinafter the Complainant). All represented by Dr. Massimo Introvigne and Dr. Fabrizio Jacobacci of Jacobacci & Associati, Torino, Italy.
The Respondent is Antonietta Maria Loprete of Rome, Italy.
2. The Domain Name and Registrar
The disputed domain name <ermenegildozegna.ro> is registered with the Romanian National R&D Computer Network (RNC.ro).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2003. On June 24, 2003, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On June 27, 2003, RNC.ro 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 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2003.
The Center appointed Mr. Fabrizio Bedarida as the sole panelist in this matter on August 5, 2003. 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.
Having reviewed the communication records in the case file, the Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent".
Therefore, the Panel shall issue the decision on the basis of the Complaint, the Policy, the Rules, the Supplemental Rules and any rules and principles of law deemed applicable, without the benefit of any Response from Respondent.
4. Factual Background
The Complainant is an internationally well known group in the field of fashion and the owner of several hundred trademarks throughout the world comprising the words ERMENEGILDO ZEGNA. Complainant’s first application for the trademark ERMENEGILDO ZEGNA in Italy dates back to 1952 and in Romania the trademark has been registered since September 13, 1974 through International registration 410571.
The Respondent applied for the domain name <ermenegildozegna.ro> on May 8, 2003, and it was registered on May 20, 2003. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant submits that:
The domain name <ermenegildozegna.ro> is confusingly similar to the trademark ERMENEGILDO ZEGNA owned by Complainant;
The Respondent, who is located in Italy, a primary market for Complainant, "cannot conceivably have ignored Complainant’s trademark <Ermenegildo Zegna>."
That upon information and belief, Respondent has no rights or legitimate interests in respect of the disputed domain name: nor has she been commonly known by the domain name nor did she do business under the domain name.
As regards the fact that the domain name was registered and is being used in bad faith, Complainant alleges that:
The default page of <ermenegildozegna.ro> does not resolve into an active website thus inferring the presence of a "passive holding" or "blocking registration" case.
Respondent registered the domain name <ermenegildozegna.ro> in order to sell it to the owner of the corresponding trademark.
In addition, Complainant informs that a second Complaint has been simultaneously submitted for the Administrative Panel’s consideration for the domain name <agnona.ro>, registered by the same Respondent (DRO2003-0005). The fact that the same Respondent secured both <ermenegildozegna.ro> and <agnona.ro> domain names in the ".ro" ccTLD is a tangible and additional indication of Respondent’s bad faith in this matter.
The Respondent did not reply to the Complainant’s contentions. Thus Respondent has failed to submit any statement. It has not contested the allegations in the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and shall draw such inferences from the Respondent’s default that it considers appropriate (paragraph 14(b) of the Rules).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain names registered by the Respondent be transferred to the Complainant:
1) the domain names are identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights;
2) the Respondent has no rights or legitimate interests in respect of the domain names;
3) the domain names have been registered and are being used in bad faith
A. Identical or Confusingly Similar
The Panel finds that the domain name <ermenegildozegna.ro> is identical to the mark ERMENEGILDO ZEGNA in which the Complainant has rights. In fact, the only difference between the domain name and the trademark is that the domain name has the suffix ".ro" at the end. Based on general principles of confusing similarity of marks and noting that the generic ccTLD indicator ".ro" cannot be taken into consideration when judging confusing similarity, the domain name <ermenegildozegna.ro> is identical and therefore confusingly similar to the mark ERMENEGILDO ZEGNA. Moreover, when taking into account the particularities of the Internet, the suffix ".ro" (the ccTLD for Romania), may increase the degree of similarity, as it leads to believe that the Complainant is doing business (or is planning to do it) in Romania using the disputed domain name.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made 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;
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent does not appear to have any connection or affiliation with the Complainant, which has not licensed or otherwise authorized Respondent to use or apply for any domain name incorporating the ERMENEGILDO ZEGNA trademark. Respondent does not appear to make any legitimate use of the domain name for her own commercial or non-commercial activities, if any. Respondent’s domain name <ermenegildozegna.ro> does not resolve to an active website and Respondent does not promote her own commercial activities, thus Respondent has not been able to become known under this domain name. Respondent has not filed any Response to the Complaint and has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name. Therefore, the Panel concludes that the absence of any legitimate use, the fact that the domain name is being offered for sale, and the Respondent’s failure to justify the use of the disputed domain name, constitutes a prima facie evidence of a lack of rights to or legitimate interests in the domain name.
Accordingly, the Panel finds that the Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
i) circumstances indicating that the holder has registered or has 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 that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
In absence of contrary evidence, the Panel finds that, given the widespread use and fame of the Complainant’s ERMENEGILDO ZEGNA trademark, the Respondent who is also located in Italy, where the Ermenegildo Zegna group has a primary market, could not have ignored Complainant’s mark ERMENEGILDO ZEGNA, when she registered the domain name <ermenegildozegna.ro>. Thus, it appears that Respondent had actual knowledge of Complainant’s trademark when she registered the disputed domain name. Actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain has been repeatedly considered an inference of bad faith in prior cases (e.g.: Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
As regards the non-use of the domain name <ermenegildozegna.ro> by Respondent, the Panel agrees with Complainant’s allegation, that in this case the "passive holding" (namely detaining the domain name without using it), infers bad faith. As established in a number of prior cases the concept of "bad faith use" in paragraph 4(b) of the Policy includes not only positive action but also passive holding. In the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concluded that inaction does not preclude a finding of "bad faith use" since what is relevant:
"…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"
The Panel in that case found for the Complainant because Complainant’s trademark was well known world-wide, while Respondent was neither using the domain name, nor had shown any good faith use or intent to use the corresponding website and it was not possible to find any legitimate use of the domain name by the Respondent.
This interpretation of "bad faith use" as including a non-justified holding of a domain name without either any activity on the corresponding website or any legitimate right in the name has then onwards been approved by a number of Panels (e.g.: Kentucky Fried Chicken International Holdings, Inc. v. Kimbeomsung, WIPO Case No. DRO2002-0004);
The Panel notes that, as affirmed by Complainant, in this case in addition to a passive holding there is the attempt of Respondent to sell the domain to Complainant for an amount that far exceeds a normal reimbursement of the costs sustained by Respondent to register and maintain the domain name. Respondent, who has registered <ermenegildozegna.ro> registered also <agnona.ro>, requested from Complainant a price of 35,000 Euro to sell these domain names and refused Complaint’s counteroffer of 2,000 Euro. The price of 35,000 Euro constitutes an amount that exceeds normal registration and transfer costs and infers that Respondent’s primary purpose when registering these domains was to sell them for a valuable consideration in excess of out-of-pocket costs directly related to the domain names. Paragraph 4(b)(i) of the Policy states that such a circumstance constitutes evidence of registration and use of a domain name in bad faith. Moreover, the fact that Respondent chose to register two domain names both corresponding to registered trademarks, combined with the attempt to sell them to the owners of the trademarks constitutes evidence of registration and use in bad faith, implying also a "pattern of conduct" from which it is presumed that Respondent’s only purpose was to register domain names corresponding to well-known trademarks in order to sell them for valuable consideration. Finally, it cannot reasonably be imagined that Respondent chose for its domain names the well-known ERMENEGILDO ZEGNA and AGNONA trademarks as a mere coincidence.
In view of all the above, Respondent’s registration and use of the disputed domain name constitutes use in bad faith within the meaning of the Policy.
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 name <ermenegildozegna.ro> be transferred to the Complainant.
Dated: August 11, 2003