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Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A.,Ermenegildo Zegna Corporation v. Ms. Patricia Chung [2004] GENDND 1103 (27 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung

Case No. D2004-0490

1. The Parties

The Complainants are Consitex S.A., a Swiss company having a registered office inStabio, Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A. an Italian company having a registered office in Trivero, Biella, Italy, and Ermenegildo Zegna Corporation, a corporation having a registered office in New York, United States of America. The Complainants are represented by Studio Legale Jacobacci e Associati, Torino, Italy.

The Respondent is Ms. Patricia Chung, of Santiago, Chile.

2. The Domain Name and Registrar

The disputed domain name <dizegna.com> is registered with Register.com.

3. Procedural History

The Complaint is dated July 2, 2004. The Complaint states that a copy of the Complaint (without enclosures) was sent by email to the WIPO Arbitration and Mediation Center (the “Center”), a second copy by telefax, and a third copy (original and four duplicate copies, with enclosures) was sent to the Center by registered mail. The Complaint also states that a copy of the Complaint was sent by registered express mail to Register.com, Inc. The Center confirms that the Complaint was received on July 2, 2004, and that on July 2, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On July 2, 2004, the Legal Assistant of Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details for administrative, billing, and technical contact. The Legal Assistant was not able to confirm receipt by Register.com of a copy of the Complaint.

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”), noting that Register.com did not confirm receipt of the Complaint.

WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(b) provides that “The Complainant shall provide a copy of the complaint to the concerned Registrar(s) at the same time as it submits its complaint to the Center.” The panel accepts that the Complaint was provided to the Registrar in accordance with the Supplemental Rules, but recommends that in future a copy of the Complaint be served on the Registrar by email as well as by registered mail, contemporaneously with transmission of the Complaint to the Center.

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 July 12, 2004. The due date for Response was August 1, 2004 as required by the Rules, paragraph 5(a). The Respondent did not submit any response. Accordingly, the Center notified the Respondent concerning her default by email on August 2, 2004.

The Center appointed Daniel R. Bereskin, QC as the Sole Panelist in this matter on August 6, 2004. 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 Complainants are part of the Zegna Group, and allege they are an “internationally well-known group in the field of fashion.” They have shown that they are the owners of several hundred registered trademarks throughout the world consisting of the word ZEGNA. The registrations principally cover clothing, shoes, tissues, fabrics, fashion accessories, belts, watches, jewellery, fragrances, and services in the field of fashion fabrics. In addition, the Complainants have specifically relied on the following registrations, copies of which were attached to the Complaint:

• Italian registration No. 882107 for “ZEGNA,” the first application for which dates from 1939;

• U.S. registration for “ZEGNA” No. 941,547;

• U.S. registration for “ZEGNA” No. 1,258,643; and

• Chilean registration for “ZEGNA” No. 629761.

The Panel was not directed to any trademark registration in any country consisting of DI ZEGNA or DIZEGNA, although the Complaint states that Zegna products include a fragrance called ESSENZA DI ZEGNA and unspecified others. No evidence was submitted in support of this allegation.

Although the Complaint states that a “cursory Altavista or Google search would easily confirm” that “ZEGNA is a world famous trademark,” the Complainants did not submit any evidence in support of this allegation. It is not the responsibility of the Panel to uncover evidence to support allegations contained in the Complaint, any more than it is the responsibility of the Panel to perfect the pleadings: Jones Apparel Group, Inc. v. jonesapparelgroup.com, WIPO Case No. D2001-0719; Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003. That said, Paragraph 10(a) of the Rules allows the Panel to look for information on the Internet that may be relevant to the dispute: Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. A Google search reveals more than 300,000 hits for the word ZEGNA, and a brief survey of some of these hits reveals that in the overwhelming majority of cases, they are associated with the Complainants’ business.

The domain name <dizegna.com> was registered on June 5, 2001, and currently resolves to a place-holder. There is no evidence before the Panel that the web page ever contained any other content.

By letter dated September 15, 2003, attorneys representing the Complainants wrote to the Respondent demanding that the domain names <dizegna.com> and <dizegna.cl> be transferred to them without cost. In a letter dated December 26, 2003, a copy of which was filed on behalf of the Complaintants, Sr. Carlos Urquieta Salazar, an attorney for the Respondent offered on her behalf to sell these domain names for the sum of nine million Chilean pesos (equivalent to Euro 12,209). This sum was said to be justified by the costs incurred by the Respondent in creating a website. The letter also offered an explanation concerning the origin of the domain name <dizegna.com>. The Panel has determined that letters exchanged by counsel in Chile are admissible in legal proceedings, even if they are part of settlement negotiations.

5. Parties’ Contentions

A. Complainants

In summary, the Complainants assert that:

• the domain name <dizegna.com> is confusingly similar to the trademark ZEGNA owned by the Complainants, and that, if anything, the addition of the word “di” adds to the confusion; and

• there is no evidence of the Respondent’s use, or preparation to use the domain name in connection with the bona fide offering of goods and/or services, and therefore the Respondent has no rights to or legitimate interests in the domain name, and

• “there is no way that Respondent may not have been aware of the famous trademark ZEGNA of Complainants, and registration may only have occurred in bad faith” (Complaint, article 9(b)).

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

The trademark ZEGNA and related trademarks such as ERMENEGILDO ZEGNA have been the subject of numerous UDRP decisions, including Consitex S.A. et al v. Ocxon Media S.A., WIPO Case No. D2001-0128; Consitex S.A. et al v. Mr. Mario Giovanni Mario, WIPO Case No. D2003-0699; Consitex S.A. v. Mr. Lian Ming, WIPO Case No. D2003-0266; Consitex S.A. et al Mr. Ignazio Strano, WIPO Case. No. DCC2003-0004; Consitex S.A. et al v. Piero Gerolanda, WIPO Case No. DLA2003-0006; Consitex S.A. c. Mattia Gerolanda, WIPO Case No. D2003-0752; Consitex S.A. c. Tatiana Gerolanda, WIPO Case No. D2003-0753; Consitex S.A. et al v. Mr. Christopher  C.  Gramly et al, WIPO Case No. D2004-0416, and Consitex et al v. Giuseppe Strano, Cepani Case No. 44038 (Belgium). In a number of these cases, it was found that the trademark in issue was well-known.

As indicated above, a search of the Internet for the name Zegna reveals a large number of hits, virtually all of which are connected with the Complainants. As Zegna appears to be a surname, albeit an uncommon one, it is not surprising that there are a few references to persons of that surname, but the overwhelming number of references are to the Complainants. On the other hand, the Complainants have offered no evidence concerning the notoriety of the ZEGNA trademark in Chile, and the Panel has not been able to determine the level of notoriety the trademark ZEGNA enjoys in Chile based on Internet searches.

UDRP case law makes it clear, and ordinary fairness requires that the Panel may not find in favour of a Complainant merely because the Respondent is in default: Consitex S.A. et al v. Ocxon Media S.A.., WIPO Case No. D2001-0128 and Cortefiel, S.A. v. Miguel Garcia Quintax, WIPO Case No. D2000-0140.

That said, Paragraph 14 of the Rules provides that the Panel may draw such inferences from the default of a party as it considers appropriate. In assessing the inferences to be drawn from the Respondent’s default, the Panel has taken into consideration the letter from Sr. Carlos Urquieta Salazar dated December 26, 2003. This letter does not refer to any actual commercial use of the name DIZEGNA by the Respondent, nor to any credible steps taken by the Respondent to do so, but does argue that the word “dizegna” derives from the Spanish verb “diseñar,” a contention disputed by the Complainants. As the domain name registration was issued on June 5, 2001, the failure to demonstrate use or to provide convincing evidence that active steps have been taken to commence use, are circumstances that should be taken into account.

A. Identical or Confusingly Similar

The trademark ZEGNA possesses a high degree of inherent distinctiveness. The Panel has taken into account the decisions referred to above, which in every case but one, found that the disputed domain name was confusing with ZEGNA or a related mark. The Complainants have no control over the manner in which the domain name in dispute, <dizegna.com> is used and it is conceivable that this name could be used so as to cause, or be likely to cause confusion.

In view of this, it is not surprising that many previous cases have adopted a literal approach in determining whether a mark is similar to a domain name registration: Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc. WIPO Case No. D2002-0787; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Gateway, Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.), WIPO Case No. D2000-0109; America Online Inc. v. Anson Chan, WIPO Case No. D2001-0004; Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2001-0491, and Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745.

The dominant part of “dizegna” is the word “zegna.” The Complainants argue that the addition of “di” increases the likelihood of confusion, and in this they have some support in cases such as Revlon Consumer Products Corporation v. Brandy Farris WIPO Case No. D2003-0291; Nokia Corporation v. Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102. On the other hand, in the letter dated December 26, 2003, counsel for the Respondent stated that <dizegna.com> derives from the Respondent’s business name Dizegna Comunicaciones, whose alleged business is to produce designs. Counsel further stated that the letter “z” was substituted for the letter “s” to give the word “some originality” and ñ was changed to “gn” because it would not have been possible to register a domain name comprising “ñ.”

In the absence of cross-examination, it is difficult to determine the reliability of this explanation, but on the other hand, it is conceivable, depending on the context, that “dizegna” might be perceived otherwise than as an obvious modification of “zegna.” The Panel notes, for example, that the domain name <disegna.com> has been registered by F.lli Campagnolo S.p.A., another renowned Italian company, who have also registered DISEGNA as a Community trademark, No. 003616091 in class 25 for articles of clothing, footwear and headgear. Thus, DISEGNA would not appear to be confusing with ZEGNA even for similar goods, whereas the Complainants argue that DIZEGNA is confusing with ZEGNA irrespective of its field of use.

All this said, ZEGNA is a well-known if not famous name, and ZEGNA is the most important component of DIZEGNA. The Panel therefore finds, not without some hesitation, that the disputed domain name <dizegna.com> is confusingly similar to the trademark ZEGNA for the purposes of this proceeding..

B. Rights or Legitimate Interests

The Panel has found no evidence that the Respondent has any bona fide commercial interest in the disputed domain name <dizegna.com>. The Complainants assert that they found no commercial listing in Chile of the business name DIZEGNA, and no evidence has been tendered of any of the other factors to be taken into account in assessing this issue, as required by Paragraph 4(c) of the Policy. The Panel therefore finds that the Respondent does not have any right or legitimate interest in the disputed domain name <dizegna.com> pursuant to Paragraphs 4(a)(i) and (ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists examples of circumstances that justify a finding of registration and use in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

An allegation of bad faith registration and use is tantamount to an allegation of dishonesty. Therefore, the Panel must be vigilant to ensure that there is adequate evidence to support this conclusion. That is so irrespective whether the Respondent chooses to defend. The Respondent’s default should not be taken as an admission of bad faith registration and use in the absence of facts supporting this conclusion.

There is no evidence that the Respondent is guilty of any of the offences defined in subparagraphs (ii), (iii) and (iv) of Paragraph 4(b) of the Policy. The issue to be decided, therefore, is whether subparagraph (i) applies. In this regard, it is clear that the Complainants must prove that, at the time of registration, the Respondent’s intention was to sell or otherwise deal with the domain name to her financial advantage: The Wiggles Touring Pty Ltd. v. Thompson Media Pty Ltd., WIPO Case No. D2000-0124.

The Complainants have been parties to numerous UDRP proceedings, some of which are cited above, and in the overwhelming number of cases, they have been successful in obtaining an order requiring transfer of the disputed domain name. Their position in this proceeding is similar to the position they have taken in other proceedings, that ZEGNA is such a world famous trademark, there is no credible explanation for its registration and use by the Respondent other than that she intended to benefit improperly from such registration.

In cases where the disputed domain name consists of the words ermenegildozegna or variants thereof, or of the registered mark ESSENZA DI ZENGA, it is reasonable to be highly suspicious of the motives of the person who registered the disputed domain name. On the other hand, there may be circumstances where it is not possible to so conclude. An example is Consitex S.A. v. Mr. Christopher C. Gramly et al, WIPO Case No. D2004-0416, where the Panel declined to find bad faith registration and use of the domain name <zegnatronic.com>. In the Zegnatronicis case, the Respondent contested the complaint, and offered an explanation as to the reason for his adoption and use of this domain name. As in the present case, no evidence was adduced by the Complainants in the Zentronics case to prove that their mark is famous throughout the world, the Respondent made no attempt to evade service, and the domain name resolved to a parking page, as is the case here.

It is clear from the facts of this case, that the Respondent, through her counsel, offered to sell the domain name <dizegna.com> for an amount of money that is substantially in excess of the cost of acquisition of the domain name. This was justified by her counsel on the grounds that two domain names were involved, <dizegna.cl> as well as <dizegna.com>, and that these names were valuable in her intended line of business. In addition, counsel relied on certain start-up costs, the relevance and credibility of which the Complainants seriously questioned.

There are numerous cases where a demand for a significant amount of money has contributed strongly to the Panel’s finding of bad faith. These include the following: Tracy Marrow p/k/a “ICE-T” v. iceT.com a/k/a Sverrir Geirmundsson WIPO Case No. D2000-1234; Television Française 1 v. The Fork 1, WIPO Case No. D2000-0747; Gambro AB, Gambro Lundia AB and Gambro Healthcare, Inc. v. Family Health & Wellness Center, WIPO Case No. D2001-0447; and J C Bamford Excavators Limited v. MSD (Darlington) Limited, WIPO Case No. D2001-1484. On the other hand, there are numerous cases where bad faith has not been found in cases where significant amounts of money were demanded by or on behalf of the Respondent. These include the following: Rogers Cable Inc v Arran Lal, WIPO Case No. D2001-0201; and Banco Atlántico, S.A. v. Infomax 2020, S.L., WIPO Case No. D2000-0795 citing WIPO Case No. D2000-0046. In these cases and others, the Respondent was found to have a legitimate interest in the domain name, and therefore the demand for money per se was found not to be evidence of bad faith. In this case, the Panel has found that the Respondent has no legitimate interest in the domain name by reason of her failure to effect commercial use of the domain name, but on the other hand, there is no evidence before this Panel that the trademark ZEGNA is sufficiently well-known in Chile to justify an assumption that the Respondent’s motive in obtaining registration was to profit from the sale or other disposition of the domain name, taking into account the explanation of the Respondent’s counsel as to the reasons why <dizegna.com> and <dizegna.cl> were registered, and the apparent coexistence of DISEGNA and ZEGNA. It is therefore difficult for the Panel to conclude, based on a comparison of the marks alone, that the Respondent’s counter-offer to sell the domain name is sufficient evidence of bad faith.

The Complainants have relied strongly on the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case, the Respondent was held to have acted in bad faith even although the disputed domain name was merely held passively. In Telstra, the Panel supported its conclusion that passive holding could be considered as evidence of bad faith use on the basis of the following factors:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

In the present case, there is no evidence before the Panel concerning the fame of the Zegna trademark in Chile; the Respondent has taken no active steps to conceal her identity and on the contrary retained an attorney to represent her; the Respondent has not provided false contact details, and the trade name used by the Respondent in its registration, Dizegna Communicaciones, conceivably relates to a business activity unconnected with that of the Complainants, even though the Complainants dispute that this name has ever been used commercially. Further, there is no evidence that the Respondent has engaged in any other cybersquatting activity, and unlike the situation in Telstra, the trademarks here are not identical.

The Panel therefore has concluded that bad faith registration and use of the domain name <dizegna.com> has not been proved against this Respondent.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Daniel R. Bereskin, QC
Sole Panelist

Dated: August 27, 2004