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Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LaPorte Holdings, Inc. [2005] GENDND 150 (25 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LaPorte Holdings, Inc.

Case No. D2005-0030

1. The Parties

The Complainants are Consitex S.A. , Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation having place of business respectively in Stabio, Switzerland; Trivero, Biella, Italy and New York, New York, United States of America, represented by Studio Legale Jacobacci & Associati, Italy.

The Respondent is LaPorte Holdings, Inc., Los Angeles, California, United States of America.

2. The Domain name and Registrar

The disputed domain name <hermenegildozegna.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2005. On January 11, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On January 12, 2005, NameKing.com 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 January 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2005. The Respondent did not submit any Response. Accordingly, on February 9, 2005, the Center notified the Respondent’s default.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 14, 2005. 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 constitute the Ermenegildo Zegna Group which has a strong reputation all over the world in the field of fashion. The companies of the Group are the registered proprietors of a variety of service mark registrations including the following:

- ERMENEGILDO ZEGNA, Italian Marks n° TO2002C000651 in class 24 and N° T02002C000557 in class 25 filed in 1952 respectively in the name of Lanificio Ermenegildo Zegna & Figli and Consitex S.A.

- ERMENEGILDO ZEGNA, US registration N° 1033943 dated of February 17, 1976, in the name of Lanificio Ermenegildo Zegna & Figli.

- ERMENEGILDO ZEGNA, International registration n° 410571 dated of September 13, 1974, in classes 23, 24 and 25 in the name of Lanificio Ermenegildo Zegna & Figli

The disputed domain name <hermenegildozegna.com> was registered with Nameking, Inc. on October 27, 2004.

The Complainants sent a warning letter by registered mail on November 16, 2004, asking for the amicable transfer of the concerned domain name.

The Respondent has failed to respond to the current Complaint and is in default.

5. Parties’ Contentions

A. Complainant

The Complainants refer to their mark registrations including those set out above and contend that the domain name is identical or confusingly similar to the marks in which they have rights.

The fame of the ERMENEGILDO ZEGNA mark is also cited as increasing the possibility of confusion. The Complainants further state that the Respondent could not and did not ignore the existence of said marks, as the Respondent’s website directs to a search engine proposing precisely links to websites selling imported fashion products (including Ermenegildo Zegna).

Ermenegildo Zegna Group asserts that Respondent has no rights in the ERMENEGILDO ZEGNA name or mark under any of the criteria for rights and legitimate interests that are described in the Policy.

The Complainants further contend that the domain name was registered and being used in bad faith, as:

- The Respondent apparently is located in the United States, the main location for the Complainants’ sales,

- The Respondent attracts Internet users to its website and then redirects them to other commercial websites not associated with Ermenegildo Zegna.

The Complainants also pointed the fact that the Respondent did not answer to their letter of cease and desist.

B. Respondent

The Respondent did not reply to the Complainants’ contentions and has neither made any submissions or whatsoever after the Notification of Respondent Default. It is thus in default.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The Domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainants have demonstrated that they own worldwide mark rights on the mark ERMENEGILDO ZEGNA.

The first circumstance that must be given is that the domain name may be considered to be identical or confusingly similar to the ERMENEGILDO ZEGNA marks on which the Complainants hold rights. In fact, the contested domain name fully incorporates the mark ERMENEGILDO ZEGNA with the mere addition of the letter “h” in first position, which is mute.

It is well established that when a domain name incorporates a Complainants’ registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The Panel has made a comparison of the domain name at issue and the Complainants’ mark ERMENEGILDO ZEGNA, and finds that that the second level domain name <hermenegildozegna.com>, is identical nearly letter-by-letter to the concerned marks. The addition of the letter “h” and of the suffix “. com” -a generic top-level domain intended for commercial organizations- makes it rather difficult not to find confusing similarity with said service mark.

In particular, regarding the addition of the suffix “.com”, it has been held in many UDRP decisions that such an inclusion is due to the current technical specificities of the domain name system. Therefore, said difference should not be taken into account in order to evaluate the identity or similarity between the disputed domain name and the Complainants’ mark (A & F Mark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc. et al., WIPO Case No. D2003-0172, or Wild West Domains, Inc. v. Neo Jung WIPO Case No. D2004-0243).

In the view of the Panel, the disputed domain name and the Complainants’ mark are almost indistinguishable, particularly because the additional letter at the beginning of the disputed domain name does not change the pronunciation of the sign. Whether considered phonetically or visually, the two are extremely similar. Based on the objective test of likelihood of confusion, such a similarity is confusing.

As a consequence of what has been stated, the Panel considers that the domain name is confusingly similar to the marks ERMENEGILDO ZEGNA owned by the Complainant. Therefore, the Panel considers that the condition set out by Paragraph 4(a)(i) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out examples of what a Respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.

“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no mark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark or service mark at issue.”

The Panel has carefully considered the allegation of the Complainants as to the lack of rights or legitimate interests of the Respondent in respect of the domain name.

Far from having made a lawful use of the domain name, the Respondent redirects it to the web pages of third parties, doing similar activities to those of the Complainant, but that is unrelated to Respondent (Microsoft Corporation v. Superkay Worldwide, Inc., WIPO Case No. D2004-0071). That would definitively not represent a legitimate interest. On the contrary, the Complainant provided evidence that the Respondent has used the domain name with the intent to misleadingly divert the public looking for the Complainants’ website.

The Panel gives particular weight to the fact that Respondent defaulted. It can be inferred that by defaulting, the Respondent showed nothing else but an absolute lack of interest on the domain name. And in the absence of a Response, it is truly difficult to conclude about the legitimate interest of the Respondent, especially when the Respondent has linked the domain name to other websites.

Therefore, the Panel finds that the Respondent has no rights to or legitimate interests on the domain name at issue.

Furthermore, it is improbable that the Respondent is using the well-known mark ERMENEGILDO ZEGNA without having it in mind when registering the domain name and in order to make a bona fide offering of goods and services.

The Respondent has not used the domain name in connection with a bona fide offering of goods or services or in a legitimate non-commercial or fair use. Previous UDRP decisions have considered that the fact of diverting Internet users seeking Complainants’ website to a Respondent’s website is not enough to show a bona fide offering (Bank of America Corporation v. Northwest Free Community Access, FA 180704, NAF, September 30, 2003, stating “Respondent’s demonstrated intent to divert Internet users seeking Complainants’ website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services”).

The Panel is of the opinion that there is no relation between the Respondent and the Complainants and, that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainants’ mark under any circumstance.

Therefore, the Panel finds that the conditions set out by Paragraph 4(a)(ii) of the Policy has been met by the Complainants.

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 mark 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 mark 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 Complainants’ 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.

It should be noted that the circumstances of bad faith are not limited to the above.

As previously stated by the Panel, the Respondent appears to have no legitimate interest in the domain name.

Given the high degree of recognition of Complainants’ mark ERMENEGILDO ZEGNA, and that the Complainants actively exploit the mark in Respondent’s country of residence, given the similarity between Complainants’ mark and the domain name at issue and given the fact that Respondent is offering links to other websites selling similar products on his website, the Panel is of the opinion that Respondent has been aware of Complainants’ mark at the time of the registration of the contested domain name. Besides, as previously stated, it is improbable that the Respondent is using the well-known mark Ermenegildo Zegna without having it in mind when registering the domain name and in order to make a bona fide offering of goods and services.

The Panel considers that there are sufficient elements in the Complainants’ evidence which demonstrate bad faith registration and use.

It is clear that the Complainant is well-known worldwide and has a significant portfolio of international marks in the field of fashion. The Complainants’ submissions on the strength of the ERMENEGILDO ZEGNA mark are entirely uncontested.

The Respondent did not even provide evidence of actual or contemplated good faith use.

The disputed domain name is so close and similar to the Complainants’ marks that it may be regarded as ‘typosquatting’. The Respondent might have rebutted this point by offering a detailed explanation as to its choice of name but seems to have chosen not to do so.

Given that the Complainants’ marks are well-known worldwide and have effect in many countries, and given that the Complainants’ marks covers similar goods to those which the Respondent claimed to provide, it is difficult to conceive of a use of the disputed domain name by the Respondent that would not cause consumer confusion or alternatively infringe the Complainants’ mark. The Respondent’s failure to offer any explanation or reply as to its actual or proposed use of the disputed domain name is again a significant factor for bad faith.

Thus, consumers and Internet users will be confused and misled into thinking that the contested domain name belongs to the Complainants and directs to their official’s website. Said risk of confusion does increase in the present case as, according to what has been stated above, the ERMENEGILDO ZEGNA marks are notorious all over the world, and including also where the Respondent does apparently reside.

Moreover, there is evidence that the Respondent is systematically involved in this behaviour, it is very renown for its activities of registration of domain names corresponding to well-known registered marks, further circumstantial evidence of bad faith (Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPOCase No. D2004-0707. These cases could indicate a pattern of bad faith conduct (Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings WIPO Case No. D2004-0971).

Therefore, the Panel finds that the conditions set out by Paragraph 4(a)(iii) of the Policy has been met by the Complainants.

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 name, <hermenegildozegna.com>, be transferred to the Complainant Consitex S.A..

Nathalie Dreyfus
Sole Panelist

Dated: February 25, 2005