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Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Srinivas Tatapudi [2005] GENDND 307 (18 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Srinivas Tatapudi

Case No. D2005-0229

1. The Parties

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

The Respondent is Srinivas Tatapudi, of Farmington Hills, Michigan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <zegnas.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2005. On March 2, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. eNom 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 March 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2005.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 7, 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

Complainants are three companies constituting the Zegna group of companies: Consitex S.A., a Swiss company with registered office at Via Ligornetto, Stabio, Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company with registered office at Via Roma Trivero, Biella, Italy; and Ermenegildo Zegna Corporation, a U.S. corporation with registered office in New York, New York, United States of America. These companies (hereinafter collectively “the Zegna Group”).

The Zegna Group is an internationally well-known group in the field of fashion and the owner of many trademarks including the word ZEGNA e.g.

- Italian application “ZEGNA” No. T0990002257, whose first application dates back to 1939;

- U.S. registration “ZEGNA” No. 941547 of 1971;

- International registration “ZEGNA” No. 176867;

- Community trademark registration “zegna” No. 342899 of 1996.

5. Parties’ Contentions

A. Complainants

Complainants claim that:

The domain name <zegnas.com> is confusingly similar to the trademarks ZEGNA owned by Complainants. According to Complainants, in current fashion parlance the use of “‘s” to indicate a fashion house’s activities is quite common. “Zegna’s” is used to indicate Zegna’s activities in the fashion field, and may only be perceived by consumers as referred to Complainants. Since the character <‘> cannot be used in domain names, <zegnas.com> is the domain name equivalent of “zegna’s”. Zegna’s or zegnas are so similar to ZEGNA that they are confusingly similar to the Complainants trademark.

A cease and desist letter sent by registered mail on January 25, 2005, and anticipated by e-mail was not answered, thus confirming Respondent’s unwillingness to deal fairly with the Zegna Group’s trademark rights.

Complainants have filed their Complaint in order to protect their marks and stop Respondent’s bad faith conduct.

B. Respondent

The Respondent did not formally reply to the Complainants’ contentions. His e-mail dated March 21, 2005, does not meet the criteria a response should meet according to paragraph 5 of the Rules and the Panel notes there is no evidence attached to the said e-mail correspondence from the Respondent.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainants have proven that the contested domain name <zegnas.com> is identical or confusing similar to the name, trademarks and service marks of Complainants.

The confusing similarity of the contested domain name <zegnas.com> to Complainants’ trademarks and service marks is apparent from a simple visual comparison. The disputed domain name is a replica of Complainants’ names and marks. The phrase “zegnas.com” does not have any generic meaning in any European language.

Respondent’s registration and use of the domain name <zegnas.com> is certain to confuse consumers looking for information related to customer products and services provided by Complainants.

The disputed domain name <zegnas.com> is similar to other trademarks owned legally by Complainants. This is sufficient to satisfy the requirement that the domain name in question be confusingly similar to a mark in which Complainants have rights.

The Panel therefore finds that the domain name <zegnas.com> is confusingly similar to Complainants’ trademark and as a consequence, the action brought by Complainants meets the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Based on the casefile, the Panel notes the following:

(1) Respondent is not Complainants’ licensee in any respect, nor is Respondent authorized to use Complainants’ marks. There is no evidence in the case file that Respondent has been commonly known by the contested domain name, nor that the Respondent runs any enterprise commonly or legitimately known by the contested domain name.

(2) There is no evidence 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. Respondent has not submitted evidence of use of the domain name in connection with courses and other activities in the PMP and RUP fields. Whilst these courses may be offered in good faith, the use of a domain name confusingly similar to ZEGNA in order to attract Internet users is not.

(3) Respondent was given the opportunity to contest the case against him. However, Respondent did not submit any evidence that would demonstrate that he has any rights to, or legitimate interests in the domain name <zegnas.com>.

The Panel therefore infers that Respondent has no rights to, or legitimate interests in the domain name <zegnas.com>. The Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled.

C. Registered and Used in Bad Faith

Based on the case file, the Panel notes:

(1) Complainants are the owners of many trademarks including the word ZEGNA.

(2) The domain name seems to be used in bad faith. Respondent capitalizes on the worldwide fame of ZEGNA to attract users which are then redirected to a number of both non-commercial and commercial courses, events, and websites, none of them associated with the Zegna Group.

(3) Respondent must have been aware of the famous trademarks ZEGNA of Complainants, and registration may only have occurred in bad faith. Its domain name is so obviously connected with such a well-known tradmark that its very use by someone with no connection with the product suggests bad faith.

(4) Paragraph 4(b) of the Policy sets out four circumstances, without limitation, that demonstrate bad faith including that “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.”

(5) In the absence of evidence to the contrary, the Panel finds that Respondent knew of or should have known of the Complainants’ trademark and services at the time Respondent registered the Domain name given the widespread use and fame of the Complainants’ ZEGNA mark. In this case Respondent, located as he is in the United States, the main location for Complainants’ sales, could not ignore Complainants’ ZEGNA trademarks.

(6) Respondent may have used many other domain names - not similar to ZEGNA - in order to conduct its activities.

(7) As a result, the Panel finds that the domain name <zegnas.com> was registered and is used by Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.

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 <zegnas.com> be transferred to the Complainants.

Piotr Nowaczyk
Sole Panelist

Dated: April 18, 2005