Ermenegildo Zegna Corporation v. Maria
Antonietta Lo Prete
Claim Number: FA0308000192247
PARTIES
Complainant
is Ermenegildo Zegna Corporation,
New York, NY (“Complainant”) represented by Dr. Massimo Introvigne, of Studio Legale Jacobacci & Associati. Respondent is Maria
Antonietta Lo Prete, Rome, Italy (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <ermenegildo-zegna.us>,
registered with Key-Systems GmbH.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Louis
E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 29, 2003; the Forum received a hard copy of the
Complaint on August 29, 2003.
On
Septmber 4, 2003, Key-Systems GmbH confirmed by e-mail to the Forum that the
domain name <ermenegildo-zegna.us>
is registered with Key-Systems GmbH and that Respondent is the current
registrant of the name. Key-Systems
GmbH has verified that Respondent is bound by the Key-Systems GmbH registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with the U. S. Department of Commerce’s usTLD
Dispute Resolution Policy (the “Policy”).
On
September 10, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 30, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of
the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 7, 2003, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed Louis E. Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any Response from
Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
1. Respondent’s <ermenegildo-zegna.us> domain name is confusingly similar to
Complainant’s ERMENEGILDO ZEGNA mark.
2. Respondent
does not have any rights or legitimate interests in the <ermenegildo-zegna.us> domain name.
3. Respondent registered and/or used the <ermenegildo-zegna.us> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant is famously known within the
international fashion industry.
Complainant’s international headquarters are located in Italy,
Respondent’s country of residence. Complainant
holds several registrations for the ERMENEGILDO ZEGNA mark with the U.S. Patent
and Trademark Office (“USPTO”) including Reg. Nos. 1,011,590 (registered on May
27, 1975) and 1,033,943 (registered on February 17, 1976). Complainant first used the ERMENEGILDO ZEGNA
mark in commerce in 1938.
Respondent registered the <ermenegildo-zegna.us> domain
name on June 4, 2003. The domain name
resolves to a website under construction but the record does not show
demonstrable preparations to use to the domain name.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent 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 or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established rights in the
ERMENEGILDO ZEGNA mark through registration with the USPTO. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that UDRP Panel decisions have held that registration of a mark
is prima facie evidence of validity,
which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
Respondent’s <ermenegildo-zegna.us> domain name is confusingly similar to
Complainant’s mark because the disputed domain name fully incorporates the
ERMENEGILDO ZEGNA mark and merely adds a hyphen between the two words of the
mark and adds the country-code “.us.”
The Panel concludes that the addition of the hyphen and the country-code
“.us” to Complainant’s mark is insufficient to distinguish the domain name from
the ERMENEGILDO ZEGNA mark. See InfoSpace.com, Inc. v. Tenenbaum Ofer,
D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name
‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features”); see also
Easyjet
Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it
obvious that the domain name <easy-jet.net> was virtually
identical to Complainant's EASYJET mark and therefore that they are confusingly
similar); see also Tropar Mfg. Co. v. TSB, FA 127701
(Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the
country-code “.us” fails to add any distinguishing characteristic to the domain
name, the <tropar.us> domain name is identical to Complainant’s TROPAR
mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent’s failure to develop a website
for the <ermenegildo-zegna.us>
domain name and failure to provide evidence that Respondent has made
preparations to use the domain name are evidence that Respondent lacks rights
or legitimate interests in the <ermenegildo-zegna.us>
domain name. See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there was
no proof that Respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before notice
of the domain name dispute, the domain name did not resolve to a website, and
Respondent was not commonly known by the domain name).
Furthermore, due to Respondent’s failure
to contest the allegations of the Complaint, the Panel may conclude that
Respondent lacks rights or legitimate interests in the <ermenegildo-zegna.us> domain name. See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
In addition, the record fails to
establish that Respondent is commonly known by the <ermenegildo-zegna.us> domain name or the
ERMENEGILDO-ZEGNA.US mark. Respondent
was not licensed or authorized to register or use domain names that incorporate
Complainant’s mark. Also, Respondent is
not an owner or beneficiary of a trade mark or service mark that is identical
to the domain name. Therefore, the
Panel concludes that Respondent lacks rights or legitimate interests in the
disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was
not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name); see also Tercent, Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
It can be inferred that Respondent had
actual or constructive knowledge of Complainant’s rights in the ERMENEGILDO
ZEGNA mark because Complainant’s international headquarters are located in
Respondent’s country of residence, the mark is registered with the USPTO, and
the mark is internationally recognized.
Registration of a domain name, despite knowledge of Complainant’s
rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that
Respondent had actual and constructive knowledge of Complainant’s EXXON mark
given the worldwide prominence of the mark and thus Respondent registered the
domain name in bad faith); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof”).
Also, due to the international
recognition of Complainant’s mark and the fact that the domain name is
practically identical to the ERMENEGILDO ZEGNA mark with the exception of the
hyphen and “.us,” it is inconceivable that Respondent could use the domain name
in a manner that would not infringe upon Complainant’s rights and cause confusion
to Internet users. Therefore, the Panel
concludes that it would be irrational to wait until Respondent uses the domain
name before the Panel determines the domain name to be registered or used in
bad faith. See Phat Fashions v. Kruger, FA 96193 (Nat.
Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even
though Respondent has not used the domain name because “[I]t makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such use, it will create the confusion described in the Policy”); see
also Alitalia –Linee Aeree Italiane
S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith
where Respondent made no use of the domain name in question and there are no
other indications that Respondent could have registered and used the domain
name in question for any non-infringing purpose).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Complainant
having established all three elements required under the usTLD Policy, the
Panel concludes that relief should be GRANTED.
Accordingly,
it is Ordered that the <ermenegildo-zegna.us>
domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 14, 2003
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