DECISION

 

Consitex S. A. v. Piero Gerolanda

Claim Number: FA0310000205700

 

PARTIES

Complainant is Consitex S.A. (“Complainant”) represented by Massimo Introvigne of Studio Legale Jacobacci & Associati, Corso Regio Parco 27, 10152 Torino, Italy. Respondent is Piero Gerolanda, Via Sandro Pertini 10, 92100 Agrigento, Italy (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <essenzadizegna.us>, registered with Key-Systems GmbH.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 27, 2003; the Forum received a hard copy of the Complaint on October 29, 2003.

 

On November 4, 2003, Key-Systems GmbH confirmed by e-mail to the Forum that the domain name <essenzadizegna.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 November 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 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 December 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 <essenzadizegna.us> domain name is confusingly similar to Complainant’s ERMENEGILDO ZEGNA ESSENZA DI ZEGNA mark.

 

2.       Respondent does not have any rights or legitimate interests in the <essenzadizegna.us> domain name.

 

3.      Respondent registered and/or used the <essenzadizegna.us> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Zegna and Ermenegildo Zegna are internationally famous in the fashion field. Within the Zegna group, Complainant supervises the production of fragrances and cosmetics. Essenze di Zegna is Complainant’s main product in the field of fragrances.

 

Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ERMENEGILDO ZEGNA mark (Reg. No. 1,011,590 registered on May 27, 1995) related to knitted outerwear, namely hosiery, shirts and blouses. Complainant also holds a trademark application with the USPTO for the ERMENEGILDO ZEGNA ESSENZA DI ZEGNA mark (Ser. No. 78,211,954 filed on February 6, 2003) related to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

 

Respondent registered the <essenzadizegna.us> domain name on June 4, 2003. Respondent is using the disputed domain name to divert Internet users to a website that offers for sale a “hot, wild & obscene eau de parfume” called “Obscene.”

 

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 that it has rights in the ERMENEGILDO ZEGNA ESSENZA DI ZEGNA mark through its pending trademark application with the USPTO. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the UDRP Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

 

Complainant contends that Respondent’s <essenzadizegna.us> domain name is confusingly similar to Complainant’s ERMENEGILDO ZEGNA ESSENZA DI ZEGNA mark because the disputed domain name appropriates Complainant’s mark and omits the words “Ermenegildo Zegna” from the mark. The Panel concludes that the omission of these words does not significantly differentiate the domain name from the mark for purposes of Policy ¶ 4(a)(i). See Hammond Suddards Edge v. Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name <hammondsuddards.net> is essentially identical to Complainant's mark, Hammond Suddards Edge, where the name “Hammond Suddards” identifies Complainant independently of the word “Edge”); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s Asprey & Garrard and Miss Asprey marks).

 

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Respondent has not come forth to challenge Complainant’s allegations. Accordingly, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

 

Furthermore, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the <essenzadizegna.us> domain name. When Complainant asserts a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights to or legitimate interests in the domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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).

 

Respondent is using the disputed domain name to divert Internet users to a website that offers for sale a “hot, wild & obscene eau de parfume” called “Obscene.” Respondent’s use of the <essenzadizegna.us> domain name, a domain name confusingly similar to Complainant’s mark, to offer goods in competition with Complainant’s business does not establish a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

 

Moreover, Respondent has proffered no proof and there is no evidence in the record to indicate that Respondent is the owner or beneficiary of a mark identical to the disputed domain name or that Respondent is commonly known by either ESSENZA DI ZEGNA or <essenzadizegna.us>. Accordingly, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name with regard to Policy ¶¶ 4(c)(i) and (iii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting UDRP ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established.

 

Registration and Use in Bad Faith

 

Respondent’s unauthorized commercial use of a domain name confusingly similar to Complainant’s mark to sell products in competition with Complainant demonstrates Respondent’s bad faith registration and use of the <essenzadizegna.us> domain name because Respondent’s intentional attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark is evidence of bad faith under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).

 

Furthermore, the Panel presumes Respondent had actual or constructive knowledge of Complainant’s rights in its mark when Respondent registered the <essenzadizegna.us> domain name because of the international fame of the mark. The registration and use of a domain name, despite actual or constructive knowledge of the mark holder’s rights, evidence bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

 

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 <essenzadizegna.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

John J. Upchurch, Panelist

Dated: December 14, 2003

 

 

 

 

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page