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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Jil Sander, SML Limited, and Sandy Inc.

Case No. D2008-1335

1. The Parties

The Complainants are Consitex S.A. of Switzerland, Lanificio Ermenegildo Zegna & Figli S.p.A. of Italy, and Ermenegildo Zegna Corporation of the United States of America, represented by Paolo Orlandi, Switzerland.

The Respondents are Jil Sander of the United Kingdom of Great Britain and Northern Ireland, SML Limited of the People’s Republic of China, and Sandy Inc. of the People’s Republic of China.

2. The Domain Names and Registrars

The disputed domain names are <zegnas.info> and <zegnasport.info>. Both are registered with GoDaddy.com, Inc. (“GoDaddy”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September 1, 2008 naming Jil Sander as Respondent. On September 2, 2008, the Center transmitted by email to GoDaddy a request for registrar verification in connection with the disputed domain names. On September 9, 2008, GoDaddy transmitted by email to the Center its verification response disclosing registrant and contact information for each of the disputed domain names that differed from that in the Complaint. The Center sent an email communication to Complainants on September 9, 2008 providing the information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on September 30, 2008. The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 October 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2008.

The Center appointed Debra J. Stanek as the sole panelist in this matter on November 11, 2008. 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 affiliated companies in the field of fashion. Complainants have, for many years sold clothing, shoes, accessories, and other related goods and services under trademarks that include the name “Zegna.” Various of the Complainants own trademark registrations in Italy, the United States, and Community Trademarks, for “Zegna” marks, including: ERMENEGILDO ZEGNA (dating to 1953), ZEGNA (dating to 1939), ZEGNASPORT (dating to 2005).

The disputed domain names were registered on January 19, 2007. At the time the Complaint was filed, each of the disputed domain names resolved to a website that displayed a search page that provided links to a variety of goods and services. Currently, they each resolve to a page entitled “X&Y Espana”, which requires a user identification and password for access.

5. Parties’ Contentions

A. Complainant

(1) Each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which Complainants have rights.

Complainants make up an internationally well-known group in the field of fashion and men’s luxury clothing known as the Zegna Group. Complainants own hundreds of trademarks that include the word “Zegna”, including its principal marks: ERMENEGILDO ZEGNA, ZEGNA, Z ZEGNA, and ZEGNASPORT. Complainants have used these marks extensively for many years, for clothing, shoes, fabric, fashion accessories, watches, jewelry, eyeglasses, sunglasses, and fragrances, as well as for services in the field of fashion and for Complainants’ flagship stores. All of Complainants’ trademark registrations predate the registration of the domain names.

The disputed domain names are absolutely confusingly similar (ZEGNA and <zegnas.info>) or even identical (ZEGNASPORT and <zegnasport.info>) to Complainants marks. In the case of the <zegnas.info> domain name, the use of the “s” does not add anything to the meaning of the name and does not counter the overall impression created by use of the word “Zegna.”

Numerous decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.

(2) Respondent has no rights or legitimate interests in respect of any of the domain names.

Complainants have never licensed or otherwise permitted Respondent to use the disputed domain names or the trademark and that Respondent can have no rights or legitimate interests in them.

There can be no justification for Respondent’s choice of the disputed domain names. The name is that of a leading company, whose trademarks are known world-wide. “Zegna” is not a common or a fantasy word, but is an Italian surname. Complainants claim rights in the name and rights in the trademarks.

Respondent’s name is Jil Sander, a completely different English name that corresponds to another famous trademark and has no legitimate reason to use the term “Zegna.” Furthermore, upon information and belief, Respondent has never been commonly known by the disputed domain names and does not do any legitimate business under them.

Upon information and belief, there is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain names. The websites have no specific content, instead, both resolve to search page linking to a number of services and products. By entering the search terms “Ermenegildo Zegna” or “Zegna,” a list of sites where one can buy clothes and other products cheaply is displayed. Accessing the “Shopping” link causes a list of links to a “Super discount” website to appear.

The disputed domain names constitute classic examples of monetized parking where the Respondent benefits from confusion by receiving “click-through” commissions. While there is nothing per se illegitimate in using a domain parking service, linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page does not provide a right or legitimate interest in that domain name under the Policy.

(3) Each of the disputed domain names was registered and is being used in bad faith.

Respondent’s sole aim in registering the disputed domain names was to negotiate their sale in a classic case of cybersquatting. Complainants’ marks have been well-known all over the world for decades before the disputed domain names were registered. Respondent knew or should have known of the Complainants’ trademarks.

It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain names <zegnas.info> and <zegnasport.info>.

Respondent has continually changed the details of the disputed domain names registrations, although the actual holder of the disputed domain names appears to be the same. After Complainants learned of the disputed domain names, they communicated with the Respondent by e-mail. In the initial reply, Respondent justified the existence of the website saying that he would use one site “as a personal website” and that in any case, since he registered the disputed domain names first, he was its legitimate owner, implicitly conceding that he was aware of the ZEGNA marks.

After the initial communication, Respondent has repeatedly changed the contact details for the disputed domain names. Respondent has used false contact information, as evidenced by the sworn statements form Complainants’ lawyers, whose correspondence to Respondent at addresses in the WHOIS was undeliverable. At the same time, Respondent has used the identical email address to respond to Complainants, regardless of the information in the registration. In some cases, Respondent has used the same name, but at different addresses.

Respondent’s repeated change of contact information, repeated transfer of the disputed domain name to others, and provision of false contact details are all evidence of bad faith. These circumstances also justify a single proceeding.

Finally, Respondent attempted to negotiate the sale of the disputed domain names, stating:

“you may bring a lawsuit against me well this will really be a big trouble. So i am looking forward a suggestion which is much more considerable”

Respondent subsequently demanded 2,000 € for the disputed domain names.

As previously noted, the disputed domain names are being used in connection with websites that provided sponsored links to other commercial websites, generating revenue. This constitutes bad faith.

The circumstances indicate that the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names registrations to the Complainants or to a competitor of Complainants. The only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainants trademarks and marks for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the aforesaid websites or locations or of a product or service on the websites or locations and at the same time preventing Complainant from reflecting their trademarks in a corresponding domain name.

Furthermore, Respondent later changed the content of the websites so that they contain a screen requiring logging in with a username and password along with a reference to an email address. The domain for the email address is similar to an email address used in one of the previous registrations of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural Matters

(1) Word Limit

The Supplemental Rules, paragraph 10(a) establish a word limit of 5,000 words for the portion of the complaint described in paragraph 3(b)(ix) of the Rules. That paragraph is generally deemed to apply to Section V of a complaint, which lays out the specific grounds on which the complaint is made, with reference to the three elements of the Policy (discussed in Section 6.B. below). The Complaint, as amended, exceeds that limit.

The Panel is inclined to insist on strict enforcement of the Rules and Supplemental Rules. While under other circumstances the Panel would find it appropriate to dismiss the proceeding without prejudice to the refiling of the Complaint or to simply disregard words in excess of the limit, the Panel does not do so here for several reasons. First, the Complaint as originally filed did not exceed the word limit and the amendment was made due to the Respondents’ conduct in attempting to mask their identity. Second, in the Panel’s view, while an amendment was not required (as discussed in Section 6.A.(3) below), it was prudent of the Complainants to do so under these circumstances. Third, the amount by which the Complaint exceeded the limit was not great. Fourth, as discussed below this proceeding does present more procedural issues than are typically presented.

(2) Multiple Complainants

The Complaint identifies three Complainants:

Consitex S.A., which owns Italian trademark registrations for the marks ZEGNA and ERMENEGILDO ZEGNA and a Community Trademark registration for the mark ZEGNA SPORT.

Ermenegildo Zegna Corporation, which owns United States federal trademark registrations for ZEGNA, ERMENEGILDO ZEGNA and ZEGNASPORT.

Lanificio Ermenegildo Zegna & Figli S.p.A., which from the documents provided, appears to own only a Community Trademark registration for the mark ERMENEGILDO ZEGNA.

According to the Complaint, these three companies comprise the “Zegna Group,” and their relationship as subsidiaries of a common parent (Ermenegildo Zegna Holditalia S.p.A.) is confirmed by the annual report provided as an Annex. The Complaint requests that the disputed domain names be transferred to Complainant Consitex.

Neither the Policy nor the Rules expressly provide for multiple Complainants. However, in some cases, panels have determined that the identified complainant alone did not demonstrate the requisite ownership or control of the mark at issue. In other cases, panels have determined that a single complainant could properly act on behalf of its affiliates. There is no settled practice as to whether affiliates should, or must, join in a complaint. However, the circumstances presented here do not present any issue regarding ownership or control of the mark at issue. In the Panel’s view, Consitex S.A. would have been the most fitting Complainant; nonetheless, in light of the relationship among the entities, the Panel accepts the designation of all three as Complainants.

(3) Multiple Respondents

The Complaint purports to identify three Respondents:

Jil Sander, in whose name the disputed domain names were registered on the date that the Complaint was filed.

SML Limited, in whose name the <zegnas.info> domain name was transferred after the Complaint was filed.

Sandy, Inc., in whose name the <zegnasport.info> domain name was transferred after the Complaint was filed.

The Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” This Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules,1 which provides (emphasis added):

Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.

Therefore, under the Panel’s view, Jil Sander would the proper Respondent in this case. Nonetheless, the Panel accepts the designation of all three Respondents because, due to the transfer of the disputed domain names upon the filing of the Complaint, the other two named Respondents are now identified as registrants in the WHOIS record and would appear to be the entities against which relief may be obtained. In any case, the Panel also agrees that the actual holder of the disputed domain names has remained the same and that Respondent has simply repeatedly transferred the disputed domain names to a number of aliases, using false information in the process. For that reason, the Panel uses the singular term “Respondent” in the substantive discussion below.

(4) Multiple Domain Names

The Complaint also seeks relief as to two domain names. The Rules provide that: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” See Rule 3(c). Here, at the time the Complaint was initiated, both domain names were registered to the same domain holder and, as noted above, the Panel finds that even though they are currently registered under two different names, they continue to be held by the same Respondent.

B. Substantive Discussion

In order to prevail, Complainants must prove, as to each of the disputed domain names, that:

(i) It is identical or confusingly similar to a mark which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of it; and

(iii) It has been registered and is being used in bad faith.

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).

Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainants. Rather, Complainants continue to have the burden of establishing each of the required elements. The Panel may, however, draw such inferences from the default as it considers appropriate. See Rules, paragraph 14(b).

(1) Identical or Confusingly Similar

Complainants have established their rights in the marks ZEGNA and ZEGNA SPORT by virtue of the evidence of its Italian, Community Trademark, and United States federal trademark registrations for the marks.

With respect to the <zegnasport.info> domain name, it is identical to Complainants’ ZEGNA SPORT marks. Excluding the top-level domain and the omission of the space, neither of which are relevant for these purposes, the disputed domain name consists exclusively of Complainants’ mark.

With respect to the <zegnas.info> domain name, the addition of the letter “s” after Complainants’ ZEGNA mark does not distinguish or differentiate the domain name from the mark in any way; in fact the domain name is all but identical to Complainants’ mark.

Thus, the Panel finds that Complainants have established this element as to each of the disputed domain names.

(2) Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainants may establish that Respondent has no rights or legitimate interests in respect of the disputed domain names by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

Paragraph 4(c) of the Policy sets out the following examples as demonstrating rights or legitimate interests in a disputed domain name:

(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 trademark or service mark rights; or

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

The Panel finds that Complainants have made a prima facie showing as to each of the disputed domain names.

It does not appear that Respondent engaged in – or could under the circumstances have engaged in – any legitimate use of the disputed domain names. There is no reason to believe, from the WHOIS record or otherwise, that Respondent is or could be commonly known by any of the disputed domain names. It does not appear that Respondent is making a legitimate noncommercial or fair use of the disputed domain names.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in either of the disputed domain names.

(3) Registered and Used in Bad Faith

Complainants must establish that each of the disputed domain names was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):

(i) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).

(ii) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).

(iii) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).

(iv) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).

The offer to sell, while not exorbitant, seems likely to exceed the out-of-pocket costs associated with the domain names, suggesting that Respondent’s conduct falls within paragraph 4(b)(i).

Furthermore, Complainants’ rights in each of its marks clearly predate the registration and use of the disputed domain names. Complainants’ rights in those marks are well-established and well-known. It is not unreasonable to impute to Respondent knowledge of Complainants’ rights in registering the disputed domain names. Further, the Panel has already concluded that Respondent has no right or legitimate interests in the disputed domain names and that Respondent’s site does not make a bona fide offering of goods or services.

Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainants have established that Respondent has registered and is using the disputed domain names in bad faith.

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 names, <zegnas.info> and <zegnasport.info> be transferred to the Complainant Consitex S.A.


Debra J. Stanek
Sole Panelist

Dated: November 25, 2008


1 See also, Rules, paragraph 4(c), “Notification” of Complaint, which refers to Provider’s sending the complaint to respondent as the “commencement” of the proceedings rather than the “initiation.”

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2008/d2008-1335.html

 

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