Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., and Ermenegildo Zegna Corporation v. Spiral Matrix
Case No. D2006-0169
1. The Parties
The Complainants are Consitex S.A., Stabio, Switzerland; Lanificio Ermenegildo Zegna & Figli S.p.A., Biella, Italy; and Ermenegildo Zegna Corporation, New York, United States of America, represented by Studio Legale Jacobacci e Associati, Italy.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <zegnasuits.com> was registered on August 11, 2005, with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2006. On February 8, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On February 9, 2006, Intercosmos Media Group d/b/a directNIC.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 February 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2006.
The Center appointed Isabel Davies as the sole panelist
in this matter on March 17, 2006. 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 are: Consitex S.A., a Swiss company; Lanificio Ermenegildo Zegna & Figli S.p.A, an Italian company; and Emenegildo Zegna Corporation, a US company. The Complainants form part of the Zegna Group of companies.
The Zegna Group is internationally renowned as a manufacturer of goods within the field of fashion, including clothing shoes, tissue, fabrics (piece goods), fashion accessories, belts, watches, jewellery, fragrances, as well as providing services in the field of fashion fabrics.
The Complainants and are the owners of numerous intellectual property rights which arise in relation to the ZEGNA brand, including:
- ZEGNA Community Trade Mark number 631697 in class 38, registered September 18, 1997;
- ZEGNA International Registration number 747160, in classes 23, 24 25, registered May 7, 1954;
- ZEGNA United States Registration number 941547, in classes 23, 25, registered August 2, 1972.
The disputed domain name is <zegnasuits.com>,
which was registered with Intercosmos Media Group Inc d/b/a Directnic.com, on
August 11, 2005. The domain name offers various websites for leisure activities,
including travel, media and shopping. The shopping websites include sites for
jackets and men’s suits.
5. Parties’ Contentions
A. Complainants
The Complainants contend that the domain name <zegnasuits.com> is confusingly similar with the trade marks ZEGNA owned by the Complainants. One of the main products of the Zegna Group are suits for men. It is also alleged that the association between “Zegna” and “suits” evokes the name, fame and business of the Complainants.
The Complainants’ case is that the domain name in dispute incorporates the Complainants’ various Community, International and National trade marks for ZEGNA.
They state that the ZEGNA name and trade mark is world famous, as can be seen from conducting cursory Internet searches, including on Google and Altavista. In addition, they state that the ZEGNA brand and business has been the subject of a number of international press articles which establish the fame of the ZEGNA mark.
Whilst the Complainants are aware, in accordance with Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Mr. Christopher C. Gramly, 12 Galaxies, WIPO Case No. D2004-0416, regarding <zegnatronic.com>, that they have no right to a monopoly in respect of all permutations of the word ZEGNA, they contend that, in the present instance, given that the domain name combines its world famous ZEGNA brand together with “suits”, which is a description of one of Zegna’s core businesses, the domain name is likely to cause confusion.
The Complainants refer by analogy to a previous case involving the domain name <zegnasuit.com> (Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A v. Steven Shiekman, WIPO Case No. D2000-1375) in which the Panel found that the addition of “suits” to ZEGNA was insufficient to render the domain name sufficiently distinctive as from the ZEGNA trade mark. The Complainants’ contention is that, as in the aforementioned previous case, given the fact that ZEGNA is primarily used to cover items of clothing, the addition of “suit” elicits a direct reference to Zegna’s activities and trade marks and is therefore likely to cause not only confusion but also a likelihood of association in the minds of consumers who may therefore be induced into believing that <zegnasuits.com> is in some way connected to the Complainants.
The Complainants further allege that the Respondent could not have been unaware
of its ZEGNA brand and trade marks given the notoriety and fame of its mark
and that as such, the Respondent has registered the <zegnasuits.com> domain
name in bad faith. In this regard, the Complainants refer to Banca Sella
s.p.a v. Mr. Paolo Parente, WIPO Case
No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The
Polygenix Group Co., WIPO Case No. D2000-0163;
Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,
WIPO Case No. D2000-0226; and Expedia,
Inc. v. European Travel Network, WIPO
Case No. D2000-0137. The Complainants also contend that the fact that the
Respondent has linked ZEGNA with the word “suits” is of itself evidence
of its knowledge of the link between the ZEGNA brand and its activities and
is therefore evidence of bad faith. Furthermore, the Complainants’ legal
representatives have written notifying the Respondent of the Complainants’
rights. The Respondent has failed to respond to this correspondence to date.
The Complainants assert that the Respondent has no rights or legitimate interest in respect of the domain name.
B. Respondent
The Respondent did not reply to the Complainants’
contentions.
6. Discussion and Findings
Under the Policy, the Complainants must prove that:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which they have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name is identical not only to the Complainants’ brand name but to numerous National, Community and International trade marks which are owned by one or more of the Complainants, some of which are referred to above. The combination of the Complainants’ world famous brand name ZEGNA and the word “suits”, which is part of the Complainants’ core business for which it had acquired an international reputation and with which it is associated, would lead users of the Internet to believe that the site is licensed by or in some way authorised by the Complainants. This is particularly the case, given that this domain name links to other websites offering clothing and fashion items, including, suits. For this reason, the Panel considers that the domain name is identical with the ZEGNA brand and the Complainants’ registered trade marks.
B. Rights or Legitimate Interests
The Respondent has no connection with the Complainants in way; it is neither licensed nor authorised to use the Complainants’ trade marks. “Zegnasuits” is not the Respondent’s company name. The Respondent has failed to assert any rights in the domain name and has not provided any evidence to rebut the case established by the Complainant. In the absence of any such evidence, the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Panel considers that it is inconceivable that the Respondent could not have been aware of the ZEGNA brand at the time the domain name was registered given the worldwide reputation which the brand had acquired and the number of registered trade marks owned by the Complainants, which predate the registration of the domain name. The fact that the Respondent chose to link the words “Zegna” and “suits” is of itself a compelling indication that the Respondents were only too well aware of ZEGNA.
The Respondent has also continued to use the domain name to attract traffic
notwithstanding that it has been notified of the Complainants’ rights
by the Complainants’ legal representatives. The Respondent has failed
to reply to the Complainants’ notifications. The Respondent has no reason
to use the domain name. The domain name is in no way indicative of the goods
being offered at the website linked to the domain name, save for certain links
to websites advertising goods which directly compete with those of the Complainants.
The Panel therefore concludes that the domain name has been registered and is
being used 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 name <zegnasuits.com> be transferred to the Complainants.
Isabel Davies
Sole Panelist
Date: March 31, 2006
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