BELGIAN CENTRE FOR ARBITRATION AND MEDIATION
DECISION OF THE THIRD- PARTY DECIDER
Consitex S.A. and Lanificio Ermenegildo Zegna & Figli S.p.A. / Giuseppe Strano
Case no. 44038: ermenegildozegna.be
1. The parties
1.1. Complainants: Consitex S.A.;
with registered office at CH-6850, Mendrisio (Switzerland), Via
Laveggio 16;
and
Lanificia Ermenegildo Zegna & Figli S.p.A.
with registered office at IT-13885 TRIVERO (Province of Biella)
(Italy), Via Roma 99/100;
both represented by:
Dr Massimo Introvigne and Dr Fabrizio Jacobacci
Partners of the law firm Jacobacci Associati
with office at Italy, 10152, Torino, Corso Regio Parco 27.
1.2. Licensee: Guiseppe Strano, Licensee (individual)
residing at Italy, Agrigento, Via Cavour, 12.
2. Domain name
Domain name: "ermenegildozegna.be"
Registered on: June 3, 2003
hereafter referred to as the "Domain Name ".
CEPANI – NON-PROFIT ASSOCIATION
Stuiversstraat 8, B-1000 Brussels Telephone: +32 2 515 08 35 Fax: +32 2 515 08 75
E-mail: cepina@vbo-feb.be Website: http://www.cepani.be
FORTIS BANK: 210-0076085-89 KBC: 430-0169391-20 BBL: 310-0720414-81
3. Background to the case
On September 23, 2003, the Complainants filed a complaint with the secretariat of
the Belgian Centre for Arbitration and Mediation (the "Centre”) concerning the
'ermenegildozegna.be' Domain Name.
On September 24, 2003, the Licensee was notified of the complaint and invited to
reply by October 15, 2003. The Licensee has not submitted any such reply to the
Centre.
Accordingly, on October 23, 2003, the Centre invited Mr Geert Glas to act as the
Third-Party Decider, and informed him that the deliberations would close on October
30, 2003, and that his decision was due on November 13, 2003.
On October 24, 2003, the Third-Party Decider sent the Statement of Independence to
the Centre.
The Third-Party Decider will issue its decision based on (i) the complaint, (ii) the
evidence presented, (iii) Article 10 of the “Terms and conditions of Domain Name
registrations under the “.be” domain operated by DNS” entitled “Dispute resolution
policy” (the “Policy”), and (iv) the CEPANI Rules for Domain Name dispute resolution
("Rules").
4. Factual information
4.1 The Complainants are part of the Ermenegildo Zegna group, which is active
in the fashion market. Consitex markets clothing and Lanificio Ermenegildo
Zegna & Figli markets tissues and fabrics, both under the Ermenegildo Zegna
trademark. Yves Saint Laurent, a licensee of Consitex, markets fragrances
under the Essenza di Zegna trademark.
Consequently, the Complainants are the owners of several trademark
registrations in various countries. Those relevant to the Benelux are the:
• registration for ERMENEGILDO ZEGNA, No. 1525633 of November 5,
2001 in the name of Consitex S.A. (classes 6, 9 and 17);
• registration for ERMENEGILDO ZEGNA, No. 2161677 of May 21, 2002 in
the name of Consitex S.A. (class 14);
• registration for ERMENEGILDO ZEGNA, No. 2516524 of May 14, 2003 in
the name of Consitex S.A. (classes 3, 14, 18, 23, 24, 25, 35 and 42);
• registration for ERMENEGILDO ZEGNA, No. 410571 of September 13,
1974 in the name of Lanificia Ermenegildo Zegna & Figli S.P.A. (classes
23 and 24); and
• registration for ERMENEGILDO ZEGNA, No. 410571 of September 13,
1974 in the name of Consitex S.A. (class 25).
The Complainants use these trademarks to identify and distinguish clothing,
fragrances and cosmetics. Given the sales volume and the intensive
marketing of these products, it can be said that “Ermenegildo Zegna” is a
well-known trademark for these products.
4.2. There does not seem to be any relationship between the Licensee and the
Complainants, and the Licensee is not licensed or otherwise authorised to
use the Complainants’ trademarks.
4.3. The Domain Name relates to the following web page, which states in Italian
that it is currently under construction:
4.4. The Licensee has also registered "ermenegildozegna.bz" and
"essenzadizegna.cc".
4.5. On July 1, 2003, Mr Maximilian L. Wine, acting on instructions from the
Complainants, wrote to the Licensee inquiring about a possible acquisition of
the "ermenegildozegna.be" and "ermenegildozegna.bz" Domain Names. The
Licensee replied: "I am negotiating some quite interesting deals for the two
Domain Names, and the buyer would be able to continue the negotiations.
Considering their potential, a figure of Euro 15.000 for both domains would be
adequate".
5. Position of the parties
5.1. The Complainants' position
In summary, the Complainants argue that:
• the Licensee has registered the Domain Name, which is identical to the
Complainants’ “Ermenegildo Zegna” trademark;
• the Licensee has no rights or legitimate interests in the Domain Name and the
Licensee is unable to rely on circumstances, which, pursuant to Article 10, b, 3 of
the Policy, could establish a legitimate right or interest; and
• the Licensee registered the Domain Name in bad faith because (i) given its
notoriety, the Licensee could not ignore the Complainants’ trademark, (ii) the
Licensee offered the Domain Name for sale, (iii) the Licensee has shown a
pattern of conduct and (iv) the Licensee has failed to demonstrate any reason or
circumstance which could indicate the good faith nature of his registration and
use of the Domain Name.
5.2. The Licensee's position
The Licensee did not reply to the Complainants’ assertions.
6. Discussion and findings
Pursuant to Article 15.1 of the CEPANI Rules, the Third-Party Decider must rule on
Domain Name disputes giving due regard to the Policy and the Rules.
Pursuant to Article 10b(1) of the Policy, the Complainants must provide evidence of
the following:
• " the licensee's Domain Name is identical or confusingly similar to a trademark, a
tradename, a social name or corporation name, a geographical designation, a
name of origin, a designation of source, a personal name or name of a
geographical entity in which the Complainants have rights; and
• the licensee has no rights or legitimate interests in the Domain Name; and
• the licensee's Domain Name has been registered or is being used in bad faith."
6.1. 'Identical or similar to'
The Domain Name is “ermenegildozegna.be”.
“Ermenegildo Zegna” is a registered trademark of the Complainants.
In view of the above, the Third-Party Decider finds the Domain Name is identical to
the Complainants' “Ermenegildo Zegna” trademark. Indeed, the Domain Name is
completely identical, except for the suffix ‘.be’, which is generally accepted as being
irrelevant (see decision of September 30, 2003, Accor SA v. Mw. Veerle Lefever,
case nr. 4035; see decision of August 13, 2003, Monsanto Company and Monsanto
Technology LLC v. Libertus Ijzerman; see decision of February 17, 2003, case nr.
4030, S.A. Le Petit Fils de L.U. Chopard & Cie v. Monsieur Joël Glecer; see decision
of November 12, 2002, case nr. 4021, Napster Inc. v. TheInternetOne C.V.; see
decision of January 2, 2003, case nr. 4025, Allianz Aktiengesellschaft v. Constantin
European Internet Club ASBL).
6.2. 'Rights and legitimate interests'
In essence, the Complainants contend that the Licensee has no rights or legitimate
interests regarding the Domain Name and cannot rely on circumstances, which,
pursuant to Article 10, b, 3 of the Policy, could establish such right or legitimate
interest.
Given the difficulty of proving such a negative fact ("negativa non sunt probanda"),
decisions have often rightly considered this burden of proof satisfied if, taking into
account all the facts of the case, the complainants could credibly state that they are
unaware of any reason or circumstance which could be indicative of such right or
legitimate interest (see decision of February 7, 2002, case nr. 4013, Guinness UDV
North America Inc. v. Mr. Olivier Noël; see decision of February 17, 2003, case nr.
4030, S.A. Le Petit Fils de L.U. Chopard & Cie v. Monsieur Joël GLECER).
Moreover, by not submitting a response, the Licensee has failed to state any
circumstances that might demonstrate, pursuant to 10(b)1, any rights or legitimate
interests in the Domain Name (see decision of January 2, 2003, case nr. 4025,
Allianz Aktiengesellschaft v. Constantin European Internet Club ASBL; see decision
of November 12, 2002, case nr. 4021, Napster Inc. v. TheInternetOne C.V.).
In this respect, it should be noted that the mere fact of the solicited offer to sell the
Domain Name to the Complainants does not constitute a legitimate interest (see
decision of September 30, 2003, Accor SA v. Mw. Veerle Lefever, case nr. 4035).
Thus, from the evidence, it appears that (i) prior to any notice of the dispute, the
Licensee did not use, and had not made any 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; (2) there is no indication that the Licensee is
commonly known by the Domain Name; and (3) there is no indication that the
Licensee is making a legitimate and non-commercial or fair use of the Domain Name.
In view of the above, the Third-Party Decider finds that Licensee has no rights or
legitimate interests in the Domain Name.
6.3. Registration in bad faith
The Complainants allege that the Licensee registered the Domain Name in bad faith.
Bad faith can be based on the circumstances listed in Article 10, b, 2 of the Policy.
However, this list is not exhaustive (see decision of October 25, 2001, case nr. 4010,
Red Bull GmbH v. Kees Rasenberg; see decision of March 5, 2001, case nr. 4002,
Vlaamse Radio en TelevisieOmroep v. Securax BVBA).
Bad faith can be presumed to exist if the facts or circumstances exclude any
reasonable doubt The latter standard is to be interpreted objectively, i.e. ‘knows or
should have known’ (see decision of February 17, 2003, case nr. 4030, S.A. Le Petit
Fils de L.U. Chopard & Cie v. Monsieur Joël GLECER; see decision of February 7,
2002, case nr. 4013, Guinness UDV North America Inc. v. Mr. Olivier Noël; and see
decision of September 28, 2001, case nr. 4007, Vzw Wit-Gele Kruis van Vlaanderen
v. Bvba Verpleging aan Huis – Webservice).
The Complainants must be allowed to use all pertinent means to establish proof of
the existence of bad faith (see decision of January 2, 2003, case nr. 4025, Allianz
Aktiengesellschaft v. Constantin European Internet Club ASBL).
First, as the Complainants have argued, the ‘Ermenegildo Zegna’ trademark is well-
known. Thus, in light of the objectivity of the bad faith standard, it can be inferred that
the Licensee knew or should have known about the existence or use of the well-
known trademark or trade name, which makes it more likely that the Licensee
registered the Domain Name in bad faith (see Cepina decision of January 2, 2003,
case nr. 4025, Allianz Aktiengesellschaft v. Constantin European Internet Club ASBL;
see WIPO decisions Banca Sella P.v.A v. Mr. Paolo Parente, WIPO Case Nr. D2000-
1157; Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case Nr. D2000-
0163; Parfums Christian Dior v. JavierGarcia Quintas and Christiandior.net, WIPO
Case Nr. D2000-0226; and Expedia, Inc. v. European Travel Network, WIPO Case
Nr. D2000-0137).
This is even more likely given that the Licensee has his legal domicile in Italy where
Ermenegildo Zegna is a leading producer of clothing and where the Ermenegildo
Zegna group has its headquarters. It can therefore reasonably be assumed that,
when registering the Domain Name, the Licensee knowingly and purposefully chose
a name which is identical to and limited to the Complainants' trademark of (Spadel
S.A. v. Peter Kisters, WIPO Case Nr. D2000-0526).
Second, Ermenegildo Zegna is a made-up name, comprising a combination of three
names and which in itself has no meaning. It is inconceivable that Licensee would
have accidentally chosen a Domain Name incorporating all three names in an
identical order.
Third, the Complainants refer to the provision in the Policy that indicates the
Licensee's bad faith if the Domain Name was “registered or acquired primarily for the
purpose of selling, renting, or otherwise transferring the Domain Name to the
Complainant who is the owner of the trademark, trade name, social name or
corporation name, geographical designation, name of origin, designation of source,
personal name or name of the geographical entity, or to a competitor of that
Complainant, for valuable consideration in excess of the costs directly related to the
Domain Name”.
Although the Licensee did not actively contact the Complainants, the Complainants
have submitted evidence to show that the Licensee offered the Domain Names for
sale in reply to the (mock) request made by Mr Maximilian L. Wine, acting on
instructions from Complainants.
The Domain Names were offered for sale for 15,000 euro, an amount that
significantly exceeds the costs of registering these Domain Names and maintaining
that registration since June 3, 2003.
Fourth, the Complainants also argue that the Licensee's bad faith can be inferred
from a pattern of conduct. Indeed, the Licensee has registered the Domain Name in
both the .be and in the '.bz' domain. Furthermore, he has also registered the related
"essenzadizegna.cc" Domain Name. In view of the above, the Third-Party Decider
finds there has been a pattern of conduct, thus further indicating bad faith.
Finally, as the Licensee has not responded in these proceedings, and has therefore
failed to demonstrate any reason or circumstance which could indicate the good faith
nature of his registration and use of the Domain Name, the Licensee has
consequently failed to demonstrate any bona fide use of the Domain Name.
In conclusion, given the above, it is the Third-Party Decider's opinion that there is no
doubt that Licensee registered and used the Domain Name in bad faith.
7. Decision
Consequently, pursuant to Article 10(e) of the Terms and conditions of Domain Name
registrations under the ".be" domain operated by DNS BE, the Third-Party Decider
hereby rules that the Domain Name registration for the "ermenegildozegna.be"
Domain Name is to be transferred to the Complainants.
Brussels, 03 November 2003
---------------------------
Geert Glas
The Third-Party Decider