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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zegna Japan Co. Ltd. et al. v. Isao Ishikawa

Case No. D2000-1762

 

1. The Parties

The Complainants are four companies constituting the Ermenegildo Zegna group: Zegna Japan Co. Ltd., a Japanese corporation with office at 2F Park Lane Plaza, 2-30/32 Jingumae, Shibuya-ku, Tokyo 150-0001, Japan; Ermenegildo Zegna Corporation, a US corporation with registered office at 9 West 57th Street, New York, NY 10019, USA; Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company with registered office at Via Roma 99/100, 13835 Trivero, Biella, Italy; and Consitex S.A., a Swiss company with registered office at Via Ligornetto, CH-6855 Stabio, Switzerland (hereinafter collectively referred to as the "Complainant").

The Respondent is Isao Ishikawa, 569-9 Mitoyo-gun, Ohnohara-cho, Kagawa 759-1617, Japan.

 

2. The Domain Name and Registrar

The Domain Name at issue is <zegna-japan.com>.

The Domain Name is registered with Global Media Online Inc., formerly InterQ Inc., Cerulean Tower 11F, 26-1 Sakuragaoka, Shibuya-ku, Tokyo 150-8512, Japan.

 

3. Procedural History

The entire proceeding of this case has been carried out in accordance with the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 ( the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2000, by e-mail, and on January 3, 2001, in hardcopy.

The Acknowledgment of Receipt of the Complaint was sent by the Center to the Complainant on December 20, 2000.

The Center, on December 22, 2000, sent a Request for Registrar Verification to InterQ Inc. On February 28, 2001, the Center received from the Registrar a Verification Response confirming that the Registrar is the registrar of the said Domain Name, and that the said Domain Name is in "active" status. The Registrar also confirmed in the Response that the Registration Agreement for the Domain Name is in Japanese. On May 15, 2001, the Center received from Global Media Online Inc., successor to InterQ Inc., a reconfirmation of the above Registrar Verification.

On March 1, 2001, the Center confirmed that the formal requirements are complied.

On March 26, 2001, in accordance with Paragraph 11 of the Rules, the Center requested the Complainant to file the Complaint in Japanese, and on April 12 and 18, 2001, respectively, the Center received from the Complainant the Japanese text of the Complaint by e-mail and in hardcopy, and the Center sent the Acknowledgment of Receipt thereof on April 17, 2001, to the Complainant.

On May 15, 2001, the Center sent a Notification of the Complaint and Commencement of Administrative Proceeding to the Respondent.

On June 4, 2001, the Respondent requested the Center for an extension of the time for the filing of a Response, and on June 5 and 6, 2001, respectively, the Center and the Complainant replied not to extend.

On June 6, 2001, the Center sent a Notification of the Respondent's Default to the Parties.

On June 7, 2001, the Respondent sent a message in Japanese to the Center by e-mail.

On July 5, 2001, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date.

 

4. Factual Background

The facts stated in the Complaint are as follows:

The Complainants are four companies constituting the Ermenegildo Zegna Group: Zegna Japan Co. Ltd., a Japanese corporation; Ermenegildo Zegna Corporation, a US corporation; Lanificio Ermenegildo Zegna & Figli S.p.A., an Italian company; and Consitex S.A., a Swiss company (collectively called the "Zegna Group" or "Complainant"). (Paragraph 2 of the Complaint).

The Zegna Group is the owner of several hundreds of trademarks including the word ZEGNA throughout the world. They cover mostly, but not exclusively, clothing, shoes, tissues, fabrics (piece goods), fashion accessories, belts, watches, jewelry, fragrance, and services in the field of fashion fabrics (piece goods).

In order to limit the number of enclosures, four representative trademarks are attached to the Complaint:

・ Italian registration for ZEGNA No. 562561, whose first application dates back to 1969, in the name of Lanificio Ermenegildo Zegna & Figli S.p.A.;

・ U.S. registration for ZEGNA No. 1,258,643 of November 22, 1983, in the name of Ermenegildo Zegna Corporation (NY);

・ U.K. registration for ZEGNA No. 973946 dating back to 1971, in the name of Consitex S.A.; and

・ Japanese registration for ZEGNA No. 3265522 in the name of Consitex S.A. (Paragraph 8 of the Complaint).

It is believed that it cannot be seriously disputed that the Zegna Group is and has been the owner of the trademark ZEGNA since before World War II. In addition, Zegna Japan Co. Ltd. is the company of the Zegna Group active in Japan, and is well-known in that country. (Paragraph 8 of the Complaint).

 

5. Parties’ Contentions

A. Complainant

The Complaint states, in Paragraph 8 of the Complaint, that the Zegna Group is the owner of the trademark ZEGNA registered in various countries of the world and attaches to the Complaint copies of registrations in Italy, the United States, the United Kingdom and Japan as representative examples. The Complainant specifically mentions that it is ready to provide more information on its trademark registrations upon demand.

At the end of Paragraph 8 of the Complaint, the Complainant asserts that "it is believed that it cannot be seriously disputed that the Zegna Group is and has been the owner of the trademark ZEGNA since before World War II", and that "Zegna Japan Co. Ltd. is the company of the Zegna Group active in Japan, and is well-known in that country."

On the basis of these facts, the Complainant requests the Administrative Panel to issue a decision to effect the transfer of the Domain Name, <zegna-japan.com>, to the Complainant, in accordance with Paragraph 4(b)(i) of the Policy, on the following grounds:

(1) The Domain Name, <zegna-japan.com>, is confusingly similar to both the trademark ZEGNA and the trade name Zegna Japan Co. Ltd. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent operates services of car sales via the Internet under the trademark CARHOO. When it comes to selling luxury cars, it uses a Web page called "ZEGNA international auto sales". The Respondent's company is not called "ZEGNA " but "CARHOO". The only reason that the Respondent uses "ZEGNA international auto sales "in connection with its activity of selling luxury cars appears to be its desire to benefit from the international reputation of the Zegna Group as a famous provider of luxury goods. (Paragraph 9 of the Complaint).

(2) There is no way that the Respondent, when it decided to trade on the Web under "ZEGNA international auto sales " and to register the Domain Name, <zegna-japan.com>, may have ignored the international fame of the Zegna Group. Even the most cursory look at the Web would show hundreds of sites discussing the Zegna products, and Japan is a primary market for the Zegna Group. Accordingly, the Respondent can only have registered its Domain Name in bad faith. (Paragraph 10 of the Complaint).

(3) The Domain Name is used in bad faith. The world famous trademark ZEGNA is used to attract customers to a site not associated with Zegna, to trade on the association in the minds of consumers between the trademark ZEGNA and top quality luxury products, and to induce consumers to falsely believe that the site is associated with, or sponsored by, the Zegna group or Zegna Japan Co. Ltd. (Paragraph 11 of the Complaint).

(4) The registration by the Respondent prevents Zegna Japan Co. Ltd. to operate a Web site under the Domain Name <zegna-japan.com>, its most obvious and primary choice for a domain name. (Paragraph 12 of the Complaint).

B. Respondent

The Respondent failed to file a Response to the Complaint. However, after its due date, the Respondent's representative sent to the case manager, by e-mail, a message in Japanese entitled tobensho (meaning "response"). This message contains the following statements in five paragraphs:

(1) Generally

It was not an intention of Isao Ishikawa and Carhoo, in registering the Domain Name, to get benefit from the international fame of the Zegna Group. Isao Ishikawa and Carhoo have never used the Domain Name. It is Y.K. Kawaguchigarejizeniya (the name in a single word in Japanese Katakana stands for "kawaguchi garage zegna"), a used-car dealer, who is using the Domain Name.

(2) About Carhoo

K.K Carhoo is a kabushiki kaisha (stock corporation) which provides Internet services and Isao Ishikawa is the director of this company. Carhoo is engaged in Internet service to provide inventory information of used-car dealers throughout Japan through its web site ("http.www.carhoo.co.jp"). Used-car dealers pay fixed sum of fees for the use of the network in consideration for their inventory information being listed in the site.

(3) How Isao Ishikawa acquired the Domain Name:

(i) Carhoo was asked by its customer Y.K. Kawaguchigarejizeniya, a used-car dealer, to acquire the Domain Name on the latter's behalf. Isao Ishikawa registered the Domain Name in his own name for use by Kawaguchigarejizeniya. Kawaguchigarejizeniya is yugen kaisha (limited liability company) which has been using the trade name "Yugen Kaisha Kawagichigarejizeniya" since its incorporation in 1989. The founder of Kawaguchigarejizeniya adopted, as a part of its trade name, an Italian word "zeniya" having the meaning of "gentleman" or "socially accomplished".

(ii) The Domain Name was registered in the name of Isao Ishikawa rather than Kawaguchigarejizeniya simply for expedience in the handling of paperwork.

(iii) Isao Ishikawa has rendered the Domain Name to the sole use by Kawaguchigarejizeniya, and neither Isao Ishikawa nor Carhoo has ever used the Domain Name.

(4) Lack of Bad Faith on the part of Isao Ishikawa and Carhoo

As mentioned above, Isao Ishikawa did not register the Domain Name for the purpose of benefiting from the international fame of the Complainant, and there was no bad faith on his part in registering it. Isao Ishikawa and Carhoo have not gained any profits out of registering the Domain Name. The Complainant's fame can never bring any benefit to Carhoo who is in a totally different kind of business.

(5) Isao Ishikawa intends to transfer the Domain Name to Kawaguchigarejizeniya.

 

6. Discussion and Findings

In accordance with Paragraph 11, "Language of Proceedings", of the Rules, the Administrative Panel has decided to render its decision in this case in the English language taking into consideration the different language background of the Parties and the Panelists.

Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following requirements are met:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

The Panel shall examine whether or not the Domain Name at issue, <zegna-japan.com>, meets the above requirements as asserted by the Complainant.

(1) As to the requirement under Paragraph 4(a)(i) of the Policy:

The Panel finds that the Domain Name at issue, <zegna-japan.com>, is "confusingly similar" to the Complainant's trademark, "ZEGNA", and identical to the dominant part of the trade name, "Zegna Japan Co. Ltd.", owned and used by a member company of the Zegna Group operating in Japan. It is indisputable that the Complainant has "rights" in the trademark, "ZEGNA", both established by registration and acquired by use, in Japan and elsewhere.

(2) As to the requirement under Paragraph 4(a)(ii) of the Policy:

Since the word "zegna" is not defined in a dictionary, and has been exclusively and extensively used by the Complainant as its trademark, and it has been used as the dominant part of the trade name of a member company of the Zegna Group operating in Japan, the Panel finds that the Respondent has "no rights or legitimate interests" in respect of the Domain Name. Even if the Respondent’s e-mail message to the case manager, dated June 7, 2001, is taken into consideration, the Panel’s finding on this test is not affected thereby, because the message fails to explain that the Respondent has any "rights or legitimate interests" in the Domain Name.

(3) As to the requirement under Paragraph 4(a)(iii) of the Policy:

The Panel finds that the Domain Name has been registered and is being used by the Respondent in "bad faith." The Complainant's trademark "ZEGNA" is an arbitrary word which is not listed in any dictionary, and has been well-known as indicating the goods and business activities of the Zegna Group in Japan, the finding of "bad faith" on the part of the Respondent is irrebutable. Even if the Respondent’s e-mail message to the case manager, dated June 7, 2001, is taken into consideration, the Panel’s finding on this test is not affected by this message because it fails to explain why the Respondent adopted the word "zegna" or "zegna-japan" for the Domain Name at issue.

In conclusion, the Panel strongly believes that the Respondent’s adoption of the Domain Name at issue, <zegna-japan.com>, is based on its intention to trade on the Complainant’s goodwill represented by the trademark "ZEGNA". If the Respondent is allowed to maintain the Domain Name, it will create a likelihood of confusion as to the sponsorship or business affiliation with the Zegna Group, even if the Respondent is not engaged in a competitive business. Furthermore, the Respondent’s possession and use of the Domain Name will lead to the dilution or weakening of the distinctive quality of the Complainant’s famous trademark "ZEGNA".

 

7. Decision

Based on the above findings, the Panel hereby decides that the registration of the Domain Name at issue, <zegna-japan.com>, shall be transferred to Zegna Japan Co. Ltd. as requested, in accordance with Paragraph 4(i) of the Policy.

 

 

Teruo Doi
Presiding Panelist

Luca Barbero
Panelist

Hariram Jayaram
Panelist

August 7, 2001