September 02, 2004

A new reading of UDRP rules?

The WIPO Arbitration and Mediation Center just released an amazing UDRP decision (Case No. D2004-0490, Consitex S.A. et al. v. Ms. Patricia Chung). The complainants, part of the ZEGNA group, complained about the registration of domain name, which they found similar to their trademark ZEGNA, registered in Italy, the US, and Chile - the country where the defendant lives.
The panel was not satisfied that the complainants also used the sign “ESSENZA DI ZEGNA”, but acknowledged that the ZEGNA trademark was well known, even if it is not famous in Chile. The Respondent did not submit any response to the complainants’ contentions. In the end of 2003, an attorney offered on behalf of the Respondent to sell along with for nine million Chilean pesos (more than 10,000 $). The letter did not refer to any actual commercial use of the name DIZEGNA by the Respondent, nor to any credible steps taken by the Respondent to do so, but argued that the word “dizegna” derives from the Spanish verb “diseñar,” a contention disputed by the Complainants.
Given these facts, one could think the most difficult stage for the complainants was to convince the arbiter the domain name was confusingly similar to the trademark. After a discussion, the panel writes that “ZEGNA is a well-known if not famous name, and ZEGNA is the most important component of DIZEGNA”, and therefore found “not without some hesitation, that the disputed domain name is confusingly similar to the trademark ZEGNA for the purposes of this proceeding”.
A connoisseur of UDRP law would then conclude the hardest was done for the complainants. In the following lines, the panel doesn’t find any evidence that the Respondent has rights or legitimate interests in the domain name. The last question was: Is this name registered and used in bad faith?
The panel cites other cases in which bad faith had not been found even if significant amounts of money were demanded by or on behalf of the Respondent . In these cases, “the Respondent was found to have a legitimate interest in the domain name, and therefore the demand for money per se was found not to be evidence of bad faith”. Here, the panel acknowledges that “the Respondent has no legitimate interest in the domain name by reason of her failure to effect commercial use of the domain name” but finds that
on the other hand, there is no evidence before this Panel that the trademark ZEGNA is sufficiently well-known in Chile to justify an assumption that the Respondent’s motive in obtaining registration was to profit from the sale or other disposition of the domain name, taking into account the explanation of the Respondent’s counsel as to the reasons why and were registered, and the apparent coexistence of DISEGNA and ZEGNA.
Therefore, the panel doesn’t conclude that the Respondent’s counter-offer to sell the domain name is sufficient evidence of bad faith
Such a finding is astonishing, because there is no condition of fame in the UDRP rules.

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