Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Manuel Perez Marquez, of Huelva, Spain. 2. The Domain Name and Registrar
The disputed domain name is which is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012. On June 15, 2012, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On June 19, 2012, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on June 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 11, 2012.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 16, 2012. This Panel finds that it was properly constituted. This 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.
On July 27, 2012 the Center transmitted by email to Complainant Procedural Order No. 1 whereby this Panel requested Complainant to clarify an assertion made in the Complaint relating to CORBERO-branded products. On July 31, 2012, Complainant filed with the Center its reply to Procedural Order No. 1. 4. Factual Background
Complainant is a Swedish company engaged in the production of home appliances and appliances for professional use.
Complainant has rights over the ZANUSSI trademark through Electrolux Italia S.p.A1 which holds registration No. 492447 with the European Office for Harmonization in the Internal Market, registered on February 8, 1999, in classes 6, 7, 9, 11, 14, 17, 20, 21, 37 and 40.
The disputed domain name was created on December 2, 2011. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows.
Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. Complainant is a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year, including in Spain. In 2010, Complainant had sales of SEK 109 billion and 55,150 employees.
ZANUSSI is registered as a word and figure mark in several classes in more than 150 countries all over the world. The ZANUSSI brand was founded in 1916 and stands for Italian innovation with flair, and its yellow-black color combination and distinctive logo have made it recognizable throughout Europe and neighboring countries for many decades. Complainant has registered ZANUSSI as domain name under more than 200 generic top-level domains (gTLDs) and country code top-level domains (ccTLDs) worldwide.
Due to its extensive and long-term use on products and services, and the tremendous costs incurred in connection with production, distribution and advertising, the ZANUSSI trademark has acquired the status of a well-known trademark within the areas of appliances and equipment for kitchen, cleaning and outdoor products. As a result, the ZANUSSI trademark and the products and services designated by this trademark are connected with good reputation and international recognition.
The disputed domain name is confusingly similar to the ZANUSSI trademark.
The dominant part of the disputed domain name comprises the word “Zanussi”. The addition of the suffix “huelva” to the disputed domain name is not relevant and has no impact on the overall impression of the dominant part of the disputed domain name.
By using ZANUSSI as a dominant part of the disputed domain name, Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for Complainant’s trademark.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has not found that Respondent has any registered trademarks or trade names corresponding to the disputed domain name. No license or authorization of any other kind has been given by Complainant to Respondent to use the ZANUSSI trademark.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website appearing to be an official service center for ZANUSSI, AEG and ELECTROLUX products endorsed or sponsored by Complainant.
Respondent does not qualify to fulfill the requirements for a bona fide offering set out in the often cited Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. First of all, Respondent cannot be considered as a reseller as it is not the actual reseller. In addition, Respondent does not adequately disclose the relationship, or lack thereof, between Respondent and Complainant and does therefore convey the false impression that Respondent is an authorized service center for Complainant’s products. Had Respondent been an authorized licensee or reseller, such document would have been easy to obtain as proof of use when the cease and desist letter was sent.
The disputed domain name was registered and is being used in bad faith.
The ZANUSSI trademark was registered long before the registration of the disputed domain name. The ZANUSSI trademark has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole European Community and throughout the world. The awareness of the trademark is considered to be significant and substantial.
The considerable value and goodwill of the ZANUSSI trademark is most likely what made Respondent register the disputed domain name. There is no doubt that Respondent was aware of the rights Complainant has in the ZANUSSI trademark and the value of said trademark, at the point of the registration.
Furthermore, Respondent displays the trademark protected and copyrighted protected logotypes of ZANUSSI, AEG and ELECTROLUX, on the website associated to the disputed domain name. It is obvious that Respondent knew of Complainant and its trademarks at the time of registration and therefore Respondent has entered the registration agreement knowing that it registered a domain name infringing on a third party right.
The disputed domain name is designed to attract Internet users who are looking for Complainant’s services and cause confusion with Complainant’s trademarks and websites and disrupt Complainant’s business by diverting consumers away from Complainant’s official website in Spain. The disputed domain name is currently connected to a website which appears to be an official service center for ZANUSSI, AEG and ELECTROLUX products endorsed or sponsored by Complainant. Consequently, Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of such website.
Complainant first tried to contact Respondent on April 2, 2012, through a cease and desist letter, sent by email. No reply was received so Complainant sent a reminder on April 16, 2012, and a final reminder on May 4, 2012, without receiving any reply. It has been mentioned in earlier disputes that the failure of a respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant2. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the ZANUSSI trademark.
The disputed domain name entirely incorporates the ZANUSSI trademark, adding the suffix “huelva”. The addition of such geographic term is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (see Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; PepsiCo, Inc. v. Kieran McGarry,WIPO Case No. D2005-0629).
Therefore, this Panel finds that the disputed domain name is confusingly similar to the ZANUSSI trademark. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that it has no relationship with Respondent, and that Respondent is not authorized to use the ZANUSSI trademark. Likewise, Complainant asserts that Respondent is not an authorized reseller or service center. Nothing in the file suggests that Respondent may be known by the disputed domain name.
Complainant asserts that Respondent is conveying the false impression that the technical service offered at the disputed domain name website is associated or otherwise approved or endorsed by Complainant. Complainant contends that by doing that Respondent is misleading Internet users to a commercial website and consequently tarnishing the ZANUSSI trademark. The printouts of such website supplied by Complainant clearly show the ZANUSSI trademark and a legend of what claims to be an official repair service center3, and there appears to be no disclaimer disassociating Respondent or such website from Complainant or otherwise providing the identity of the service provider under such website. Further, there is no indication that the offering of such technical/repair services at the disputed domain name website is for free but rather it may be validly inferred that such use is for commercial purposes.
In this Panel’s view, the word “official” coupled with the lack of any kind of disclaimer or identity information on such service provider convey the idea that such technical service is approved by or otherwise associated to Complainant. This Panel considers that the unauthorized use of the ZANUSSI trademark in such way does not constitute a bona fide offering of services.
In this Panel’s view, the lack of a response is also indicative that Respondent either has no interest in the disputed domain name or is short of arguments and evidence to support its holding of the disputed domain name.
Thus in the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which entirely incorporates another’s trademark, this Panel finds that Complainant has established prima facie4 that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
There is no evidence in the present record that supports Complainant’s assertions that ZANUSSI is a well-known trademark with a substantial and widespread reputation throughout the whole European Community and throughout the world so that the awareness of such trademark has to be deemed to be significant and substantial.
However, taking into consideration Complainant’s international presence, that registration of the ZANUSSI trademark preceded the creation of the disputed domain name, and the content of the website associated to the disputed domain name, this Panel is of the view that Respondent should have been fully aware of the existence of Complainant and the ZANUSSI trademark and products marketed thereunder at the time Respondent obtained the registration of the disputed domain name.
Respondent is using the ZANUSSI trademark at the disputed domain name website without Complainant’s authorization. As set forth above, in displaying the legend of being an official technical service, the disputed domain name website conveys the idea that the provision of such a service is at least authorized or otherwise recognized by or associated to Complainant. Further, there appears to be no disclaimer disassociating Respondent or such website from Complainant and Respondent’s identity is not even shown in such website, which is indicative of bad faith5 for purposes of the Policy.
Therefore, this Panel considers that by using the disputed domain name in such a way Respondent has sought to create a likelihood of confusion with Complainant as to the sponsorship or source or affiliation or endorsement of the website associated to the disputed domain name, when in fact there is no such connection.
Respondent’s failure to respond to Complainant’s cease and desist communication is indicative of bad faith when coupled with other factors, as those mentioned above6.
In light of all the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: August 3, 2012
1 Complainant produced a power of attorney granted to it by Electrolux Italia S.p.A, besides that Complainant appears as representative in the corresponding trademark registration.
2 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 Original in Spanish reads: “Servicio Técnico Oficial - ¿Tienes una avería? Contacta con nosotros”.
4 See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
5 See Houghton Mifflin Co. v. The Weathermen, Inc.,WIPO Case No. D2001-0211.
6 See Encyclopaedia Britannica v. Zucarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330, News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623
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