The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Guangzhou Nan Guang Electrical Appliances Co.Ltd. of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 1, 2015. On April 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 7, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on April 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 8, 2015. 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 Complainant, AB Electrolux of Stockholm, is a Swedish joint stock company founded in 1901 and is one of the world's leading producers of appliances and equipment for kitchen and cleaning products and floor care products. In 2014, the Complainant has sales of SEK 112 billion and about 60,000 employees.
The Complainant is the owner of several trademark registrations for the trademark ZANUSSI worldwide. Among others, the Complainant is the owner of Chinese Trademark registration No. 75696 – ZANUSSI, with the registration date of December 22, 1976; International Trademark registration No. 1201466 – ZANUSSI (designating China), with the registration date of March 6, 2014; and many more.
The Complainant has also registered the trademark ZANUSSI as a domain name under numerous generic Top-Level Domains (gTLDs) and country code Top-Level Domains (ccTLDs) worldwide, among these: , and more.
The disputed domain name was registered on June 16, 2012 long after the Complainant has registered the trademark ZANUSSI worldwide. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name directly incorporates the Complainant's well-known registered trademark ZANUSSI, and the mere addition of the country identifier "China" and a hyphen is not sufficient to distinguish it from the Complainant's trademark. The Complainant further contents that on the contrary, their presence is likely to increase the risk that Internet users will be confused into associating the disputed domain name with the Complainant and its ZANUSSI brand.
The Complainant further argues that the Respondent is using the disputed domain name to attract Internet users to its website where it offers repair services. The Complainant further contents that it has clear agreement with all of its authorized partners, and registering a domain name using the Complainant's trademark is forbidden.
The Complainant further argues that the disputed domain name includes a stylized ZANUSSI logo on the top left side of the website to which it resolves. The Complainant further contends that this use made by the Respondent strongly suggests that there is a connection with the Complainant.
The Complainant further argues that while there is no objection to the Respondent's advertisement of its services, the use of the Complainant's ZANUSSI trademark strongly suggests there is an official or authorized link with the Complainant for the purposes of repairs and services in China.
The Complainant further argues that it is undeniable that the Respondent was aware of the Complainant's trademark prior to that acquisition of the disputed domain name and the establishment of the Respondent's website.
The Complainant further argues that the Respondent is not known by the disputed domain name, nor does the Respondent claim to have made legitimate, noncommercial use of the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further argues that it has sent the Respondent a cease and desist letter to which the Respondent failed to answer. The Complainant further argues that if the Respondent had a legitimate reason to use that disputed domain name it would have responded to the cease and desist letter.
The Complainant further argues that it has never granted permission to the Respondent to register the disputed domain name. The Complainant further contends that the Respondent has registered the disputed domain name to intentionally attempt to attract visitors to the disputed domain name by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or a product or service on the Respondent's website or location.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The disputed domain name consists of Latin-script letters, rather than Chinese characters;
b) The disputed domain name includes the Complainant's mark, as well as the English name of the country China;
c) The Respondent did not object to the Complainant's request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant owns numerous worldwide trademark registrations for the mark ZANUSSI. For example: Chinese Trademark registration No. 75696 – ZANUSSI, with the registration date of December 22, 1976; International Trademark registration No. 1201466 – ZANUSSI (designating China), with the registration date of March 6, 2014; and many more.
The Complainant also owns domain names with the trademark ZANUSSI, i.e., , and more.
The disputed domain name is identical to the registered trademark ZANUSSI apart from the addition of a hyphen "-" and the geographical term "China". The disputed domain name integrates the Complainant's trademark ZANUSSI in its entirety, as a dominant element.
The addition of a hyphen "-" is considered to be a mere non-significant element and the addition of the geographical term "China" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's ZANUSSI trademark as "China" stands for country of China, where the Complainant also conducts business. It is clear that the most prominent element in the disputed domain name is the term "zanussi". Consequently, this panel finds that the disputed domain name is confusingly similar to the Complainant's ZANUSSI trademark.
Previous UDRP panels have ruled that the mere addition of a not sufficiently differentiating element in the domain name does not avoid a finding of confusing similarity with trademark: "the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Indeed, "[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark" (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the addition of a gTLD ".com" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".com" is typically without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the ZANUSSI trademark, or a variation thereof.
The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the ZANUSSI trademark in China since at least the year 1976. It is suggestive of the Respondent's bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant provided evidence to demonstrate its trademark's vast goodwill. "It is very unlikely that the Respondent would have registered the Domain Names unless he knew either the existence of the trademark Swarovski or that the Domain Names at issue might be of some type of economic advantage" (see Swarovski Aktiengesellschaft v. James Johnson,WIPO Case No. D2012-0080). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or online location to which the disputed domain name resolves, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location to which the disputed domain name resolves.
The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have ruled that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent's use of the highly distinctive trademark of the Complainant on the website under the disputed domain name is also suggestive of the Respondent's bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with a longstanding reputation is intended to make an impression of an association with the Complainant (see Swarovski Aktiengesellschaft v. fan wu,WIPO Case No. D2012-0065).
Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant's allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.
Indeed, "when a domain name is so obviously connected with a Complainant, its very use by a registrant with no connection to the Complainant suggests 'opportunistic bad faith'" (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
From the evidence submitted by the Complainant and from a search the Panel had conducted itself it is clear that the Respondent is using the disputed domain name to promote repair services for the Complainant's products.
Using the disputed domain name to promote these services associated to the products offered by the Complainant, without the Complainant's authorization, is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and its trademark, and indicates that the Respondent's primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent's actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith".)
Further, the Complainant submitted evidence proving that the Respondent has incorporated the ZANUSSI marks on its website, this use is made in order to attract consumers for commercial gain by purporting to sell services for the Complainant's products: "Respondent's bad faith registration and use is affirmed in the fact that the disputed domain name directed Internet users to a variety of products such as 'necklaces', 'bracelets' and 'earrings' using an identical name to the Complainant's trademark. That past practice confirms not only the Respondent's awareness that the advertised products were 'Swarovski' products, but also the Respondent's actual use of the Complainant's name in bad faith" (see Swarovski Aktiengesellschaft v. Tevin Duhaime,WIPO Case No. D2012-2170). The Panel also considers that the website does not accurately and prominently disclose the Respondent's relationship with the Complainant, and accepts the Complainant's claim stating the Responded did not include a disclaimer to the disputed domain name.
The Panel also finds that the Respondent's attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondent's website falls under paragraph 4(b)(iv) of the Policy.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant's trademark and the Respondent's use of the disputed domain name, and the failure of the Respondent to respond to the cease and desist letter the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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, the Panel orders that the disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: May 22, 2015
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