The Complainant is AB Electrolux of Stockholm, Sweden (“Complainant”), represented by BrandIT Legal AB, Sweden.
The Respondent is DomCollect AG of Zug, Switzerland / DomCollect International GmbH of Köln, Germany (“Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2015. On April 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 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 May 4, 2015, the Registrar transmitted by email to the Center a clarification and Complainant filed an amendment to the Complaint on May 5, 2015.
According to information received from the concerned Registrar, the language of the registration agreement for the disputed domain name is German. Complainant was requested to provide at least one of the following: 1) satisfactory evidence of an agreement between Complainant and Respondent to the effect that the proceedings should be in English; or 2) submit the Complaint translated into German; or 3) submit a request for English to be the language of the administrative proceedings. Complainant submitted a request that English be the language of the proceedings, to which Respondent did not reply.
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 May 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 27, 2015.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 4, 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. Language of the Proceeding
The Registrar notified the Center that the language of the registration agreement is German. Paragraph 11(a) of the Rules provide: “Unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement, the language of the 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 proceedings.”
As noted, Complainant submitted a request that the language of the proceeding should be English, rather than German. Complainant cited the following facts: 1) in previous matters, panels have determined that the language of the proceeding should be other than that of the registration agreement where a request was made of the Complainant for such a determination and where panels found that the Center had notified the Respondent in both the language requested by Complainant and in the language of the registration agreement, and Respondent failed to reply or to object to the proposed language; 2) the disputed domain name consists of Complainant’s ZANUSSI mark, which is an Italian name, together with three Spanish words; 3) the disputed domain name resolves to a web site which is entirely in the English language; and, 4) Complainant would not object to the response being made in German, although it would involve unnecessary delay in order for Complainant, whose first language is Swedish and whose second language is English, to make a translation thereof.
On April 23, 2015, the Center notified Respondent in English and in German of Complainant’s request that the language of the proceedings be English, inviting Respondent to reply in either German or English to this request by April 28, 2015, and warning that should Respondent fail to respond by that date, the Center would assume that Respondent had no objection to proceeding in English and that the Center would conduct the proceeding in English and German, subject t to the Panel’s ultimate determination. Respondent failed to respond or to object to the conduct of the proceedings in English.
On May 6, 2015, the Center notified Respondent of the Commencement of the Proceeding in both German and English. Included in the notification was an iteration of Complainant’s request that the language of the proceedings be English and a notification that the Response to the Complaint was due on May 26, 2015.
Given that a request has been made that the proceeding be conducted in the English language, that Complainant has furnished evidence that the web site to which the disputed domain name resolves is entirely in the English language (Complaint, Annex 12), that Complainant’s request and the request for response thereto and the Notification of Complaint were served on Respondent by the Center in both German and English, that Respondent has failed to respond to any of the Center’s communications or to the complaint, the Panel determines that the proceeding of this matter should be conducted in English. 5. Factual Background
Complainant is a Swedish 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, Complainant had sales of SEK 112 billion and about 60,000 employees.
The ZANUSSI brand was founded in 1916. In 1984, Complainant acquired the Italian appliance manufacturer Zanussi together with its intellectual property and has registered trademarks in Spain registered on December 24, 1958; internationally registered on November 9, 1973; and in the European Community registered on February 17, 1997 (Complaint, Annexes 9.1, 9.2, and 9.3).
Complainant is also the holder of domain names created on November 17, 2005, , created on November 10, 2005, and , created on August 18, 1997 (Complaint, Annex 7).
The disputed domain name was registered on March 9, 2010 (Complaint, Annex 3). Respondent uses the disputed domain name to resolve to a web site in the English language at which the disputed domain name is offered for sale (Complaint, Annex 12). 6. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant’s registered ZANUSSI trademark, in that the disputed domain name consists of the trademark to which is appended the Spanish words “servicio,” “tecnico,” and “valencia.” “Sevicio tecnico” is the Spanish equivalent of the English “technical service” and “Valencia” is the name of a city in Spain. Complainant further argues that it has not authorized Respondent to use its mark in any fashion. Finally, Complainant alleges that Respondent is offering the disputed domain name for sale on the web site to which it resolves, which is a textbook example of bad faith registration and use. B. Respondent
Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) 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; and
2) that the respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s ZANUSSI trademark and the Spanish words, “servicio,” “tecnico” and” “valencia” which in English roughly translates to “Zanussi Technical Service, Valencia.” A domain name which consists of a trademark to which is appended a descriptive and/or geographical term is confusingly similar to the trademark it incorporates.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s registered ZANUSSI trademark. B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name as described above under Section 6 and Respondent has failed to assert any such rights.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Respondent is using the disputed domain name to resolve to a web site at which the disputed domain name is offered for sale to the public. This is a clear example of bad faith registration and use, as explicitly set out in paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 8. 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.
M. Scott Donahey
Sole Panelist
Date: June 8, 2015
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