The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Mostafa Alashi of Hamat, Jordan. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2015. On October 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on November 18, 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, incorporated in Sweden, is one of the world's leading producers of kitchen appliances and kitchen products. The Complainant and its predecessors have traded under the name “Zanussi” since 1916. The brand was originally Italian-owned. In 2014 the Complainant’s sales were SEK 112 billion and its employees numbered some 60,000.
The Complainant owns numerous trade marks for ZANUSSI including Jordanian trade mark no. 130794 dated August 13, 2013, in class 28, and international trade mark no. 404462 dated November 9, 1973, in classes 6, 7, 9, 11, 14, 17, 20, 21 and 40.
The disputed domain name was registered on May 22, 2015.
At the time the Complaint was filed, the website at the disputed domain name offered repair and maintenance services for appliances. The home page stated (in Arabic): “We are the fastest and best in the Egypt, The most efficient and most skilled engineers and maintenance service, Certified original spare parts and warranty”. The site included a prominent rendition of the Complainant’s logo in conjunction with the Italian flag together with many images of the Complainant’s products. There was also a row of logos of well-known competitors of the Complainant, such as Bosch.
The Complainant sent cease and desist letters to the Respondent on June 30, 2015, and July 21, 2015, but there was no response. 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions:
Due to extensive use, advertising, and revenue associated with its mark, the Complainant enjoys a high degree of renown around the world, including in Jordan.
The disputed domain name incorporates the Complainant’s well-known mark. The only difference is the addition of the generic word “services”, which exaggerates the impression that the Respondent is somehow connected with the Complainant.
The Respondent lacks rights and legitimate interests in the disputed domain name.
The Respondent’s use of the disputed domain name creates an overall impression that it is the Complainant. The Respondent fails to comply with UDRP reseller principles by not publishing a disclaimer, depriving the Complainant of the ability to reflect its own mark in the Egyptian and Jordanian markets, and selling goods by brands that compete with the Complainant.
The Respondent has made no claim to any rights of its own or that is has been commonly known by, or made legitimate noncommercial use of, the disputed domain name.
The Complainant’s trade mark significantly pre-dates the disputed domain name. It is unlikely that the Respondent was unaware of the Complainant at the time of registration of the disputed domain name.
The Respondent failure to respond to the Complainant’s cease and desist letter is evidence of bad faith.
The Respondent has taken advantage of the Complainant’s trade mark by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. The Respondent intentionally chose the disputed domain name based on a well-known trade mark in order to generate more traffic for its business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark ZANUSSI by virtue of its registered trade marks as well as its unregistered trade marks deriving from the extensive and worldwide use of that name.
Disregarding the domain suffix, the disputed domain name consists of the Complainant’s trade mark plus a hyphen and the generic term “services”.
Paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) makes clear that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain name.
Accordingly, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
“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 a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence 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 […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
The Respondent is selling spares, and offering maintenance for, the Complainant’s products.
As to paragraph 4(c)(i) of the Policy, in the Panel’s view it is appropriate to approach this as a reseller-type case. UDRP panels have applied suchprinciples in the case of repairs to, and sale of spares for, a trade mark owner’s products. See, e.g., Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
The consensus view of UDRP panels – as expressed in paragraph 2.3 of WIPO Overview 2.0 – is that to establish a bona fide offering of goods or services in such circumstances, a reseller must comply with certain requirements:
“These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.”
The Respondent does not meet these criteria.
First, it has used the disputed domain name to offer services for competitor products. See Control Techniques Limited v. Lektronix Ltd, supra:
“It is clear, therefore, that the Respondent cannot bring itself within the Oki Dataprinciples, for it is trading on the Complainant’s trademark to promote its own services and to enhance the products of business rivals of the Complainant by offering to service their competing products and sell their competing spare parts.”
Second, the website fails to accurately and prominently disclose the Respondent’s relationship with the trade mark holder; on the contrary, the Respondent has copied, and prominently used, the Complainant’s logo in conjunction with the Italian flag to try and give the impression that it is, or is officially connected with, the Complainant.
Accordingly, the Panel considers that the Respondent’s use of the disputed domain name cannot be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Respondent has sought to create the impression through the disputed domain name and associated website making prominent use of the Complainant’s logo plus Italian flag that it is operating under the sponsorship, affiliation or endorsement of the Complainant.
In finding that activities similar to those of the Respondent in this case came within paragraph 4(b)(iv) of the Policy, the panel in Control Techniques Limited v. Lektronix Ltd, supra observed:
“The Respondent could always have used its own name and then announced on its website that it sold spare parts for and serviced Control Techniques equipment. Instead of doing that, it has attracted potential customers by using and promoting the Complainant’s trademark without consent and creating the impression in the minds of at least some potential customers that it has the endorsement of the Complainant.”
The same applies here. Indeed, the situation is aggravated by the use of the disputed domain name to offer services for competitor products:
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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.
Adam Taylor
Sole Panelist
Date: December 2, 2015
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