The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Remon Fawzy, Marcom Advertising Co. of Cairo, Egypt. 2. The Domain Names and Registrar
The disputed domain names , and (together the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2016. On April 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 19, 2016, 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 April 25, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 17, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 25, 2016. 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 is AB Electrolux. It is a Swedish company and a major manufacturer of domestic appliances such as refrigerators and washing machines. It has been in business since 1901. In 1984 it acquired an Italian manufacturer of domestic appliances which traded under the brand name ZANUSSI, and since then ZANUSSI has been one of the brands which the Complainant uses in respect of its products. It uses this brand on a worldwide basis including in the Middle East.
The Complainant is the owner of numerous trademark registrations for the word ZANUSSI including several trademarks for ZANUSSI valid in Egypt where the Respondent originates from, see for example international trademark registration 1201466 (registered in 2014).
The Complainant uses various domain names including the word ZANUSSI to promote its business including (created on November 17, 1995) and (created on December 16, 2002).
Between August 2014 and January 2016 the Respondent registered the Disputed Domain Names.
All of the Disputed Domain Names resolve to websites offering the Complainant’s products and / or service and spare parts for the Complainant’s products. Although the text on the website is in Arabic the images and visual content on the websites are sufficient to establish this is the case. The Respondent is not an authorized dealer, distributor or repairer of the Complainant’s products.
On January 11, 2016, the Complainant sent to the Respondent a cease and desist letter and requested a voluntary transfer of the Disputed Domain Names. No response was received and a reminder was sent on January 15, 2016. No response to this was received. 5. Parties’ Contentions A. Complainant
The Complainant’s case can be summarized as follows.
a) Each of the Disputed Domain Names is confusingly similar to the ZANUSSI trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Names. The Complainant refers to the well-known WIPO case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and says that the conditions specified in that case which might justify the use of a trademark as a domain name are not satisfied in various respects including (i) the Respondent does not publish a disclaimer on the websites of the Disputed Domain Names; (ii) the Respondent is marketing other trademarked goods on its websites, using for example the names BOSCH and ARISTON GE; (iii) the Respondent is depriving the Complainant of reflecting its own mark in the Disputed Domain Names and on the Egyptian market; and (iv) the Respondent presents itself as the Complainant by using a website design that looks official by using the Complainant’s logo and color scheme.
c) The Respondent has registered and used the Disputed Domain Names in bad faith as the Disputed Domain Names must have been registered with knowledge of the Complainant’s trademark rights. The use by the Respondent of the word Zanussi in combination with descriptive terms or with minor typographical changes as a domain name is not acceptable as it suggests that the Respondent is authorized by the Complainant when it is not. This is reinforced by the content of the Respondent’s website which involves prominent use of the Complainant’s ZANUSSI trademark, together with adopting the Complainant’s black and yellow color scheme which strongly suggests to Internet visitors that there is a connection with Complainant. This amounts to bad faith.
In addition a reverse whois search shows that the Respondent has registered a number of other domain names consisting of well-known marks, such as , , and . The fact that a Respondent registers well-known trademarks as domain names can be taken into account as an indication of bad faith – the Complainant refers to Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International IP, LLC v. Name Supply,WIPO Case No. D2014-1054 in support of this argument. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However given the Complaint, Notification of Complaint and Commencement of the Administrative Proceeding and Written Notice were sent to the relevant physical and email addresses disclosed by the Registrar then the Panel again adopts the approach set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Over view 2.0”) paragraph 4.9 namely, “once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice”.
In these circumstances the Panel is satisfied that the Center has complied with its obligation to employ “reasonably available means calculated to achieve actual notice to Respondent”. Under the Rules (paragraph 5(f)) “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.” The Panel concludes that there are no exceptional circumstances which prevent the Panel deciding the dispute. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909). 6.2. Substantive Matters
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Respondent’s domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in the domain name;
iii. the Respondent’s domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of various trademarks consisting of the word “ZANUSSI”. It is well established that the specific top level of the domain name (in this case “com”) does not affect the domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). The only differences in the present case are (i) the addition of an extra “i”; (ii) the addition of a geographic non-distinctive term (“cairo”); and (iii) the addition of an entirely descriptive term (“care”). These differences do not suffice to negate the similarity between each of the Disputed Domain Names and the Complainant’s ZANUSSI trademark. In this regard it is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694). It is also established that the addition of a generic term to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The Panel holds that each of the Disputed Domain Names is confusingly similar to the ZANUSSI trademarks. Accordingly the Panel finds that the Disputed Domain Names are identical or confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the ZANUSSI trademark. The Complainant has prior rights in the ZANUSSI trademark which precede the Respondent’s registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the ZANUSSI trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the ZANUSSI trademark, and the confusingly similar nature of the Disputed Domain Names to the ZANUSSI trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Names leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Names independently and without knowledge of the Complainant or its products. The websites operated by the Respondent to which the Disputed Domain Names resolve are clearly promoting a business which (amongst other things) concerns the Complainant’s products and the Panel has no doubt the Respondent was by use of the Disputed Domain Names seeking to suggest it had a connection with the Complainant in the course of trade, by suggesting that it was the Complainant’s ZANUSSI business, or an authorised retailer or repairer of the Complainant’s ZANNUSI products. It is not. As such its behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The Panel also accepts the Complainant’s submissions that the principles set out in the well-known case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 which would justify inclusion of the Complainant’s trademark in each of the Disputed Domain Names do not apply, for the reasons set out by the Complainant (see above).
In the light of these findings it is not necessary for the Panel to consider the further matters relied upon by the Complainant.
Accordingly the Panel finds that each of the Disputed Domain Names have been registered and are being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names and and be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: June 8, 2016
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