The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Rajaa Nasr of Cairo, Egypt. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with N, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2018. On August 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2018, 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 and contact information for the disputed domain name.
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 August 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2018. The Respondent sent an email to the Center on August 20, 2018, offering to disable the disputed domain name. On August 20, 2018, the Complainant sent a request for suspension to the Center. On August 20, 2018, the Center notified the suspension of the administrative proceedings until September 19, 2018. On September 19, 2018, the Complainant requested the Center to reinstitute the proceedings. The due date for Response was October 5, 2018. In accordance with the Rules, paragraph 6, on October 10, 2018, the Center notified the commencement of panel appointment process to the Parties.
The Center appointed Jane Seager as the sole panelist in this matter on October 18, 2018. 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, is a Swedish joint stock company founded in 1901. It is one of the world’s leading producers of appliances and equipment for kitchens, cleaning products and floor care products.
The Complainant has supplied evidence that it owns, through its wholly owned subsidiary Electrolux Italia S.p.A., a registered trade mark ’for ZANUSSI (International Trade Mark No. 404462, designating Egypt, amongst others, and registered on November 9, 1973 for goods and services in classes 6, 7, 9, 11, 14, 17, 20, 21 and 40).
The Respondent appears to be an individual based in Egypt. No additional information about the Respondent is known.
The Domain Name was registered by the Respondent on February 24, 2018. At the time that the Complaint was filed it was resolving to web page offering repair and maintenance services for ZANUSSI products. 5. Parties’ Contentions A. Complainant
In response to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant’s trade mark
The Complainant asserts that it has developed a strong name and reputation in relation to the ZANUSSI products and appliances. The Complainant states that it holds several trade marks for ZANUSSI dating back as far as 1973 and thus by far predating the registration of the Domain Name. As evidence, the Complainant has supplied a copy of its trade mark registration certificate.
The Complainant contends that 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. The Complainant submits that it acquired the Italian appliance manufacturer Zanussi in 1984 making the Complainant the leader in household appliances for consumers and professionals. Furthermore, the Complainant avers that ZANUSSI is one of the Complainant’s strategic brands and the Complainant, a market leader in white goods and floor care products in Europe, has devoted substantial resources to advertising and promoting its ZANUSSI trade mark. The Complainant adds that the Middle East is one of the growing markets for the Complainant and the Complainant has experienced an increase in third party domain registrations in this region in the last year. Moreover, the Complainant submits that in 2011 the Complainant acquired Egypt’s leading appliance manufacturer the Olympic Group and expanded its presence even further. In 2015, Electrolux had sales of SEK 124 billion and about 58,000 employees.
The Complainant contends that it has registered a number of domain names under generic Top-Level Domains (“gTLDs”) and country-code Top-Level Domains (“ccTLDs”) containing the term “Zanussi”, for example (created on November 17, 2005) and (created on December 16, 2002). The Complainant avers that it uses these domain names to resolve to websites through which it informs potential customers about its ZANUSSI mark and its products and services. The Complainant claims that it enjoys a high degree of renown around the world, including in Egypt. The Complainant underlines that it has previously successfully challenged several domain names containing the term “Zanussi” through the UDRP process.
Furthermore, the Complainant claims that the Domain Name directly incorporates the Complainant’s
well-known registered trade mark ZANUSSI. According to the Complainant, the gTLD “.click” does not differentiate the Domain Name from the ZANUSSI trade mark.
(ii) The Respondent has no rights or legitimate interests in the Domain Name
The Complainant submits that it has not found that the Respondent is commonly known by the Domain Name, there is no evidence that the Respondent has a history of using, or preparing to use, the Domain Name in connection with a bona fide offering of goods and services and the Respondent has not made any legitimate, noncommercial or fair use of the Domain Name. Moreover, the Complainant argues that the intention of the Domain Name registration is to take advantage of the Internet traffic generated due to the incorporation of the well-known ZANUSSI trade mark in the Domain Name and that the Respondent is using the Domain Name to attract Internet users to its website to offer repair and maintenance services for ZANUSSI products. The Complainant argues that the incorporation of the trade mark in the Domain Name and the ZANUSSI logo appearing prominently in the center of the website strongly suggests that there is a connection with the Complainant and that there is some official or authorized relationship with the Complainant for the purposes of repairs and services.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant submits that the Domain Name is currently used to offer repair and maintenance services of Zanussi products. The Complainant argues that the Respondent has never been granted permission to register the Domain Name and that the Respondent is taking advantage of the ZANUSSI trade mark by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark 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. Furthermore, according to the Complainant, the Respondent intentionally chose the Domain Name based on a registered and
well-known trade mark in order to generate more Internet traffic to its own business since the Respondent has not published a disclaimer anywhere on its website to explain that there is no existing relationship between itself and the Complainant. Instead, the Respondent frequently and explicitly claims to be authorized by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favour of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in the term ZANUSSI, namely the International Trade Mark No. 404462, designating Egypt, registered on November 9, 1973 for goods and services in classes 6, 7, 9, 11, 14, 17, 20, 21 and 40. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s distinctive ZANUSSI trade mark in its entirety. See section 1.7 of the WIPO Overview 3.0: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Furthermore, it is widely accepted that the “.click” gTLD is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
“(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 organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such relevant evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Respondent is not making a bona fide offering of goods or services, in accordance with Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which is the leading case on domain name disputes amongst resellers and trade mark holders. To be“bona fide”, according to Oki Data, the offering must meet, at a minimum, the following requirements:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the website to sell only the trade marked goods;
(iii) the website must accurately disclose the registrant’s relationship with the trade mark owner;
(iv) the respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
In the present case, the Panel finds that the Respondent has clearly failed to meet the third requirement. The Panel further finds that the website associated with the Domain Name at the time of filing did not contain a disclaimer or any other indication accurately disclosing the relationship (or lack thereof) with the Complainant. The Respondent explicitly claimed to be authorized by the Complainant and so Internet users visiting the website would likely believe that the Respondent was endorsed or sponsored by the Complainant, when in fact this was not the case. Based on the foregoing, the Respondent’s offering cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy.
Furthermore, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name, within the meaning of paragraph 4(c)(iii) of the Policy, for the same reasons described above.
The Respondent is not affiliated or connected in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its ZANUSSI trade mark. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.
In addition, the Panel notes that the second-level of the Domain Name is identical to the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0: “UDRP panels have found that domain names identical to a complainant’s trade mark carry a high risk of implied affiliation”.
Finally, the Respondent’s lack of rights or legitimate interests in the Domain Name may be further inferred in the circumstances of this case from the Respondent’s failure to submit a response to the Complaint. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the Domain Name was registered in bad faith. The Complainant’s ZANUSSI trade mark not only predates the registration date of the Domain Name by more than forty years, but also enjoys considerable renown in connection with appliances and equipment for kitchens, cleaning products and floor care products. The Panel therefore agrees with the Complainant that the Respondent was likely aware of the Complainant’s rights at the time of registration of the Domain Name and thus registered it seeking to unduly profit from the Complainant’s considerable goodwill and reputation. The Panel also notes that the Respondent’s subsequent use of the Domain Name to point to a website prominently displaying the Complainant’s logo and offering repair and maintenance services for ZANUSSI products confirms this.
The Panel further finds that the Respondent’s use of the Domain Name also constitutes bad faith. The Domain Name, which is identical to the Complainant’s distinctive trade mark, was being used by the Respondent to resolve to a website offering repair and maintenance services for ZANUSSI products and prominently displaying the Complainant’s trade mark. The website associated with the Domain Name contained a statement that the Respondent was authorised by the Complainant, when in fact it was not. The Panel therefore finds that by using the Domain Name the Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the its website, in accordance with paragraph 4(b)(iv) of the Policy. Indeed, the Panel finds that it is simply not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate, as it would inevitably result in misleading diversion and taking unfair advantage of the Complainant’s rights.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith. Accordingly, the 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, the Panel orders that the disputed domain name be transferred to the Complainant.
Jane Seager
Sole Panelist
Date: October 26, 2018
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