The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Domain Admin / Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain names , and (the “Domain Names”) are registered with Internet Domain Service BS Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2019. On February 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 12, 2019, 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 February 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2019.
The Center appointed Olga Zalomiy as the sole panelist in this matter on March 15, 2019. 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 a Swedish manufacturer of kitchen appliances, as well as cleaning and floor care products.
The Complainant is the owner of numerous registrations for its well-known ELECTROLUX mark and its variations, including:
- International registration of the ELECTROLUX logo, No. 1260775 dated January 27, 2015, designated in the Russian Federation as of July 21, 2016;
- International registration of the ELECTROLUX logo, No. 836605 dated March 17, 2004, designated in the Russian Federation as of December 30, 2004;
- International registration of the ELECTROLUX SERVICE logo, No. 854121, dated October 8, 2004, designated in the Russian Federation as of August 30, 2007.
The Complainant is also the owner of numerous registrations for its well-known ZANUSSI mark and its variations, including:
- International registration of the ZANUSSI mark, No. 404462 dated November 9, 1973, designated in the Russian Federation as of 1994;
- International registration of the ZANUSSI mark, No.1201466 dated March 6, 2014, designated in the Russian Federation as of May 21, 2015.
The Complainant is also the registered owner of domain names, which incorporate the ELECTROLUX and ZANUSSI marks, including: created on April 30, 1996, ˂˃ created on July 2, 1998, created on November 17, 1995 and created on July 2, 1998. The domain names direct to the Complainant’s official websites. The websites offer information, education and support services for the Electrolux and Zanussi products.
On August 9, 2018, the Complainant sent the Respondent a cease-and desist letter in English notifying the Respondent about the Complainant’s trademark rights in the ELECTROLUX and ZANUSSI marks and about the Respondent’s infringement on those rights. Six days later the Complainant sent a follow-up e-mail to the Respondent, but received no response.
The Respondent registered the Domain Name on May 15, 2018. The Respondent registered the Domain Name on May 22, 2018. The Domain Names direct to websites in the Russian language offering repair and maintenance services for Electrolux and Zanussi products respectively. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is a Swedish manufacturer of kitchen appliances, as well as cleaning products and floor care products. The Complainant alleges that the Domain Names are identical or confusingly similar to its well-known trademarks ELECTROLUX and ZANUSSI because the Domain Names incorporate the Complainant’s trademarks in their entirety. In the Complainant’s view, neither the addition of generic words “support”, nor the addition of the letters “spb” differentiates the Domain Names from the Complainant’s trademarks. The Complainant alleges that the addition of the generic Top-Level Domain (“gTLD”) “.com” has no impact and is irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant claims that there is no evidence that the Respondent has a history of using, or preparing to use, the Domain Names in connection with a bona fide offering of goods and services. The Complainant alleges that it has given no license or authorization of any kind to the Respondent to use the Complainant’s trademarks. The Complainant argues that the Respondent is not making a fair use of the Domain Names as a service provider for three reasons: (i) the Respondent’s websites associated with the Domain Names do not disclose lack of relationship between the Respondent and the Complainant; (ii) the Respondent falsely presents itself as the trademark owner by using the Complainant’s registered ELECTROLUX and ZANUSSI trademarks and logos on the Respondent’s websites; and (iii) the Respondent is depriving the Complainant of reflecting its ELECTROLUX and ZANUSSI trademarks in the Domain Names. The Complainant asserts that the Respondent is not commonly known by the Domain Names.
The Complainant asserts that the Domain Names were registered and are being used in bad faith. In the Complainant’s view, there is no doubt that the Respondent was aware of the Complainant’s rights in the ELECTROLUX and ZANUSSI trademarks at the time of the Domain Names’ registrations because the Complainant’s trademark registrations predate registrations of the Domain Names and the Complainant’s trademarks are well-known. The Complainant alleges that the Respondent’s failure to respond to the Complainant’s cease and desist letters is another indication of the Respondent’s bad faith. The Complainant asserts that it has not granted a permission to the Respondent to register the Domain Names. The Complainant claims that the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain by using the Domain Names. Instead, in the Complainant’s view, the Respondent is misleadingly diverting consumers for its own commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of these elements regarding the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Under the first UDRP element, the Complainant must prove that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Under section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Complainant satisfied the standing requirement in this case by submitting evidence of ownership of the ELECTROLUX and ZANUSSI trademarks.
The Domain Names consist of the Complainant’s ELECTROLUX and ZANUSSI trademarks, hyphens, the words “esupport”, the abbreviation “spb” and the gTLD “.com”. “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.”1 Because the ELECTROLUX and ZANUSSI trademarks are recognizable within the Domain Names, neither the addition of the terms “esupport” and “spb”, nor the addition of hyphens would prevent a finding of confusing similarity under the first element.2 “The applicable gTLD in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”3 The Panel finds that the Domain Names are confusingly similar to the Complainant’s ELECTROLUX and ZANUSSI trademarks.
Thus, the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests
To satisfy the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.4
The following circumstances, in particular, but without limitation, if found by the Panel to be proved based on the evidence, shall demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(iii):
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
First, the Complainant alleges, and the Respondent does not contradict, that the Respondent has not been commonly known by the Domain Names. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Names. The WhoIs information on file shows that the Respondent identified itself as Domain Admin / Whois Privacy Corp.
Second, the Respondent has not been using the Domain Names in connection with a bona fide offering of goods or services. The Complainant contends that it did not authorize the Respondent to use the Complainant’s ELECTROLUX or ZANUSSI trademarks in any manner.
Third, the Respondent’s use of the Domain Names is not fair, because “it falsely suggests affiliation with the trademark owner”.5 The nature of the Domain Names itself suggests affiliation between the Complainant and the Respondent because the Domain Names contain the words “esupport” and the geographic indication “spb”6 , which stands for St. Petersburg. The Domain Names direct to websites that offer repair services of ELECTROLUX and ZANUSSI products in Moscow and St. Petersburg, Russian Federation.
While prior UDRP panels recognized that unauthorized service providers might have legitimate interests in a domain name containing complainant’s trademark, their activities should comply with the following cumulative requirements (the “Oki Data Test”):
“(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”7
Here, the Respondent failed to comply with the Oki Data test prongs. The evidence on file shows that the websites connected to the Domain Names are used for service centers of ELECTROLUX and ZANUSSI equipment. The Respondent websites’ designs exacerbate a misleading impression of an affiliation between the Complainant and the Respondent. The evidence shows that the websites prominently display the Complainant’s ELECTROLUX and ZANUSSI logos alongside the words in Russian that translate to English as “Moscow service center” and “Service center in St. Petersburg”. The Respondent’s websites contain no disclosure of the Respondent’s relationship with the Complainant. Finally, the Respondent tries to “corner the market” in domain names for the Complainant by denying it an opportunity to register the domain names for the Complainant’s services centers. Because the Respondent’s use of the Domain Name did not comply with the requirements of the Oki Data Test, its use of the Domain Names did not create rights or legitimate interests in the Domain Name.
The Panel, therefore, finds that the Complainant has made out a prima facie case in respect to the Respondent’s lack of rights or legitimate interests in the Domain Names. Once a complainant has made out the prima facie case, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name.8 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.9 Because the Respondent failed to rebut the Complainant’s prima facie case, the Complainant has satisfied the second element of the UDRP. C. Registered and Used in Bad Faith
Under the third UDRP element, the Complainant is required to prove that the Domain Names were registered and are being used in bad faith.
The Panel finds that the Respondent registered the Domain Names in bad faith because it is inconceivable that the Respondent was not aware of the Complainant’s well-known trademarks at the time of the Domain Names’ registration. See, PepsiCo, Inc. v. Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”). The Respondent’s use of the Domain Names for websites prominently displaying the Complainant’s ELECTROLUX and ZANUSSI logos in connection with repair services for the Complainant’s equipment supports this conclusion.
The Panel also finds that the Respondent is using the Domain Names in bad faith. The Respondent is trying to capitalize on the goodwill of the Complainant’s trademarks by using the Domain Names to attract, for commercial gain, Internet users to the Respondent’s websites by creating likelihood of confusion with the Complainant’s marks as to the affiliation or endorsement of either the Respondent or its websites. The Respondent is profiting from the impression of affiliation with the Complainant.
Therefore, the Panel finds that the Domain Names were registered and are being used in bad faith. The third element of the UDRP has been proved. 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 names, be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Date: March 19, 2019
1 Section 1.7, WIPO Overview 3.0.
2 Section 1.8, WIPO Overview 3.0.
3 Section 1.11.1, WIPO Overview 3.0.
4 Section 2.1, WIPO Overview 3.0.
5 See Section 2.5.1, WIPO Overview 3.0.
6 See, Section 2.5.1, WIPO Overview 3.0.
7 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903
8 Section 2.1, WIPO Overview 3.0.
9 Id.
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