The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2019. On March 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 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 March 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2019.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on April 29, 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 joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products.
The Complainant owns the rights for the ZANUSSI marks through their wholly owned subsidiary Electrolux Italia S.p.A. These rights include:
- the international trademark registration ZANUSSI for goods and services in classes 6, 7, 9, 11, 14, 17, 20, 21, 40, registered on November 9, 1973 (No. 404462);
- the international trademark registration ZANUSSI PROFESSIONAL for goods and services in classes 7, 11, 21, registered on September 3, 2007 (No. 950678);
- the international trademark registration ZANUSSI for goods and services in classes 6, 7, 9, 11, 14, 17, 20, 21, 40, 42 registered on August 27, 1982 (No. 474019)
- the international trademark registration ZANUSSI for goods and services in class 28, registered on March 6, 2014 (No. 1201466).
The Complainant has registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the term “zanussi”, for example (registered on November 17, 2005) as well as the local domain name (registered on July 2, 1998).
The disputed domain name was registered on June 13, 2018.
On August 9, 2018, the Complainant’s representative sent a cease and desist to the Respondent who did not reply.
The website that the disputed domain name resolves to a webpage that offers repair and maintenance services for Zanussi products. 5. Parties’ Contentions A. Complainant
Firstly, the Complainant contends that the disputed domain name is confusingly similar to the ZANUSSI mark. According to the Complainant, the disputed domain name directly and entirely incorporates the Complainant’s well-known registered trademark. The Complainant asserts that addition of a generic word such as “repairer” does not differentiate the disputed domain name from the registered trademarks.
Secondly, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant alleges that the Respondent is not commonly known by the disputed domain name and the Complainant has not authorized the Respondent to register the disputed domain name. The Complainant also claims that the Respondent does not use the disputed domain name in connection with bona fide offering of goods or services as the Respondent aims at attracting the Internet users to its website where it offers repair and maintenance services for Zanussi products. The Complainant emphasizes that the Respondent does not publish any kind of disclaimer on the website that the disputed domain name resolves to and it presents itself as the trademark owner by using the Complainant`s official ZANUSSI trademarks and logo on this website. In the Complainant’s opinion, the Respondent’s use of the disputed domain name creates an overall impression that it is affiliated with the Complainant.
Thirdly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant’s trademark registrations predate the registrations of the disputed domain name and therefore it seems highly unlikely for the Complainant that the Respondent was not aware of the existence of the trademarks. The Complainant also claims that the Respondent has failed to respond to the communication attempts made by the Complainant, which should also be considered an indication of a bad faith registration. Moreover, the Complainant points out that the disputed domain name is currently used as a service center website for Zanussi products, therefore the Respondent is using it to intentionally attempt to attract, for commercial gain, Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met. A. Identical or Confusingly Similar
The disputed domain name contains the ZANUSSI mark in its entirety, with an addition of the word “repairer”. The term “repairer” does not serve to render the disputed domain name dissimilar to the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 3.0”), section 1.8.
The gTLD “.com” should not be take into consideration while assessing the similarity between the disputed domain name and the complainant’s marks.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the ZANUSSI mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; see also WIPO Overview 3.0, section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) there is no evidence that the Respondent has been commonly known by the disputed domain name; (b) the Respondent used the privacy shield to register the disputed domain name; (c) the Complainant did not authorize the Respondent to register the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, a use of a domain name including a registered mark of a third party for the purpose of creating a website that offers repair and maintenance services for products sold under this mark, without publishing a proper disclaimer, cannot be qualified as a bona fide offering of goods or services. The screenshots of the said website submitted by the Complainant prove that the Respondent aim at making the Internet user believe that is associated with the Complainant.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, not only the Complainant’s trademark registrations for ZANUSSI predate the registration of the disputed domain name, but also the ZANUSSI mark enjoy considerable renown in the household goods industry.
Secondly, the Respondent has used the disputed domain name in bad faith. As described above the website under the disputed domain name serves the Respondent to promote its business by exploiting the goodwill of the Complainant’s mark. Moreover, the Respondent failed to respond to the cease and desist letter which is another initiation of bad faith.
In the light of above, the Panel concludes that the Respondent is using it to intentionally attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website. Thus, the Complaint satisfy the standard set out in 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.
Piotr Nowaczyk
Sole Panelist
Date: May 13, 2019
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