Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Mohamed Elaswany, Mohamed Ahmed of Giza, Egypt. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 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. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2019.
The Center appointed Richard W. Page as the sole panelist in this matter on May 6, 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
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 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. In 1984, Complainant acquired the Italian appliance manufacturer Zanussi, making Complainant one of the leaders in household appliances for consumers and professionals. ZANUSSI is one of Complainant’s strategic brands. Complainant has devoted substantial resources to advertising and promoting this trademark (the “ZANUSSI Mark”) and is one of the market leaders in white goods and floor care products in Europe, with the Middle East as one of its growth markets for registrations last year. New products launched in the air-conditioner segment yield further growth opportunities in the Middle East. In 2011, Complainant acquired Egypt’s leading appliance manufacture, the Olympic Group, and expanded its presence ever further. In 2014, Complainant had sales of SEK 112 billion and about 60,000 employees.
Complainant has registered a number of domain names under generic TopLevel Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) containing the “Zanussi” name – for example (created on November 17, 2005) and (created on December 16, 2002). Complainant uses these domain names to connect to a website through which it informs potential customers about its ZANUSSI Mark and its products and services.
Complainant through its wholly owned subsidiary Electrolux Italia S.p.A. holds several registrations for the ZANUSSI Mark, designating Egypt where Respondent originates. See international trademark registration 1201466 (Egypt designated) (registered in March 6, 2014). Complainant also holds the Arabic transliteration of the ZANUSSI Mark. See registration number 258519 (registered in September 24, 2013).
The Disputed Domain Name was registered on March 27, 2016. The trademark registrations predate the registration of the Disputed Domain Name. The Disputed Domain Name directs to websites in Arabic that appears to be offering repair and maintenance services for Zanussi products. 5. Parties’ Contentions A. Complainant
Complainant contends that due to extensive use, advertising and revenues associated with its ZANUSSI Mark worldwide, including in Egypt, Complainant enjoys a high degree of renown around the world, including in Egypt. Complainant has previously successfully challenged several ZANUSSI domain names through the UDRP process.
Complainant further contends that the Disputed Domain Name directly incorporates Complainant’s well-known, registered ZANUSSI Mark. The only difference between the Dispute Domain Name and the ZANUSSI Mark in the addition of the letter “e” and the phrase “masr”. Complainant further contends that the additional non-distinctive elements in the Disputed Domain Name are not sufficient to distinguish it from Complainant’s ZANUSSI Mark. To the contrary, their presence is likely to increase the risk that Internet users will be confused into associating the Disputed Domain Name with the Complainant and its ZANUSSI brand. Complainant further contends that for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible to ignore the generic Top-Level Domain which in this case is “.com”. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Complainant alleges that Respondent is using the Disputed Domain Name to attract Internet users to his website where he offers repair services. On their site, they state that they repair products. Complainant further alleges that repair centers, whether authorized or non-authorized, are not allowed to freely register domain names incorporating the ZANUSSI Mark. Complainant further alleges that it has a clear agreement with all its authorized partners that registration of domain names including the ZANUSSI Mark is strictly forbidden. Complainant further alleges that Respondent’s layout including the stylized ZANUSSI logo appears prominently at the center of the website. The prominent use of the ZANUSSI Mark on the Respondent’s website strongly suggests that there is a connection with Complainant.
Complainant asserts that Respondent was aware of the ZANUSSI Mark prior to the registration of the Disputed Domain Name and the establishment of Respondent’s website. Respondent has made no claims to either having any relevant prior rights of his own, or to having been commonly known by the Disputed Domain Name, nor does Respondent claim to have made legitimate, noncommercial or fair use of the Disputed Domain Name.
Complainant avers that Respondent is intentionally attempting to attract visitors to Respondent’s website by creating a likelihood of confusion with the ZANUSSI Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant further avers that Respondent intentionally chose the Disputed Domain Name based on a registered and well-known trademark in order to generate more traffic to his own business. Nowhere does Respondent disclaim on his website any relationship between himself and Complainant. The Disputed Domain Name is currently connected to a repair center website, consequently, the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the ZANUSSI Mark as to the source, sponsorship, affiliation or endorsement of his website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent is not obliged to participate in this proceeding, but when he fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441).
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the ZANUSSI Mark; and
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the ZANUSSI Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Respondent has not contested Complainant’s contentions regarding registration of the ZANUSSI Mark. Therefore, the Panel finds that Complainant has enforceable trademark rights for purposes of this proceeding.
Complainant contends that the Disputed Domain Name directly incorporates Complainant’s ZANUSSI Mark. The only difference between the Dispute Domain Name and the ZANUSSI Mark in the addition of the letter “e” and the term “masr”. Complainant further contends that the additional non-distinctive elements in the Disputed Domain Name are not sufficient to distinguish it from Complainant’s ZANUSSI Mark. To the contrary, their presence is likely to increase the risk that Internet users will be confused into associating the Disputed Domain Name with the Complainant and its ZANUSSI brand. Complainant further contends that for the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible to ignore the gTLD which in this case is “.com”. See sections 1.8 and 1.11 of the WIPO Overview 3.0 .
Respondent has not contested the contentions of confusing similarity by Complainant.
The Panel finds that the Disputed Domain Name is confusingly similar to the Zanussi Mark. Complainant has made the requisite showing under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating he has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the ZANUSSI Mark.
Complainant alleges that Respondent is using the Disputed Domain Name to attract Internet users to his website where he offers repair services. Complainant further alleges that repair centers, whether authorized or non-authorized, are not allowed to freely register domain names incorporating the ZANUSSI Mark. Complainant further alleges that it has a clear agreement with all its authorized partners that registration of domain names including the ZANUSSI Mark is strictly forbidden. Unauthorized users have no authority to claim any relationship with Complainant or to use the ZANUSSI Mark. Complainant further alleges that Respondent’s layout including the stylized ZANUSSI logo appears prominently at the center of his website. The prominent use of the ZANUSSI Mark on the Respondent’s website strongly suggests that there is a connection with Complainant. Complainant argues that such use cannot be bona fide.
Complainant asserts that Respondent’s use of the Disputed Domain Name creates an overall impression that Respondent has a relationship with Complainant and that Respondent does not include a disclaimer. Complainant further asserts that Respondent was aware of the ZANUSSI Mark prior to the acquisition of the Disputed Domain Name and the establishment of Respondent’s website. Respondent has made no claims to either having any relevant prior rights of its own, or to having been commonly known by the Disputed Domain Name, nor does Respondent claim to have made legitimate, noncommercial use of the Disputed Domain Name.
The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not contested these allegations.
Therefore, the Panel finds that Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the [ZANUSSI] Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant as the owner of the [ZANUSSI] Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] 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 [ZANUSSI] Mark as to the source, sponsorship, affiliation, or endorsement of your website or location.
Complainant avers that Respondent is intentionally attempting to attract visitors to Respondent’s website by creating a likelihood of confusion with the ZANUSSI Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Complainant further avers that Respondent intentionally chose the Disputed Domain Name based on a registered and well-known trademark in order to generate more traffic to his own business. Nowhere does Respondent disclaim on his website any relationship between himself and Complainant. The Disputed Domain Name is currently connected to a repair center website, consequently, the Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the ZANUSSI Mark as to the source, sponsorship, affiliation or endorsement of his website.
The Panel finds that these allegations are sufficient to prove the elements of paragraph 4(b)(iv) of the Policy. Therefore, 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.
Richard W. Page
Sole Panelist
Date: May 19, 2019
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