Complainant is AB Electrolux, Sweden, represented by SILKA Law AB, Sweden.
Respondent is imad kannana, Egypt. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2019. On September 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 16, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 17, 2019. The Center verified that the Complaint together with the amendment to 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 September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 9, 2019. The Center appointed Marina Perraki as the sole panelist in this matter on October 22, 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 Per Complaint, 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. Per Complaint, the ZANUSSI brand was founded in 1916. In 1984 Complainant acquired the Italian appliance manufacturer Zanussi. In 2011 Complainant acquired Egypt’s leading appliance manufacturer the Olympic Group and expanded its presence further to the Middle East. In 2014 Complainant had sales of SEK 112 billion and about 60,000 employees. Complainant’s group owns numerous trademark registrations throughout the world for ZANUSSI, including: - Egyptian trademark registration No. 258519 for the Arabic transliteration of ZANUSSI (word), registered on September 24, 2013, for goods in International class 11, and; - International trademark registration No. 1201466 for ZANUSSI (word), registered on March 6, 2014, designating, inter alia, Egypt, for goods in International class 28. Moreover, Complainant maintains numerous domain names incorporating the mark ZANUSSI, including Complainant operates its website for the sale of its products at “www.zanussi.com” and also at “www.zanussi.com.eg”. The Domain Name Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. A. Identical or Confusingly Similar Complainant has demonstrated rights through registration and use of the ZANUSSI mark. The Panel finds that the Domain Name The Domain Name incorporates the said trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The word “tech”, added in the Domain Name, does not avoid a finding of confusing similarity, as it is a descriptive, non-distinctive term (Accenture Global Services Limited v. Jean Jacque / Luck Loic,WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin,WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison, on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or (iii) 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. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name. Respondent did not demonstrate prior to the notice of the dispute any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrates, the Domain Name resolves to a website containing content that suggests falsely that the Website is that of Complainant or of an affiliated entity or of an authorized partner of Complainant. Per Complaint, Respondent is not an affiliated entity or an authorised distributor or partner of Complainant and no agreement, express or otherwise, exists allowing the use of Complainant’s trademarks on the Website and the use of the Domain Name by Respondent. A distributor, reseller or service provider, can be making a bona fide offering of goods or services and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods or services at issue; (ii) 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) respondent must not try to “corner the market” in domain names that reflect the trademark. These requirements are not cumulatively fulfilled in the present case. The Domain Name falsely suggests that it is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduces, without authorization by Complainant, Complainant’s ZANUSSI trademarks, official Complainant’s logo and colour scheme, without any disclaimer of association (or lack thereof) with Complainant. Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung,WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s ZANUSSI trademark is well known for appliances (see also AB Electrolux v. Rajaa Nasr,WIPO Case No. D2018-1822). Furthermore, “zanussi” is a fictitious word. Because the ZANUSSI mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Aktiebolaget Electrolux v. RojIT Corporation,WIPO Case No. D2012-1330; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos,WIPO Case No. D2011-0388). Furthermore, as Complainant demonstrated, the Website content related to the Domain Name is targeting Complainant’s trademark, as it prominently displays Complainant’s ZANUSSI trademark and offering repair services. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO,WIPO Case No. D2017-1367). The Website content, displaying Complainant’s ZANUSSI logo and colour scheme and offering repair services for appliances, further indicates knowledge of Complainant and its field of activity. As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was used to create a website, which prominently displays Complainant’s registered trademarks, logos and colour scheme, thereby giving the false impression that it is operated by Complainant or a company affiliated to Complainant or an authorised partner of Complainant. The Domain Name operates therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the website it resolves to. This supports the finding of bad faith use (AB Electrolux v. Begad Negad,WIPO Case No. D2014-2092; Aktiebolaget Electrolux v. electroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon,WIPO Case No. D2014-0487; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos,WIPO Case No. D2011-0388 and WIPO Overview 3.0, section 3.4). Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Marina Perraki
Sole Panelist
Date: November 1, 2019
Full & Egal Universal Law Academy