The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Michael Paullen, of New York, New York, United States of America ("United States"). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2017. On October 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 2017, 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 October 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 16, 2017.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on November 28, 2017. 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 well-known Swedish joint stock company, which is a leading and widely-known producer of household appliances and equipment for kitchen and cleaning products and floor care products, founded in 1901 and in 2016 the Complainant had sales of SEK 121 billion and about 55,000 employees.
The Complainant states 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. In 1984, the Complainant acquired the Italian appliance manufacturer Zanussi making the Complainant the leader in household appliances for consumers and professionals. ZANUSSI is one of the Complainant's strategic brands and has devoted substantial resources to advertising and promoting its trademark ZANUSSI and is a market leader in white goods and floor care products in Europe.
The Complainant and its subsidiaries owns numerous trade marks for ZANUSSI including Turkish trade marks No. 201440344 dated March 6, 2014, in class 28, No. 96466 dated December 31, 1996 in classes 6, 7, 8, 9, 11, 14, 16, 20, 21 and international trade mark No. 404462 dated November 9, 1973, in classes 6, 7, 9, 11, 14, 17, 20, 21 and 40 and has a pending trademark application in the US where the Respondent is located.
Pursuant to Annex 5 of the Complaint, the Complainant 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, 1995) and (created on August 7, 1997). The 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.
The Complainant's trademark registrations predate the registration of the disputed domain name. Due to extensive use, advertising, and revenue associated with its trademarks worldwide, the Complainant enjoys a high degree of renown around the world, including in Turkey where the Respondent is located.
The Complainant sent a cease-and-desist letter dated August 4, 2017 to the Respondent, however the Respondent did not respond at all to the Complainant's cease-and-desist letter.
The disputed domain name was registered on April 15, 2017. The Panel visited the disputed domain name on December 8, 2017, and observed that the disputed domain name is used in connection with a Turkish-language website advertising technical services for the Complainant's branded goods within Istanbul. 5. Parties' Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant's ZANUSSI trademarks and the disputed domain name consists of the trademark and the Turkish word "servis" which means "service" in English and the ccTLD ".co" which is for Colombia. The Complainant claims that for the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the ccTLD as it is viewed as a standard registration requirement.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interest in respect of the disputed domain name and has registered and used the disputed domain name in bad faith. In this regard, the Complainant underlines that it has never granted a permission or license to the Respondent to use the trademark ZANUSSI.
In addition, it is alleged that the Respondent has never used and does not intend to use the mark ZANUSSI in connection with a bona fide offering of goods and services. According to the Complainant, the Respondent is using the disputed domain name to attract Internet users to its website where it offers repair and maintenance services. However, the Respondent does not publish a disclaimer on the website, the Respondent is depriving the Complainant of the opportunity to reflect in Turkish market in the disputed domain name, and the Respondent presents itself as the trademark owner by using the Complainant's official ZANUSSI trademark and logo on its website.
Therefore, the Respondent does not meet the Oki Data criteria (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903). The Complainant finds it undeniable that the Respondent was aware of the Complainant's marks prior to the acquisition of the disputed domain name and the establishment of the Respondent's website. Further, the Respondent has made no claims to having any relevant prior rights of its own.
Finally, the Complainant is convinced that the Respondent must have known the ZANUSSI trademark well before the registration of the disputed domain name. Additionally, the Complainant contends that the Respondent's failure to reply to a cease-and-desist letter sent prior to the filing of the UDRP Complaint supplies additional evidence of the Respondent's bad faith intentions. In addition to these, the Complainant states that the Respondent has been subject to previous domain name disputes. Therefore, the Complainant asserts that the Respondent has engaged in a pattern of registering domain name to prevent the owners of such trademarks from reflecting the marks in corresponding domain name. Such behavior is not considered to be in good faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(1) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not formally replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
In the event of lack of a response, the Panel may – as appropriate – accept the provided factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly like a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark ZANUSSI as evidenced in the annexes to the Complaint. The Complainant has registered the trademark ZANUSSI in several classes in different countries including Turkey. The trademarks were registered long before the registration of the disputed domain name.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant's registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615.
In this Panel's view, the addition of the Turkish term "servis" meaning "service" does not sufficiently distinguish the disputed domain name from the Complainant's trademarks. Paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 3.0") makes clear that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant's distinctive trade mark is undoubtedly the dominant component of the disputed domain name.
It is also well accepted that a ccTLD may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. V,WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant's trademark, pursuant to the Policy, paragraph 4(a)(i).
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among UDRP panelists is that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the complainant is deemed to have satisfied this element of the Policy. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its ZANUSSI mark in any fashion, that the Respondent is not an authorized licensee or reseller of the Complainant's goods, and that there is no connection between the Respondent and the Complainant. Additionally, there is no evidence on the present record, or in the publicly-available WhoIs data, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name.
The Panel also accepts that the Respondent is not commonly known by the disputed domain name. The Panel notes, based on the available record, that the Respondent does not appear to have any relevant registered trademarks or trade names and that no license or authorization of any other kind has been given by the Complainant to use its registered trademark. Therefore, in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, and in light of the Panel's findings below and under the third element, it is clear that no actual or contemplated bona fide or legitimate use of the disputed domain name could be claimed by the Respondent. Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055.
Pursuant to Oki Data Americas, Inc. v. ASD, Inc., supra, in order for a reseller to be regarded as having a legitimate interest in registering a domain name which incorporates the complainant's trade mark, (i) the respondent should actually be offering the complainant's goods or services via the website attached to the disputed domain name, (ii) the respondent must use the website to sell only the trade marked goods of the complainant, (iii) the website must accurately disclose the respondent's relationship with the trademark owner and (iv) the respondent should not try to corner the market in domain name which incorporate the complainant's trademark.
In our case, the Panel visited the disputed domain name on December 8, 2017, and found that the disputed domain name resolves to a website in Turkish that offers services for ZANUSSI products and contains the Complainant's trademark, the website did not appear to disclose any information regarding the Respondent's relationship with the Complainant. Specifically, the Complainant alleges that there was no visible disclaimer on the website. As such, Internet users may have been misled to assume that the website was run by the Complainant itself, or that there was some affiliation or sponsorship between the Parties. In fact there is no disclaimer or accurate disclosure of the relationship between the Parties. The Respondent therefore conveys the false impression of being an authorized Zanussi service center. Furthermore, the Respondent uses the word "servis" ("service") clearly suggesting a business relationship with the Complainant (see section 2.5 of the WIPO Overview 3.0).
The requirements of 4(a)(ii) of the Policy are fulfilled and consequently the Panel finds in favor of the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration and use; however, such list is not exhaustive and a finding of bad faith depends on the circumstances of each case. Based on the circumstances, in the Panel's view, it is reasonable to infer that when the Respondent registered the disputed domain name, it purposefully chose the disputed domain name incorporating the trademarks of the Complainant and registered them in order to take advantage of the strength of the trademarks. The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that this knowledge of the Complainant's trademarks may be considered an indication of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
The Respondent has never been granted permission to register the disputed domain name. The Respondent takes advantage of the ZANUSSI trademark by intentionally attempting to attract visitors to the Respondent's websites by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
By registering the disputed domain name, the Respondent was clearly attempting to divert Internet traffic, intended for the Complainant's website, to its own website for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent's website. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy (see, e.g., AB Electrolux v. Pablo Rodriguez Guirao,WIPO Case No. D2011-0729; Aktiebolaget Electrolux v. Li Yong,WIPO Case No. D2012-1782; and Costco Wholesale Corporation, Costco Wholesale Membership, Inc., Price Costco International, Inc. v. Scott Williams,WIPO Case No. D2009-1698).
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under 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.
Gökhan Gökçe
Sole Panelist
Date: December 12, 2017
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