The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Hossein Jafari Zonab of Tehran, Iran (Islamic Republic of). 2. The Domain Name and Registrar
The disputed domain name is registered with IRNIC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2015. On July 10, 2015, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 11, 2015, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on July 13, 2015.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2015. The Respondent did not submit any response. On August 5, 2015, the Center notified the Respondent’s default.
The Center appointed Daniel Peña as the sole panelist in this matter on August 17, 2015. 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.
The Complainant is 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 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 a leader in household appliances for consumers and professionals.
Trademark 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, and the Middle East is one of the growth markets for the Complainant.
In 2011, the Complainant acquired Egypt’s leading appliance manufacturer the Olympic Group and expanded its presence even further.
In 2014, the Complainant had sales of SEK 112 billion and about 60,000 employees.
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, (created on November 17, 2005).
The Complainant uses this domain name to connect to a website through which it informs potential customers about its ZANUSSI mark and its products and services.
The Complainant has rights over the ZANUSSI trademark through their wholly owned subsidiary Electrolux Italia S.p.A. The Complainant holds several trademarks for ZANUSSI including national trademark registration number 20343 registered as early as in 1962 in Iran (Islamic Republic of) where Respondent is located. The Complainant also holds a trademark for the Arabic transliteration of ZANUSSI covered by the registration number 258519 (registered in 2013). The former trademark registration predates the registration of the disputed domain name by several decades.
The disputed domain name was registered on April 7, 2015 and it is pointing to a parking page in Persian promoting the services of the hosting provider. 5. Parties’ Contentions A. Complainant
The disputed domain name which was registered around April 2015 wholly incorporates the Complainant’s well-known, registered trademark ZANUSSI.
The only difference between the disputed domain name and the trademark is the addition of the ccTLD suffix “.ir”. It is standard practice to disregard the Top-Level suffix under the confusingly similar test, except in cases where the applicable Top-Level suffix may itself form part of the relevant trademark.
There is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services. It is clear that the Complainant has become a distinctive identifier associated with the term “zanussi” and that the intention of the disputed domain name is to take advantage of an association with the business of the Complainant.
The Complainant tried to contact the Respondent on May 11, 2015 through a cease and desist letter. The Complainant advised the Respondent that the unauthorized use of the ZANUSSI trademark within the disputed domain name violated the Complainant’s rights in said trademark.
From the Complainant’s point of view, the Respondent intentionally chose the disputed domain name based on a registered and well-known trademark in order to generate more traffic to its own website. Nowhere does the Respondent disclaim on its website the non-existing relationship between itself and the Complainant. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website.
The trademark ZANUSSI is well-known in the home appliance industry including in Iran (Islamic Republic of). It is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent never replied to the Complainant’s cease and desist letter. It is reasonable to assume that if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded.
Due to extensive use, advertising, and revenue associated with its ZANUSSI mark worldwide the Complainant enjoys a high degree of renown around the world, including in Iran (Islamic Republic of). The Complainant has previously successfully challenged several ZANUSSI domain names through the UDRP process, see among others the following WIPO cases: AB Electrolux v. Wael Aly,WIPO Case No. D2015-0664; AB Electrolux v. Ahmed Aboeldahab,WIPO Case No. D2015-0650; AB Electrolux v. Guangzhou Nan Guang Electrical Appliances Co.Ltd., WIPO Case No. D2015-0579; Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk,WIPO Case No. D2013-1224; Aktiebolaget Electrolux v. “usa” and Ahmed Ismail,WIPO Case No. D2013-0829; Aktiebolaget Electrolux v. Manuel Perez Marquez,WIPO Case No. D2012-1224; Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk,WIPO Case No. D2011-0403; AB Electrolux v. Marcel Vlaar,WIPO Case No. DNL2008-0005. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has evidenced several registrations for the trademark ZANUSSI in many countries including Iran (Islamic Republic of), where the Respondent is located. The disputed domain name contains the Complainant’s distinctive trademark ZANUSSI in its entirety. In the Panel’s opinion, the addition of the ccTLD “.ir” does not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark.
Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademark. Therefore, the requirements of paragraph 4(a)(i) of the Policy are fulfilled. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 has been commonly known by the domain name, even if it 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.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared 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.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.
In the Panel’s view, the Complainant has provided evidence that the Respondent has knowingly acted in a manner that might take advantage of an association with the Complainant’s business, by use of the disputed domain name to redirect the public to a parking page promoting the services of the hosting provider.
The Respondent has incorporated the Complainant’s trademark in the disputed domain name for its own use without any authorization or license.
In the absence of a Response, the Panel accepts the arguments and evidence advanced by the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and finds that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered or Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy, paragraph 4(b)(iv).
The Panel finds that the Respondent registered the disputed domain name which corresponds to the trademark to which the Complainant has rights. Only someone who was familiar with the Complainant’s mark is likely to register a domain name including the term “zanussi”. That the Respondent knew about the Complainant’s trademark at the time of registration is further evidenced by the circumstance that the Complainant used to be the owner of the disputed domain name before it was registered to the Respondent and was actively using it until it was accidentally deleted.
In the Panel’s view, the disputed domain name is likely used intentionally by the Respondent to attract Internet users to the website of a third party in order to commercially benefit from the likelihood of confusion of the Complainant and its ZANUSSI mark. The Panel considers that these facts lead to the risk of confusion since it could give the impression that the use of the disputed domain name is somehow endorsed by the Complainant.
The Panel is also taking into consideration the fact that the website at the disputed domain name was, at the time of filing of the Complaint, apparently under construction, and no disclaimer that the website is not endorsed or sponsored by the Complainant was included. The fact that the disputed domain name did not resolve to any active website does not prevent as such a finding of bad faith, considering that cumulative circumstances indicative of bad faith are present in this case. The Panel in fact notes that the Complainant has a well-known trademark, the Respondent did not reply to the Complainant’s cease and desist letter and the Complainant was the owner of the disputed domain name for several years prior to the Respondent gaining ownership of the disputed domain name.
Taken together with the fact that the Respondent has not filed any Response in this proceeding, the Panel believes that the Complainant has demonstrated that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied. 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.
Daniel Peña
Sole Panelist
Date: August 28, 2015
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