WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Registration Private, Domains By Proxy, LLC / Mohamed Samir
Case No. DCO2015-0032
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Mohamed Samir of Embaba, Egypt.
2. The Domain Name and Registrar
The disputed domain name <idealzanussi.co> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 2, 2015. On October 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 3, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 19, 2015.
The Center verified that the Complaint together with the amended 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 proceeding commenced on October 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2015.
The Center appointed Ike Ehiribe as the sole panelist in this matter on November 20, 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 in this administrative proceeding is AB Electrolux and has its registered business address in Sweden. The Complainant, a joint stock company is said to have been established in 1901. The Complainant is said to be one of the world's leading producers of home appliances, kitchen equipment and cleaning products and acquired the Italian appliance manufacturer Zanussi in 1984. The trademark ZANUSSI was registered on March 6, 2014. The Zanussi brand was founded in 1916 and is said to stand for the Italian innovation for flair. The Complainant describes the Zanussi branded products as one of its strategic brands and is said to have devoted substantial resources to advertising and promoting its trademark ZANUSSI. The Complainant is also described as a market leader in white goods and floor care products in Europe and the Middle East. In 2011, the Complainant acquired Egypt's leading appliance manufacturer the Olympic Group thereby expanding its presence further in Egypt and other parts of the Middle East. In 2014, the Complainant is recorded to have had sales of SEK 112 billion and approximately 60,000 employees.
The Respondent, according to the WhoIs database and as confirmed by the Registrar, is recorded as being Mohamed Samir with an address in Egypt. The Respondent created the Disputed Domain Name <idealzanussi.co> on November 18, 2014.
5. Parties' Contentions
The Complainant states that it has registered a number of domain names with generic Top-Level Domains ("gTLD") and country code Top-Level Domains ("ccTLD") containing the trademark ZANUSSI for instance <zanussi.com> created on November 17, 2005 and <zanussi.com.eg> created on December 16, 2002. These domain names are said to be used by the Complainant to connect to its website through which it informs potential customers about its products and services. The Complainant also owns several trademarks for the ZANUSSI brand including in Egypt, where the Respondent is domiciled as evidenced by a number of trademark registration certificates attached to this complaint. The Complainant asserts that the ZANUSSI mark enjoys a high degree of renown around the world including Egypt as a result of extensive use and advertising.
The Complainant therefore contends that the Disputed Domain Name, <idealzanussi.co>, is identical or confusingly similar to the Complainant's well-known registered ZANUSSI trademark in that the Disputed Domain Name wholly incorporates the Complainant's ZANUSSI trademark. In this regard, it is contended that neither the mere addition of the generic word "ideal" nor the suffix. ".co" adds any distinctiveness to the Disputed Domain Name such as to preclude a finding of confusing similarity. The Complainant relies in support for this contention, on a previous UDRP case SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0009 and paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Complainant also argues that it has not found the Respondent to be commonly known by the Disputed Domain Name as the WhoIs information only describes the Respondent as "Mohamed Samir". The Complainant states therefore that the Respondent is merely using the Disputed Domain Name to attract Internet users to their website where it offers repair services, giving Internet users the false impression that the Respondent has an authorized connection with the Complainant. In support, the Complainant refers to the Respondent's prominent use of the Complainant's trademark on the Respondent's website which includes a stylized ZANUSSI logo in color prominently placed at the top of the Respondent's website, strongly suggesting that there is some official or authorized link with the Complainant. Furthermore, the Complainant asserts that the Respondent attempts to collect personal data from the Complainant's clients and potential clients for commercial gain and/or to misleadingly divert Internet users.
On the question of registration in bad faith and bad faith use, the Complainant states as follows. First of all, it is unlikely that the Respondent was not aware of the Complainant's pre-existing rights in the ZANUSSI trademark before proceeding to register the Disputed Domain Name. Secondly, as the Respondent's identity had been hidden as at the date of filing the Complaint and was only revealed by the Registrar, the extent to which the Respondent went to hide its identity is a relevant factor in determining whether the Respondent has legitimate rights in the Disputed Domain Name. Thirdly, as the Respondent takes advantage of the Complainant's ZANUSSI trademark by intentionally attempting to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark, as to source, sponsorship, affiliation, or endorsement of the Respondent's website in circumstances similar to those that arose in a recent UDRP decision in Aktiebolaget Electolux v. Muneer Mohamed of Cairo, Egypt, WIPO Case No. D2015-0874. Fourthly, 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 business, considering that the Respondent did not disclaim on its website the non-existing relationship between the Respondent and the Complainant and considering further that the Disputed Domain Name resolves to a repair center website owned by the Respondent. In this regard, the Complainant concludes further that the Respondent is intentionally using the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's ZANUSSI trademark as to source, sponsorship, affiliation or endorsement. See Philip Morris Incorporated v. Alex Tsypin, WIPO Case No. D2002-0946, where the panel described such conduct as evidence of bad faith registration and bad faith use.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to succeed namely that:
(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 Respondent has registered the Disputed Domain Name and is using the Disputed Domain Name in bad faith.
A. Identical or Confusingly Similar
This Panel is wholly satisfied that the Complainant has established long standing and world-wide rights in the ZANUSSI trademark, including in Egypt where the Respondent is based, as evidenced by the numerous trademark registrations submitted by the Complainant. The Panel also takes into account the numerous previous UDRP decisions as listed in the Complaint, dating back to the year 2008 and up to the year 2015 where the Complainant has successfully challenged other domain names incorporating the ZANUSSI trademark. Accordingly, the Panel finds without any hesitation that the Disputed Domain Name <idealzanussi.co> is confusingly similar to the Complainant's ZANNUSSI trademark. Furthermore the mere addition of the generic word "ideal" and/or the suffix ".co" does nothing to preclude a finding of confusing similarity. See in this regard, SouthCrest Bank, N.A. VistaPrint Technologies Ltd, supra, where the panel held that when comparing a trademark and a disputed domain name, the ccTLD such as ".co" is usually disregarded. In the circumstance, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
With particular reference to the Respondent's lack of rights or legitimate interests in the Disputed Domain Name, as submitted by the Complainant, the Panel finds as a fact that there is nothing in the conduct of the Respondent that remotely or otherwise suggests that the Respondent has any rights or legitimate interests in the Disputed Domain Name. The Panel in this regard finds that the Respondent was not and has not been known commonly by the Disputed Domain Name. In addition, the Panel finds that there is nothing to suggest from the Respondent's use of the website to which the Disputed Domain Name resolves, that it was used in connection with a bona fide offering of goods or services. The Complainant has not authorized the Respondent to use its mark and the Complainant has indicated that it has clear agreements with all of its authorized partners that they may not register a domain name containing its trademark. The fact that the Respondent's identity was hidden as at the date of filing the Complaint may also be a relevant factor in considering whether or not the Respondent has rights or legitimate interests in the Disputed Domain Name. More significantly, the Panel finds that there is ample evidence to suggest that the Respondent is attracting Internet users to its website where repair services for the maintenance of Zanussi Products is offered thereby giving Internet users the erroneous impression that the Respondent has an authorized connection with the Complainant. This finding is strengthened by the fact that apart from displaying the Complainant's ZANUSSI logo and group products on its website, the Respondent states that it is the "official" website for Zanussi maintenance thereby further reinforcing the false impression that the Respondent is authorized by the Complainant to provide maintenance and repair services in Egypt and in the Middle East. In addition, as held in Steven Madden Ltd v. Daniel Monroy, WIPO Case No. D2015-1024, the Panel finds that the Respondent's recorded attempts at collecting personal data from the Complainant's clients and potential clients through form filling cannot be described as a legitimate noncommercial or fair use of the Disputed Domain Name. In the final analysis, the Panel finds that the Respondent is clearly attempting to mislead Internet users by creating the false impression that it is authorized to use or has an official link to the Complainant's well-known ZANUSSI trademark. As the Complainant correctly submits the Respondent has failed to publish a disclaimer on its website and seeks to present itself as the trademark owner by placing the Complainant's logo and color scheme at prominent positions of the website to which the Disputed Domain Name resolves. Accordingly, the Panel finds that the Complainant has satisfied the stipulated requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent has engaged in bad faith registration and use of the disputed domain name. In the first instance the Panel finds that the Respondent could not have been unaware of the Complainant's prior rights in the ZANUSSI trademark before electing to register the Disputed Domain Name on November 18, 2014. Apart from other trademark registrations owned by the Complainant, the Complainant had effectively registered its ZANUSSI trademark in Egypt where the Respondent is said to be domiciled as far back as 1973. Secondly, the evidence reveals that the Respondent has repeatedly taken advantage of the Complainant's ZANUSSI trademark in the disputed domain name and on the Respondent's website to intentionally attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's trademark as to source, sponsorship, affiliation or endorsement of the Respondent's website. As held in a recent UDRP decision, namely Aktiebolaget Electolux v. Muneer Mohamed of Cairo, supra, such conduct is undoubtedly, evidence of bad faith registration and continued bad faith use. Thirdly,the Respondent has taken active steps to hide its identity behind a privacy shield. Fourthly, the Panel draws negative inferences from the failure of the Respondent to file a response to the Complaint.
Accordingly, the Panel finds that the Complainant has satisfied the specified requirements of paragraph 4(a)(iii) of the Policy.
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, <idealzanussi.co>, be transferred to the Complainant.
Date: December 14, 2015