WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Ahmed Aboeldahab
Case No. D2015-0650
1. The Parties
Complainant is AB Electrolux, Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
Respondent is Ahmed Aboeldahab, Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <zanussi.services> 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 April 13, 2015. On April 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2015, 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on April 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2015. No formal Response was filed with the Center, however, on April 18, 2015 the Center received an email communication from Respondent, described below.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on May 26, 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
Complainant’s wholly-owned Italian subsidiary has registered ZANUSSI as a word mark in several classes all over the world, including, for example, Community Trademark Registration No. 000492447, registered February 8, 1999, and International Trademark Registration No. 1201466, Egypt designated, registered March 6, 2014. Complainant itself has also registered the ZANUSSI mark in domain names under many Top-Level Domains (“TLDs”) worldwide, including <zanussi.com> and <zanussi.com.eg>.
The disputed domain name was registered on November 28, 2014, and resolves to an Arabic language website offering repair and maintenance services for Zanussi appliances. Respondent’s website displays Complainant’s logo. The website states that it is officially authorized for Zanussi repair.
The website also displays advertisements for other goods and services, including a graphic with links advertising the availability of parts for appliances marketed by Complainant’s competitors.
5. Parties’ Contentions
Complainant avers that AB Electrolux is a Swedish company founded in 1901 and that Complainant is a leading producer of appliances and equipment for kitchens and cleaning. Complainant alleges that its ZANUSSI marks are well known and have been in use since 1916.
Under the Policy, the Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s marks. The Complaint alleges that the addition of the gTLD suffix “.services” to the ZANUSSI mark is insufficient to distinguish the disputed domain name from Complainant’s marks and does not eliminate confusing similarity.
The Complaint avers that Respondent registered the disputed domain name after registrations for the ZANUSSI marks were completed. The Complaint avers that Respondent may have no connection with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use the trademark in the disputed domain name. The Complaint alleges that even if Respondent were an authorized maintenance center, Complainant’s standard agreements would not permit Respondent to register a domain name using the ZANUSSI marks.1
The Complaint alleges that Respondent has no legitimate interest in the disputed domain name and that Respondent’s use of the disputed domain name cannot create a legitimate interest or be considered as bona fide. Complainant avers that the disputed domain name registration was made with the intention of trading on the value of Complainant’s mark.
Complainant avers that on December 9, 2014, it sent Respondent a cease and desist letter, requesting that the disputed domain name be transferred. Receiving no response, Complainant sent two further reminders, which remain unanswered.2
On the basis of the above, Complainant contends that Respondent registered and is using the disputed domain name in bad faith.
Complainant seeks transfer of the disputed domain name.
While Respondent made no formal Response, excerpts from Respondent’s April 18, 2015 email to the Center are reproduced below:
“First of all we are emarketing company and we do sites for having business with who want our services, so, if zanussi want this site we are ready to deal with them and put their numbers on this site and manage also their emarketing services by fees of course.”
“2- we are not a maintenance company, we are emarketing company, and we are not against Zanussi, but we hope to work for them. we are not the enemy, so if our work is good for them and we could have their notice and we could be on the first page in google in just few days, so why we don’t work for them?? we hope so, so how can i contact with them, and what they will need if they dont want to work with us? do they want to delete the domain?? does it close the complaint??”
6. Discussion and Findings
The Panel must render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is identical to Complainant’s ZANUSSI trademark.
UDRP panels have commonly disregarded the generic TLD (“gTLD”) suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607. UDRP panels considering the new gTLDs (such as the “.services” suffix in this proceeding) have maintained this practice, looking only to the second-level domain. E.g., NVIDIA Corporation v. Giovanni Laporta, Yoyo.email Ltd., WIPO Case No. D2014-0770 (<nvidia.email>).
Some panels have also examined the new gTLD suffix along with the second-level domain to make findings of identity or confusing similarity, if the suffix in some way relates to the distinctiveness associated with a complainant’s trademark. Hultafors Group AB v. my domain limited, WIPO Case No. D2014-0597 (<snickers.clothing>; citing Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206 (<canyon.bike>).
Omitting the new gTLD suffix, the Panel finds that the disputed domain name in this proceeding is identical to the ZANUSSI mark. Moreover, if the gTLD “.services” suffix is retained, the Panel finds that the disputed domain name is confusingly similar. The suffix is suggestive of Complainant’s commercial endeavors associated with Complainant’s ZANUSSI mark: the addition of the “.services” suffix to the second-level “zanussi” term is likely to increase the confusion that Internet users would experience.
The Panel concludes that the first element of Policy paragraph 4(a) is fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003 0455. The absence of rights or legitimate interests is shown if a respondent does not rebut complainant’s prima facie case. Paragraph 4(c) of the Policy lists circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name, including (1) the use of the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant makes uncontroverted allegations that Respondent has no authorization or license to use Complainant’s trademark and that Respondent is not known by the disputed domain name. The statements in Respondent’s email support the Panel’s ruling to accept as true these uncontroverted allegations.
The fact that the website at the disputed domain name promotes commercial offerings, including promoting competitors of Complainant, eliminates any possibility that the circumstances of paragraph 4(c)(iii) could be established in favor of Respondent.
The website at the disputed domain name displays Complainant’s logo, suggesting that the website is authorized by Complainant. The Complaint spends considerable effort to establish that there is no bona fide offering under the Policy and at length discusses application to this proceeding of the criteria outlined in the leading decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001 0903. Yet without any need for further inquiry, the Panel finds that Respondent’s email statement that it is not a maintenance company, but instead an “emarketing” company is sufficient under the circumstances to show that there is no bona fide offering.
The Complaint, read in conjunction with the record, establishes a prima facie case, which Respondent has failed to rebut.
Policy paragraph 4(a)(ii) is established.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith. Policy, paragraph 4(b)(iv). UDRP panels may draw inferences about bad faith in light of the circumstances, including failure to respond to a Complaint and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000 0003.
The record shows that Respondent knew of Complainant’s ZANUSSI mark when registering the disputed domain name. However, Respondent had no authorization to register a disputed domain name identical to Complainant’s mark (or to use Complainant’s logo).
Respondent’s email to the Center establishes that Respondent registered the disputed domain name at least in part for the purpose of attempting to become retained by Complainant for a fee to maintain the website at the disputed domain name. The website also inaccurately represents that it is officially authorized by Complainant.
The website to which users are routed also competes directly with the goods associated with Complainant’s marks. This is frequently seen as evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel infers that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark.
The Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) 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 <zanussi.services> be transferred to Complainant.
Date: June 8, 2015
1 Copies of Complainant’s standard agreement terms are annexed to the Complaint.
2 Copies of the December 9, 2015 communications and one of the two alleged reminders are annexed to the Complaint.