WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Wael Aly
Case No. D2015-0664
1. The Parties
Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
Respondent is Wael Aly of Alexandria, Egypt.
2. The Domain Name and Registrar
The disputed domain name <idealzanussi-eg.com> 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 14, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 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 proceedings commenced on April 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 22, 2015.
The Center appointed Nayiri Boghossian as sole panelist in this matter on May 22, 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 December 18, 2014, and resolves to an Arabic language website offering repair and maintenance services for Zanussi appliances. At the head of the website on the left is a globe logo with the initials “GFR”, and beneath it the words المؤسسة الألمانية للصيانة والتوكيلات (meaning in English “German Company for Maintenance and Agency”). On the right side of the webpage head is the Zanussi logo. If an Internet user hovers over the Zanussi logo, Arabic words appear meaning in English “Zanussi Maintenance Center”. Respondent’s website displays Complainant’s logo and provides many photos and an overall appearance suggesting that it is Complainant’s website: at the bottom it states that it is the “official” website for Zanussi maintenance.
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, Complainant alleges that the disputed domain name is confusingly similar to its marks. It further alleges that the addition of the generic word “ideal” to the ZANUSSI mark, along with the hyphen and characters “eg” does not distinguish the disputed domain name from Complainant’s marks and that the addition of the common “eg” abbreviation for Egypt increases the possibility of confusion.
Complainant 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. Complainant states 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
According to the Complaint, Respondent has no rights or legitimate interests in the disputed domain name and that Respondent’s use of the disputed domain name cannot create a right or 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, as also demonstrated by screen shots of Respondent’s website, which has an overall appearance similar to the legitimate websites of Complainant.
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 the transfer of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Notification of Proceedings
The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center notified Respondent by courier and email of these proceedings, using the contact information provided by the Registrar. The courier notification was not deliverable at the address provided and the courier company was unable to contact Respondent at the listed phone number.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
B. Substantive Rules of Decision
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).
C. Identical or Confusingly Similar
Although the disputed domain name is not identical to the ZANUSSI trademark in which Complainant has rights, the Panel agrees with Complainant that the disputed domain name is confusingly similar.
UDRP panels usually disregard the generic TLD (“gTLD”) in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607 and Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Removing the gTLD, the remaining “idealzanussi-eg” is made up of the combination of the generic term “ideal”, Complainant’s ZANUSSI trademark, a hyphen, and a common English abbreviation for the official name, Egypt.3
Many cases have considered the effect of linking a trademark with a geographical name or designation to create a domain name. The common conclusion is that such an addition does not distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. Gopan P.K., WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”). In the Panel’s view, the addition of the hyphen has no significance in this case.
The Panel agrees that the addition to Complainant’s trademark of the generic term “ideal” and the “eg” abbreviation for Egypt does not alter the confusion with Complainant’s marks that Internet users would experience.
The Panel concludes that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy are established.
D. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
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. A complainant must show a prima facie case that the respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is shown if a respondent does not rebut the complainant’s prima facie case.
The potentially applicable circumstances listed in paragraph 4(c) of the Policy relevant to this proceeding include: (i) the use of the disputed domain name in connection with a bona fide offering of goods and services; and (ii) being commonly known by the disputed domain name. The fact that the website promotes commercial offerings eliminates any possibility that the circumstances of paragraph 4(c)(iii) of the Policy could be established in favor of Respondent.
Respondent’s website displays Complainant’s trademarked logo, suggesting that the website is authorized by Complainant. Complainant is equivocal about the relationship between Respondent and Complainant, but Complainant produced evidence demonstrating that even authorized maintenance centers do not enjoy the right to register Complainant’s trademarks in their domain names.
In any event, even if one treats Respondent as an authorized partner of Complainant or even as an authorized maintenance center of Complainant’s products, based on the evidence cited above, the Panel finds that Respondent’s use of the disputed domain name fails to meet at least one of the four criteria from Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903: “The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site [...]”. The website has no disclaimer and, does not detail an accurate relationship with Complainant as it purports to be Complainant’s official site for maintenance. In summary, the Panel concludes there is no bona fide offering.
The Panel also concludes that the record establishes that Respondent does not appear to be commonly known by the disputed domain name. While there is a single reference at the bottom of Respondent’s home page to “Ideal Zanussi”, the logo at the head of the page is most prominent. In context, it appears that the name of Respondent’s business associated with the disputed domain name is “GFR” or “German Company for Maintenance and Agencies.” The record contains no other evidence on the question. Therefore Respondent does not appear to have rights under paragraph 4(c)(ii) of the Policy.
The Panel concludes that a prima facie case has been established in favor of Complainant. Refraining from any response, the Panel finds that Respondent has not rebutted the prima facie case and has not established any of the circumstances of paragraph 4(c) of the Policy to support the existence of Respondent’s “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
E. 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). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. The UDRP panels may draw inferences about bad faith in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The record shows that Respondent registered the disputed domain name long after Complainant established trademark rights in many countries. The content of the website makes obvious that Respondent was aware of Complainant’s trademark and sought to exploit it for profit. Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s marks. Registration in bad faith is therefore established.
The unauthorized use of Complainant’s trademarked logo and the lack of a website disclaimer or accurate description of the relationship with Complainant are factors which in the Panel’s view establish use in bad faith. Under the circumstances (1) Respondent’s failure to respond to Complainant’s cease and desist letters, and (2) Respondent’s apparent failure to maintain accurate contact details in accordance with its agreement with the Registrar are further evidence of bad faith.
Accordingly, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled.
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-eg.com> be transferred to Complainant.
Date: June 3, 2015
1 Copies of Complainant’s standard agreement terms are annexed to the Complaint.
2 Copies of the communications are annexed to the Complaint.
3 For example, “eg” is the International Organization for Standardization’s official two-character abbreviation for Egypt.