Complainant is AB Electrolux, Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
Respondent is Khaled Atia, Alexandria, Egypt.
The disputed domain name <zanussiegy.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2015. On April 15, 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 proceedings commenced on April 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 22, 2015.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on May 25, 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.
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 September 16, 2014. The disputed domain name resolves to an Arabic language website offering repair and maintenance services for Zanussi appliances under the name “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 or one authorized by Complainant.
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 contends that the addition of the suffix “egy” to the ZANUSSI mark is not relevant and has no impact on the overall impression of the dominant part of the name, ZANUSSI.
Complainant contends 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
Complainant contends that Respondent has no rights or legitimate interest 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. In short, 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 it sent the then-registrant of the disputed domain name a cease and desist letter on November 28, 2014 requesting that the disputed domain name be transferred. Upon Complainant’s third letter, the then-registrant represented that it was a web development company, and that its customer for whom they made the registration offered to transfer the disputed domain name for USD 600. Complainant avers that it refused to pay, since the amount was well above out-of-pocket registration costs.
Complainant also avers that on March 25, 2015, it sent a later reminder by email to Respondent (to whom the registration had been transferred), explaining that the requested payment was excessive. Complainant avers that it received no response.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.
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 notification of these proceedings, using the contact information provided by the Registrar. The courier notification was not deliverable at the address provided and the phone number listed was not correct.
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.
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 formal 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).
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”) domain name suffix 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 term “zanussiegy” is made up of the simple combination of Complainant’s ZANUSSI trademark 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 by itself 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]”).
The Panel agrees that the addition of the “egy” abbreviation for Egypt to Complainant’s trademark does not alter the confusion with Complainant’s marks that Internet users would experience.
The disputed domain name is confusingly similar to Complainant’s trademark, therefore the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are established.
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 precludes 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, 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, being that “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 […]”. In summary, the Panel concludes there is no bona fide offering.
As forparagraph 4(c)(ii) of the Policy, the only evidence bearing on whether Respondent may be commonly known by the disputed domain name consists of the website heading “Zanussi Maintenance Center” and the copyright notice “Zanussi” on Respondent’s website. The Panel is of the opinion that this evidence is inherently unreliable. In any case, “Zanussi Maintenance Center” does not match the precise wording of the disputed domain name <zanussiegy.com>, therefore Respondent does not appear to have rights under paragraph 4(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.
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 name and 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 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 March 25, 2015 letter, requesting transfer and reiterating that the Complainant would not pay any more than registration costs for transfer and (2) Respondent’s 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 <zanussiegy.com> be transferred to Complainant.
Nayiri Boghossian
Sole Panelist
Date: June 14, 2015
1 Copies of the standard agreement terms are annexed to the Complaint.
2 Copies of the communications are annexed to the Complaint.
3 For example, “egy” is the International Organization for Standardization’s official three-character abbreviation for Egypt.