WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Muneer Mohamed
Case No. D2015-0874
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Muneer Mohamed of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <maintenancezanussi.com> (the "Domain Name") is registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2015. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied the same day, stating that the Domain Name had been placed under a locked status and that the registration agreement was in English and required the registrant to consent to the jurisdiction of the courts in King County, Washington. The Registrar also provided the contact information held on its WhoIs database in respect of the Domain Name, confirming that the Respondent is the registrant of the Domain Name.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 23, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 24, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on June 25, 2015. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a leading producer of kitchen appliances and cleaning products, with sales in 2014 of SEK 112 billion and some 60,000 employees. In 1984 the Complainant acquired the Italian appliance manufacturer, Zanussi, whose ZANUSSI brand had been founded in 1916.
The Complainant's wholly-owned subsidiary Electrolux Italia SpA is the proprietor of various registered trademarks for ZANUSSI, including international registrations designating Egypt, one of which dates from 1973. The Complainant owns a number of domain names containing the name "zanussi", including <zanussi.com> and <zanussi.com.eg> that are directed to websites of the Complainant's group promoting its ZANUSSI products. The branding of the ZANUSSI range includes an orange and black livery.
The Respondent is using the Domain Name for a website with an orange and black livery, which displays the mark ZANUSSI in a large, black font in the banner and photographs of the Complainant's group's ZANUSSI products.
The Complainant sent a cease and desist letter to the Respondent on April 8, 2015, and a reminder on April 15, 2015, but did not receive any reply.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its ZANUSSI mark, from which it differs only in the addition of the generic word "maintenance" and the generic Top Level Domain suffix. The Complainant points out that it is well-established that a generic domain suffix is normally disregarded.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant refers to the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the "Oki Data decision") and argues that the Respondent has not complied with the conditions of legitimacy identified in it. The Complainant states that there is no official or authorized link between the Respondent and the Complainant for the purpose of repairing or servicing ZANUSSI products, but the Respondent's website contains no disclaimer to that effect and gives the overall impression that the Respondent is the Complainant. The Complainant adds that the Respondent is depriving the Complainant of the opportunity of reflecting its own mark in the Domain Name and on the Egyptian market.
The Complainant also alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant draws attention to the Respondent's failure to reply to its cease and desist letter. The Complainant submits that the Respondent is intentionally attempting to attract visitors to his website through use of the Domain Name for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website. The Complainant adds that it is highly unlikely that the Respondent was unaware of the Complainant's rights in the ZANUSSI trademark when he registered the Domain Name.
The Complainant seeks a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent's default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark ZANUSSI. It is well-established that a parent company can rely for this purpose on rights in a trademark registered in the name of a subsidiary.
The Panel further finds that the Domain Name is effectively identical to this mark, from which it differs only in the addition of the descriptive word "maintenance" and the generic Top Level Domain suffix. Moreover, many Internet users would understand the Domain Name to refer to a website of the Complainant's group relating to the maintenance of its ZANUSSI products.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
Although the position is not clear on the evidence, the Panel will assume in the Respondent's favour that he is actually providing maintenance services for ZANUSSI products supplied by the Complainant's group.
As noted in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), many Panels have followed the guidance in the Oki Data decision, as to the circumstances in which a business may be regarded as making a bona fide offering of goods or services, and hence as having a legitimate interest in the domain name in accordance with paragraph 4(c)(i) of the UDRP, when it uses a domain name corresponding to a supplier's mark to locate a website advertising the resale of that supplier's products or servicing in respect of such products.
According to that guidance, a business using such a domain name in this way may have a legitimate interest, provided that the following conditions are satisfied: that it is actually offering the products or services at issue; that the website at the domain name is used to promote only those products or services; that the website accurately and prominently discloses the true relationship between the registrant and the supplier, and that the registrant does not attempt to register all domain names that reflect the supplier's mark.
In this case, the Respondent's website located by the Domain Name does not accurately and prominently disclose the Respondent's true relationship with the Complainant. On the contrary, the Panel accepts the Complainant's undisputed evidence that there is no official or authorised link between the Respondent and the Complainant for the purpose of repairing or servicing ZANUSSI products, but that the Respondent's website is liable to mislead consumers into believing that it is a website of the Complainant or authorized by it. In these circumstances, the Respondent cannot be regarded as making a bona fide offering within the meaning of paragraph 4(c)(i) of the UDRP so as to give him a right or legitimate interest in the Domain Name.
Furthermore, there is no evidence that the Respondent is commonly known by the Domain Name and it is evident that he is not making a legitimate noncommercial or fair use of the Domain Name.
In the circumstances there is no other basis on which the Respondent could claim a right or legitimate interest in the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
As stated above, the Panel accepts the Complainant's evidence that the Respondent's website is liable to mislead customers into believing that it is a website of the Complainant or authorized by it. This evidence is well-substantiated by the nature of the Domain Name, the absence of any statement that the Respondent is not authorized by the Complainant's group, the prominent ZANUSSI mark in the banner, the orange and black livery, and the pictures of the Complainant's group's products. Furthermore, having regard to all the circumstances, the Panel considers that it was the Respondent's intention so to mislead customers.
Accordingly, the Panel finds that by using the Domain Name the Respondent has intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of that website.
Under paragraph 4(b)(iv) of the UDRP this constitutes evidence that the Domain Name was registered and is being used in bad faith. There is no material on the file which would displace this presumption. In all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
The Panel concludes that all three requirements of the UDRP are satisfied. The Domain Name should be transferred to the Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <maintenancezanussi.com> be transferred to the Complainant.
Date: July 9, 2015