WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Mo qian fan
Case No. D2016-1351
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Mo qian fan of Foshan, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <zanussi-gz.com> is registered with Bizcn.com, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2016. On July 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 6, 2016, the Center informed the Parties both in English and Chinese that the Registration Agreement is in Chinese and requested them to comment on the language of proceedings. The Complainant submitted its request for English to be the language of proceedings on July 6, 2016. The Respondent did not comment on the language of proceedings.
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 and 4, the Center formally notified the Respondent of the Complaint both in Chinese and English, and the proceedings commenced on July 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 8, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on August 12, 2016. 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 is a Swedish company founded in 1901 and is one of the world's leading producers of appliances and equipment for kitchen and cleaning products and floor care products. The Zanussi brand was founded in 1916.
The Complainant asserts that its yellow-black colour combination and distinctive logo have made it recognizable throughout Europe and neighbouring countries for many decades. The Complainant acquired the Italian appliance manufacturer, Zanussi, making the Complainant a leader in household appliances. The Zanussi brand has been promoted and advertised extensively. The Complainant's Zanussi brand is sold in China. The Complainant's Zanussi products (including a complete range of kitchen and laundry appliances) are offered in major cities in China.
The Complainant has registered a number of domain names containing the term "zanussi" e.g., <zanussi.com> (registered on November 17, 2005) and <zanussi.com.cn> (registered on December 16, 2002). Each of these domain names connects to a website through which the Complainant informs potential customers about its Zanussi-branded products and services.
The Complainant holds several trade mark registrations for ZANUSSI in China where the Respondent originates from. The vast majority of the trade mark registrations predate the registration of the disputed domain name.
The Complainant asserts that due to extensive use, advertising and revenue associated with the ZANUSSI trade mark worldwide including in China, the Complainant enjoys a high level of renown globally, including in China.
The disputed domain name was registered on January 16, 2011. It resolves to a website whereby repair services for the Complainant's products are offered. The website layout includes a stylized ZANUSSI logo which appears prominently on the top left of the website.
The Complainant sent a cease and desist letter to the Respondent on April 6, 2016 and requested a voluntary transfer of the disputed domain name. No response was received although a reminder was sent on April 21, 2016.
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's ZANUSSI trade mark. The only difference between the disputed domain name and the trade mark ZANUSSI is the addition of the "gz" identifier which most likely stands for the province of Guangzhou. The addition of non-distinctive elements within the disputed domain name is insufficient to distinguish it from the Complainant's ZANUSSI trade mark.
Secondly, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A common misunderstanding that authorized or non-authorized repair centers have is that they can freely register domain names incorporating the trade mark name of the products that they offer repair services for. The Respondent has not been authorized to use the Complainant's ZANUSSI trade mark or to register a domain name incorporating the said trade mark. The way the Respondent's website appears and the use of the trade mark ZANUSSI in the disputed domain name strongly suggest to Internet users that there is an official or authorized link with the Complainant within China for the purposes of repair services.
The Respondent did not publish any disclaimer of association with the Complainant and is in fact depriving the Complainant of reflecting its own trade mark in the disputed domain name for the Chinese market. The Respondent has presented himself as the trade mark owner by designing a website that looks like the official website of the Complainant.
The Complainant claims that the Respondent was clearly aware of the Complainant's mark prior to the registration of the disputed domain name and the establishment of the Respondent's website.
The Respondent has not made any claims to having relevant prior rights of its own to the disputed domain name or to having become commonly known by the disputed domain name.
Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Respondent has never been granted permission to register the disputed domain name. He did not respond to the cease and desist letter and follow up reminder from the Complainant. The Respondent is seeking to attract visitors to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or a product or service on the Respondent's website or location.
The Complainant asserts that the Respondent intentionally chose the disputed domain name based on a registered and well-known trade mark in order to generate more traffic to his own business.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Preliminary Issue: Language of the Proceedings
Paragraph 11 of the Rules stipulates, inter alia, that:
"(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Registration Agreement is in Chinese but the Complainant requested that English be the language of the proceedings. The reasons given were that the Respondent did not reply to say (in response to the Complainant's cease and desist letter) that he did not understand the contents of the letter. The disputed domain name consists of Latin-script letters rather than Chinese characters, and also incorporates the Complainant's trade mark. The proceedings would be delayed if Chinese were determined to apply in this case because the Complainant would then have to arrange for Chinese translations of the Complaint and annexes to be prepared.
The Panel determines that in this case, it would be appropriate for English to be the language of the proceedings. Apart from the fact that the Complainant's Italian-named ZANUSSI trade mark is incorporated in the disputed domain name. , the Respondent's website as it appears from a screenshot provided by the Complainant, includes text in English. It features an introduction to the ZANUSSI brand and acknowledges the globally well-known and famous brand that it is for household appliances including washing machines. The Respondent also claims from its website to be "responsible for the city of Guangzhou and Dongguan, Shenzhen and direction of the region's gold medallion washing machine maintenance tasks". It also claims to be "responsible for the city of Foshan, Shunde, Zhongshan, Jiangmen direction of the region Gold washing machine repair".
The Respondent has not objected on the issue of the language of the proceedings and has been advised by the Center in both Chinese and English of the nature of the proceedings and the relevant deadlines. The Panel has to balance the interests of the respective parties whilst at the same time ensuring that the proceedings takes place with due expedition (paragraph 11 of the Rules). To require the Complainant to translate the Complaint and annexes into Chinese would involve a significant delay in the proceedings and there is no argument that has been put forward that meaningfully justifies placing such a burden on the Complainant. The Panel believes that the Respondent's interests are not prejudiced by its determination on this issue.
To succeed in obtaining an order in its favour, the Complainant must prove each of the elements of paragraph 4(a) of the Policy:
(i) That the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the Respondent has registered and used the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfied the first element of paragraph 4(a) of the Policy. The Complainant has rights in the ZANUSSI trade mark and this mark has been incorporated into the disputed domain name. The addition of the letters "gz" and the hyphen are of no significance and do not serve to remove the confusing similarity with the Complainant's ZANUSSI trade mark. Furthermore, it is a generally accepted practice of UDRP panels to disregard the generic Top-Level Domain ".com" under the confusing similarity test. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Panel finds that the Complainant has established a prima facie case. The Complainant's assertions have not been rebutted by the Respondent. The Respondent has failed to discharge his burden of showing evidence demonstrating rights or legitimate interests in the disputed domain name. In the words of the panel in the case of Aktiebolaget Electrolux v. "usa" and Ahmed Ismail, WIPO Case No. D2013-0829:
"While there may have been an offering of services, Complainant's uncontroverted allegation is that Respondent is not an authorized dealer and has no permission to make a services offering under the trademark. This Panel further notes that the Respondent is offering Complainant's products and of competitors and that there is no disclaimer on the website to disclose the relationship between Respondent and Complainant. Therefore the Panel also finds there is no bona fide offering of goods or services by Respondent.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its 'rights or legitimate interests' in use of the disputed domain name."
The Panel finds that the Complainant has satisfied the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The content on the Respondent's website and choice of the disputed domain name show a strong familiarity on the Respondent's part with the Complainant's Zanussi brand of household appliances. The Respondent admits to the fame and reputation of the Zanussi brand of products and, by its statements on the website, purports to create the impression that he is an authorized repair service provider of the Complainant or that he is authorized to associate his business with the Complainant by the use of the ZANUSSI trade mark in the disputed domain name.
The Respondent did not respond to the cease and desist letter from the Complainant. His silence in these proceedings and conduct as shown by the content of his website leads to the Panel's determination that the Respondent is seeking to attract visitors to his website by creating a likelihood of confusion with the Complainant's ZANUSSI mark (which he is clearly familiar with) as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or a product or service on the Respondent's website or location. The circumstances fall within paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Complainant has satisfied the third element of paragraph 4(a) 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-gz.com> be transferred to the Complainant.
Date: August 27, 2016