WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Yasser Merdash
Case No. D2016-1352
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Yasser Merdash of Giza, Egypt.
2. The Domain Name and Registrar
The disputed domain name <zanussiegypt.net> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed 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.
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, and the proceedings commenced on July 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2016.
The Center appointed Antony Gold as the sole panelist in this matter on August 16, 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 very substantial producer of appliances and equipment for kitchens and of cleaning and floor care products. It is based in Sweden and was established in 1901. It trades worldwide and in 2015 it had about 60,000 employees and sales of approximately SEK112 billion.
The Complainant acquired the Zanussi brand in 1984. This brand is extensively promoted in Europe and is expanding into other markets, including the Middle East. In 2011, as part of its expansion plans, the Complainant acquired a lead electrical appliance manufacturer in Egypt.
The Complainant promotes its products and services online. It has a large domain name portfolio, including <zanussi.com> and <zanussi.com.eg> (“.eg” being the country code Top Level Domain for Egypt). The Complainant’s trade marks are owned by a subsidiary company, Electrolux Italia S.p.A. Its portfolio includes numerous trade marks for ZANUSSI including an international trade mark registration which designates Egypt, registered in 1974. A common element of the Complainant’s branding for Zanussi goods and services is the use of yellow and black and a specific stylized form of ZANUSSI.
The disputed domain name was registered on March 3, 2014. It points to a website the home page of which is mainly in Arabic save for the term “Zanussi”, which appears in the same stylization as that used by the Complainant. The layout of the home page adopts a black and yellow format which is also similar to that used by the Complainant on its website. A machine translation of a banner at the top of the home page, using Google Translate as provided by the Complainant, states that clients of Zanussi can exclusively enjoy discounts of more than 25per cent on maintenance of Zanussi washing machines. A further section of the home page says that spare parts can be obtained “through official of the company” and that the Respondent provides “official customer service”. Another section claims that the Respondent is “the only ones [sic] authorized to provide all maintenance services in Arab Republic of Egypt…”.
On April 5, 2016, a cease-and-desist letter was sent by lawyers acting for the Complainant to the Respondent seeking a transfer of the disputed domain name. A reminder was sent on April 21, 2016. No response has been received from the Respondent.
5. Parties’ Contentions
The Complainant asserts, first, that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. The Complainant says that the disputed domain name incorporates its ZANUSSI trade mark in its entirety and simply adds to it a reference to the country, Egypt. It says that the consequence is to give the impression that the Respondent is associated with the Complainant and that it is somehow doing business in Egypt using the Complainant’s brand name and with the Complainant’s consent. It draws attention to the fact that, for the purposes of assessing similarity or identicality, it is established practice to disregard the generic Top-Level Domain (gTLD) suffix “.net” in the disputed domain name.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. It draws attention to the sections of the Respondent’s website referenced above and explains that even authorized partners of the Complainant are not allowed to register domain names incorporating the Complainant’s trade marks. By way of substantiation, it produces a copy of its standard agreement with its partners, the terms of which prohibit partners from registering any Electrolux Group trade mark as a domain name (in whole or in part).
The Complainant says that the use by the Respondent, on the home page of its website, of the Complainant’s stylized ZANUSSI logo and its well-known black and yellow colour scheme creates the impression that the Respondent is officially authorized by the Complainant for the purpose of conducting repairs and services on Zanussi products in Egypt. The Complainant refers to the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 which considered the circumstances in which the use of a third party trade mark by an authorized or non-authorized distributor of the third party might be considered to be use in connection with a bona fide offering of goods and services within the meaning of paragraph 4(c) of the Policy. The panel in Oki Data considered that each of the following conditions would need to be met for the offering to be considered bona fide:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only trade marked goods (or services) of the complainant;
- the respondent’s website must accurately disclose the registrant’s relationship with the trade mark owner and should not (for example) assert that it is the official website if that is not the case;
- the respondent should not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
The Complainant says that the Respondent fails to meet three of these requirements, namely it has not published a disclaimer of any relationship with the Complainant on its website, it is depriving the Complainant of reflecting its own mark in a domain name and it presents itself as the Complainant by adopting a website that looks official and uses the Complainant’s logo and colour scheme.
Furthermore, the Complainant says, the Respondent has made no claims to either having any relevant prior rights of its own or to having become commonly known by the disputed domain name, nor has it made a legitimate noncommercial use of the disputed domain name. Moreover, the Respondent has failed to reply to a cease-and-desist letter sent by the Complainant and has not at any time asserted any rights in the disputed domain name.
The Complainant says also that the disputed domain name was registered and used in bad faith. In this respect the Complainant says that its trade marks and its active business presence in the Middle East market predate the registration of the disputed domain name in March 2016, thereby indicating that the Respondent was well aware of its ZANUSSI brand as at the time of registration. The Complainant also relies on extracts of decisions made by panels in other proceedings under the UDRP in which it has been involved which, it says, related to similar circumstances and in which findings of registration and use in bad faith were also made.
The Complainant says that the Respondent’s failure to respond to the cease-and-desist letter sent on its behalf in April 2016 can be relevant to a finding of bad faith and it cites extracts from the decisions of previous panels in support of this assertion. It also says that it has never granted the Respondent permission to register the disputed domain name and that the Respondent is taking advantage of the ZANUSSI trade mark by intentionally attempting to attract visitors to its website and thereby creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. In this respect, the Complainant draws attention, once again, to the failure by the Respondent to explain on its website the fact that no relationship exists between itself and the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to submit a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of its international trade mark 1201466 for ZANUSSI dated March 6, 2104.
The Complainant accordingly has rights in ZANUSSI.
As the Complainant says, the gTLD suffix “.net” is disregarded for the purpose of assessing identicality or similarity. The Panel therefore accepts the Complainant’s submission that simply coupling the trade mark, ZANUSSI, in which the Complainant has rights with the name of a country, namely Egypt, does not avoid a finding of confusing similarity. Moreover, it is likely to lead Internet users to assume that the disputed domain name is used in Egypt in connection with the provision of goods and/or services by, or with the authorization of, the Complainant.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name, namely that:
(i) before any notice of the dispute, it can show use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) it can show that (as an individual, business, or other organization) it has been commonly known by the domain name, even if no trade mark or service mark rights have been acquired; or
(iii) it can demonstrate a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
As the Complainant has asserted, the Oki Data decision sets out the principles which are commonly adopted by UDRP panels when determining whether an authorized or non-authorized distributor using a third party’s trade mark as a component of its domain name should be considered to be using that domain name in connection with a bona fide offering of goods and services. Dealing with the specific grounds in Oki Data as set out above:
- the available evidence suggests that the Respondent is offering the services it claims to offer;
- there is no evidence submitted to suggest that the Respondent is selling any services other than the maintenance and repair of the Complainant’s products;
- similarly, there is no evidence that the Respondent has tried to corner the market in all relevant domain names. It would appear that he has registered only one such domain name and the Complainant has previously confirmed that it has already secured its own domain name for Egypt, namely <zanussi.com.eg>.
However, the panel in Oki Data also indicated that the respondent’s website should accurately disclose its relationship with the trade mark owner. As the Complainant says, this would typically require that the Respondent publishes a disclaimer on the home page explaining its relationship (or lack of relationship) with the Complainant. The Complainant has not provided a complete copy of the home page of the Respondent’s website and it is therefore unclear from its evidence as to whether such a disclaimer features on the Respondent’s website. Adopting the principles as to when it is appropriate for a panel to undertake limited research outlined above, the Panel has visited the website at <zanussiegypt.net> and considered an English machine translation of the entirety of the home page obtained via Google Translate. This gives no indication that a disclaimer has been included by the Respondent. Further, the suggestion that the website is operated by or with the authority of the Complainant is reinforced by two further features. First, the website adopts the stylization of the Complainant’s ZANUSSI trade mark and the black and yellow coloring it uses on its own websites, which suggest (at least) a close or authorized relationship with the Complainant. Second, there are multiple references on the Respondent’s website to it being “official” which, even allowing for possible vagaries within in the machine translation, clearly connote some form of authorized connection with the Complainant.
Accordingly, the available evidence suggests that the Respondent’s website does not meet all of the principles adopted in Oki Data in that it does not accurately disclose his relationship with the Complainant. The Respondent cannot accordingly be considered to have a right or legitimate interest in the disputed domain name for this reason. There is nothing in the known facts to support such a finding on any of the other non-exhaustive grounds set out above, nor has the Respondent asserted at any point that he has a legitimate interest in the disputed domain name.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, examples of circumstances which, if found by a panel to be present, shall be evidence of registration and use of a domain name in bad faith. The bad faith circumstances set out at paragraph 4(b)(iv) arise if, by its registration and use of a domain name, a registrant has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or of a product or service on its web site.
It is reasonable to infer that the Respondent’s intention in registering the disputed domain name was to put it to the specific purpose for which it has subsequently been used, namely to promote his capability and willingness to service and maintain the products of the Complainant in the form which has been adopted in his website. As set out above, the manner in which the Respondent has done so is likely to cause confusion to Internet users. The lack of a disclaimer of any relationship with the Complainant, the adoption of the Complainant’s stylized ZANUSSI trade mark coupled with the adoption of the black and yellow format used by the Complainant on its website and the multiple references in the text on the home page to the Respondent having some form of “official” status all contribute to the inaccurate impression that the Respondent is the Complainant or is officially authorized by the Complainant. The fact that the Respondent has chosen not to respond either to a cease-and-desist letter or to this Complaint strongly suggests that the Respondent has nothing to say which might assist in rebutting the Complainant’s assertions.
For these reasons the Panel finds that the disputed domain name was registered and used in bad faith. It is not therefore necessary to consider the potential relevance of other decisions under the UDRP in which the Complainant has been involved.
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, <zanussiegypt.net> be transferred to the Complainant.
Date: August 30, 2016