WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Mostafa Faheem
Case No. D2016-1812
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Mostafa Faheem, of Giza, Egypt.
2. The Domain Name and Registrar
The disputed domain name <ideal-zanussi-maintenance.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2016. On September 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 September 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2016.
The Center appointed Richard G. Lyon as the sole panelist in this matter on October 12, 2016. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 Stockholm-based supplier of white goods such as household appliances that it markets worldwide directly and through subsidiaries and distributors. Subsidiaries include Zanussi, an Italian appliance maker acquired in 1984, and Olympic Group, an Egyptian appliance maker acquired in 2011. One of the Complainant’s Italian subsidiaries has long held numerous trademarks for ZANUSSI in many countries, including those in the Middle East, as well as for an Arabic transliteration of ZANUSSI.
The Respondent registered the disputed domain name in July 2015. According to a screen shot submitted with the Complaint, at one time the disputed domain name resolved to a website at which the Respondent offered parts for and repairs on a number of appliances including those branded ZANUSSI. This site included the ZANUSSI mark in the same font and colors as the Complainant’s registered marks.
When the Panel accessed the disputed domain name on October 14, 2016, he was redirected to a website at “http://ideal-zanwsy-maintenance.com” that made no mention of the Complainant.
In 2015 the Complainant filed a UDRP complaint against the Respondent seeking to recover sixteen domain names, fifteen of which included the term ZANUSSI (with the remaining domain name incorporating a separate trademark of the Complainant). As in this proceeding the Respondent defaulted. The panel, after reviewing the evidence, ordered transfer of all domain names to the Complainant. See AB Electrolux v. Whois Privacy Protection Service, Inc. / Mostafa Faheem or Mostafa Elsaid, WIPO Case No. D2015-1845.
At the date of filing the earlier case the Respondent’s name was not listed on the WhoIs database for the disputed domain name and thus not included in that proceeding.
The Complainant received no reply to cease-and-desist letters sent to the Respondent in April 2016, just as it received no reply to similar letters sent prior to filing its earlier complaint.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its duly registered ZANUSSI marks, that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed domain name in bad faith. Particulars of its contentions and the evidence submitted to support them are discussed in Section 6.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) requires proof that (i) the Complainant holds rights in a trademark or service mark and (ii) that the disputed domain name is identical or confusingly similar to that mark. The Complainant has demonstrated its long-registered rights in ZANUSSI marks, and ZANUSSI is the dominant feature of the disputed domain name. The Complainant has proven this Policy element.
B. Rights or Legitimate Interests
The Complainant’s evidence demonstrates that the Respondent has not been authorized to use the Complainant’s ZANUSSI mark, that the Respondent has not been commonly known by the word ZANUSSI, and that the use to which the Respondent has put the disputed domain name does not constitute a bona fide offering of goods or services, thus meeting its burden of proof under paragraph 4(a)(ii) of the Policy. At best the Respondent is an unauthorized reseller of ZANUSSI products and related services. The screen shots provided with the Complaint demonstrate that the Respondent has used the disputed domain name to offer competing goods and services as well as those of the Complainant. The prior proceeding and evidence submitted with the Complaint establish that the Respondent had earlier registered a number of generic Top-Level Domains and country-code Top-Level Domains that employed the ZANUSSI mark. Were the Panel to apply the test laid out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Respondent would fail under at least two criteria: using the disputed domain name only for the Complainant’s products, and not attempting to corner the market by registering at least twenty domains for this purpose. The record furnishes no other basis for finding a right or legitimate interest.
C. Registered and Used in Bad Faith
The Complainant’s evidence summarized in the preceding section also demonstrates that the Respondent registered and has used the disputed domain name in bad faith. That evidence, and the panel’s transfer of sixteen similar domain names in AB Electrolux v. Whois Privacy Protection Service, Inc. / Mostafa Faheem or Mostafa Elsaid, WIPO Case No. D2016-1845, suffice to establish that the Respondent has “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name” and that it has “engaged in a pattern of such conduct.” Policy, paragraph 4(b)(ii). That alone proves bad faith. See, e.g., WeWork Companies, Inc. v. Michael Chiriac, Various Concepts Inc., WIPO Case No. D2016-1817.
This Panel also finds bad faith here based upon the following findings of the panel in WIPO Case No. D2016-1845: first, the Respondent knew of the Complainant and its ZANUSSI marks at the time it registered the disputed domain name, and, second, the Respondent “has repeatedly taken advantage of the Complainant’s ZANUSSI… trademarks in the Domain Names and in the Respondent’s websites to intentionally attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement of the Respondent’s websites. …[and that] such conduct of deliberately misleading and diverting Internet users is undoubtedly evidence of bad faith registration and continued bad faith use.” These issues were (i) issues of fact, or mixed fact and law, (ii) that were actually litigated and (iii) found by the tribunal in the earlier action, and (iv) that were necessary to the result in the earlier action. In the particular circumstances of this case it could be argued that they apply under the doctrine of collateral estoppel in this subsequent UDRP proceeding between the same parties. Those findings buttress the finding of bad faith in this proceeding.1
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 <ideal-zanussi-maintenance.com> be transferred to the Complainant.
Richard G. Lyon
Date: October 26, 2016
1 A panel determination in a UDRP proceeding is not res judicata or collateral estoppel in subsequent proceedings in court, for fairly obvious reasons. The abbreviated procedures, narrow legal issues to be decided, and no opportunity for confrontation of a party's witnesses or evidence render a decision made in a UDRP proceeding subject to de novo consideration in a court of general jurisdiction. But this Panel sees a fair question as to whether the same party should be given an opportunity to relitigate the same issues in a subsequent UDRP proceeding against the same counterparty based on the same facts and circumstances. These cases will of course be covered by the re-filing principles set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.