WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Zanussi Usa
Case No. D2016-2573
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Zanussi Usa of San Diego, California, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <zanussiusa.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 19, 2016. On December 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 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 December 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 13, 2017.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 17, 2017. 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, well known internationally in the field of household electrical products. In 1984 the Complainant acquired the established Italian household appliance manufacturer and brand Zanussi.
The Complainant, through its subsidiary Electrolux Italia S.p.A., owns the following trademark:
ZANUSSI, in standard characters, European Union trademark, registered January 24, 2014, registration number 1201466, class 28.
The Complainant has made the following trademark application:
ZANUSSI, in standard characters, United States Patent and Trademark Office (USPTO), principal register, filed April 1, 2014, application number 86238368, classes 7, 8, 9, 11, 21.
The Complainant also owns and uses domain names incorporating its trademark, including particularly <zanussi.com>, created on November 17, 1995, and <zanussi.us>, created on April 19, 2002.
The Respondent has not provided any background information except for the name and contact details submitted to the Registrar for the purpose of registration of the disputed domain name, which was created on November 14, 2016.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has produced a copy of online documentation from the ROMARIN database in support of its rights in the European Union trademark ZANUSSI, and a copy of online documentation in support of its application to the USPTO for a ZANUSSI trademark.
The Complainant says the generic Top-Level Domain (gTLD) ".com" should be disregarded in this case in the determination of confusing similarity. The incorporation of the geographical identifier "USA" into the disputed domain name exaggerates the impression that the Respondent is associated with the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that its use is not bona fide. The Respondent does not own the trademark ZANUSSI and is not known by that name. The Respondent's purported identity as "Zanussi USA" is false. The look and feel and the colour scheme of the Respondent's website imitate the Complainant's website.
The Complainant alleges that the disputed domain name has been used by the Respondent as part of a fraudulent "phishing" scheme in which applicants are falsely offered employment in the name of the Complainant, whereas the Respondent's true intention is to obtain sensitive information such as people's usernames, passwords and credit card details. The Respondent does not claim rights in the disputed domain name and it is not in any legitimate noncommercial use.
The Complainant contends that the disputed domain name was registered and is being used in bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, by the Respondent's intention to disrupt the Complainant's business and pretending to be the Complainant in processing fictitious employment opportunities.
The Complainant has cited a number of previous decisions under the Policy that it considers may be helpful to its case.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied by the documentation produced that the Complainant has the rights in the European Union trademark ZANUSSI as required under paragraph 4(a)(i) of the Policy. It will be sufficient to proceed on the basis of this trademark. The application for a trademark at the USPTO is noted.
The disputed domain name is <zanussiusa.com>. The gTLD designation ".com" may generally be disregarded in the determination of confusing similarity. What remains in this instance is "zanussiusa.com", which may be read as the Complainant's trademark ZANUSSI followed by the geographical designation "USA". The Panel finds the dominant component "zanussi" of the disputed domain name to be an expression of the Complainant's trademark ZANUSSI, and the component "usa" not to be distinguishing, but on the contrary, to evoke an impression of pertaining to the Complainant's presence in the United States. Therefore, the Panel finds the disputed domain name to be confusingly similar to the Complainant's trademark and accordingly finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not own the Complainant's trademark ZANUSSI and is not licensed to use it.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant's prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not replied, nevertheless the onus of proof remains upon the Complainant. A screen capture of the Respondent's website at the disputed domain name, produced by the Complainant, may be compared with the capture provided by the Complainant of its own authentic website at "www.zanussi.com". Both websites have a bold colour scheme featuring similar shades of yellow. Both display the trademark ZANUSSI at top-left in bold black upper case in essentially the same typeface, and both have the trademark underlined with a characteristic line of sequential green, white and red. The Respondent's website differs in having "USA.com" added directly beneath the trademark, projecting an impression of a USA presence of the Complainant, and in featuring different photographs of kitchen equipment. The "contact us" page of the Respondent's website repeats the authentic-looking yellow banner and ZANUSSI trademark, and offers purported contact links to "[…]@zanussiusa.com" and, under the heading "Careers", "If you're interested in employment opportunities at ZanussiUSA.com, please email us: […]@zanussiusa.com". A facility is provided for visitors to "Leave us a Message".
The Panel is satisfied by the evidence that any offering of goods or services through the disputed domain name cannot be bona fide in the terms of paragraph 4(c)(i) of the Policy because the corresponding website is made to project an Internet presence of the Complainant but is disowned by the Complainant. There is no evidenced that the Respondent has been known by the disputed domain name or that the Respondent's website is in legitimate noncommercial or fair use. The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location."
The provisions of paragraph 4(b)(iv) of the Policy are pertinent in this instance. On the evidence, as discussed above under the heading of Rights or Legitimate Interests, the disputed domain name resolves to a website created by or on behalf of the Respondent that projects at least an initial impression of being an authorised website of the Complainant, including the bold representation of the Complainant's trademark in the same style and a clear emulation of the Complainant's website colour scheme. The Panel finds the design of the Respondent's website to be, and intended to be, such that at least a proportion of visitors would likely be confused into believing, at least for a time, that they were looking at a website authorised or endorsed by the Complainant.
The appearance of the Respondent's website, and its similarity to the look and feel of the Complainant's authentic website at "www.zanussi.com", project a clear impression of the Respondent's website having been professionally designed and built, requiring an investment. It is implausible in this case that the Respondent has invested in what is evidently a sophisticated unauthorised reflection of the Complainant's business without the expectation of commercial gain. The Panel finds on the totality of the evidence and on the balance of probabilities that the disputed domain name has been used in order to attempt to attract visitors, for commercial gain, by creating a likelihood of confusion with the Complainant's trademark, within the meaning of paragraph 4(b)(iv) of the Policy. The Panel further finds, on balance, that the disputed domain name was registered for the bad faith purpose for which it has been used. The Panel finds the disputed domain name to have been registered and used in bad faith in the terms of paragraph 4(a)(iii) of the Policy.
According to the uncontested evidence of the Complainant, the identity "Zanussi USA" claimed by the Respondent is false and unauthorised. The Panel finds the provision of a false name, in all the circumstances of this dispute, to have been for reasons of deception in order to aid the Respondent's false representation to be associated with the Complainant, and to amount to an additional factor in the registration and use of the disputed domain name in bad faith.
In reaching the above conclusions the Panel has not considered a specific reason why the Respondent set out to attract visitors by means of the Complainant's trademark, nor is it necessary to do so. The Complainant did allege reasons for the Respondent's actions, which it described as a "fraudulent job fraud scam". The Complainant said fictional jobs, supposedly to work for the Complainant, were advertised by the Respondent on "www.craigslist.com", with an ultimate objective of "phishing" for usernames, passwords and credit card details. The Complainant described phishing as a "criminally fraudulent process". However, allegations of criminal activity would require compelling evidence, yet the Complainant has produced no evidence in relation to the alleged employment scam in this case.
In any event, the Panel finds as discussed above that the disputed domain name was registered and is being used in bad faith.
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 <zanussiusa.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 25, 2017