WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Eslam Gamal
Case No. D2017-0094
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Eslam Gamal, khdmaty.com of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <zanussi16351.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 January 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2017.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 23, 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 producer of appliances and equipment of kitchen, floor care and cleaning products.
The Complainant owns registration no. 258519 for the trademark ZANUSSI in Arabic registered in Egypt on December 8, 2013 as well as registration no. 1201466 for the international trademark ZANUSSI (in English) registered on March 6, 2014.
The Respondent registered the disputed domain name on April 23, 2016. The disputed domain name resolves to a website that offers ZANUSSI products. The disputed domain name reproduces the trademark of the Complainant.
5. Parties’ Contentions
The Complainant contends being a leading producer of appliances and equipment of kitchen, floor care and cleaning products. The trademark ZANUSSI was created in 1916 and is currently owned by the Complainant. The Complainant has registered domain names that include the trademark ZANUSSI and has registered the trademark ZANUSSI in Egypt. The disputed domain name was registered in April 2016 and incorporates the Complainant’s trademark together with the number “16351”. The number “16351” is a phone number and does not distinguish the disputed domain name from the Complainant’s trademark. The use of the generic Top-Level Domain (“gTLD”) “.com” does not render the disputed domain name distinctive. The Complainant therefore contends that the disputed domain name is confusingly similar to the trademark of the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and is not using or preparing to use the disputed domain name in connection with a bona fide offering of goods and services. The Complainant contends that the intention behind registering the disputed domain name is to attract Internet traffic through the use of the well-known trademark ZANUSSI. The Respondent is attempting to attract users to its website which offers repair and maintenance services for ZANUSSI branded products. The Respondent is attempting to create the impression of having a connection with the Complainant or being authorized by it. The test set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 is not met since the Respondent did not post a disclaimer on its website about its lack of any relationship with the Complainant. Furthermore, the Respondent is presenting itself as being the owner of the trademark and is depriving the Complainant from reflecting its trademark in the disputed domain name. The Respondent must have known of the existence of the trademark of the Complainant and its rights in it. Hence, the use of the disputed domain name is not legitimate.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The registration of the trademark ZANUSSI in the Complainant’s name predates the registration of the disputed domain name. Hence, the Respondent must have known of the Complainant’s trademark. Furthermore, the Respondent never responded to the Complainant’s pre-Complaint communication, which is an indication of bad faith. In addition, the Complainant never granted the Respondent the right to register the disputed domain name. The Respondent is taking advantage of the trademark ZANUSSI and attempting to attract Internet users to its website by creating confusion with the Complainant and has not published a disclaimer on its website explaining that it is not connected with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns trademark registrations for the trademark ZANUSSI, including in Egypt – one in Arabic and the other in Latin script. The Panel is satisfied that the Complainant has established its ownership of the trademark ZANUSSI.
The disputed domain name comprises the Complainant’s trademark ZANUSSI combined with the number “16351”, which is a hotline number that does not eliminate the confusing similarity with the trademark ZANUSSI. The gTLD “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In particular, the Panel notes that the Respondent is offering maintenance services for Zanussi products without disclosing its relationship with the trademark owner thus creating the misleading impression that it is affiliated with the Complainant. The Panel does not find this to be a bona fide offering of goods and services within the meaning of the Policy.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The element of bad faith is evidenced by the fact that the trademark ZANUSSI is used in connection with a website which offers repair and maintenance services for ZANUSSI branded products. Furthermore, the trademark ZANUSSI has been in use for a century and is well known. Hence, it must be that the Respondent was fully aware of the Complainant and its trademark and has registered and used the disputed domain name comprising the Complainant’s mark with the aim of attracting consumers to its website and with the intent of commercial gain, by creating the impression of being affiliated with the Complainant.
The Panel also notes that the Respondent has sent an email referring to its suggestion to sell the disputed domain name to the Complainant for the amount of USD 2,000. This amount is well in excess of the costs of acquiring the disputed domain name and is further evidence of bad faith (see 1-800 Contacts, Inc. v. Imagemakers1, WIPO Case No. DTV2004-0003).
Such conduct falls squarely within the meaning of paragraphs 4(b)(i) and 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 <zanussi16351.com> be transferred to the Complainant.
Date: March 2, 2017