WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Deniz Ozturk / Domain Admin, Whoisprotection Biz
Case No. D2017-0332
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Deniz Ozturk / Domain Admin, Whoisprotection Biz of Istanbul, Turkey, self-represented.
2. The Domain Name and Registrar
The disputed domain name <zanussiservisi.net> (the "Domain Name") is registered with FBS Inc. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2017. On February 20, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On February 21, 2017, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on March 1, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on March 1, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated February 21, 2017 stating that Turkish is the language of the registration agreement of the Domain Name, on February 24, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On February 26, 2017, Complainant submitted its request for English to be the language of the proceeding. Respondent did not submit any comments on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 in both English and Turkish Respondent of the Complaint, and the proceedings commenced on March 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2017. Respondent did not submit any formal response. Accordingly, the Center informed that it would proceed to appoint the Administrative Panel on March 27, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 30, 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
Complainant is a major manufacturer of kitchen appliances and cleaning products. In 1984, Complainant acquired Italian appliance manufacturer Zanussi, a firm which allegedly had been using the ZANUSSI mark since 1916 to identify and distinguish its appliances. Since 1984, Complainant has been making and selling household appliances under the ZANUSSI mark. Complainant holds numerous registered trademarks for the ZANUSSI mark, including registrations which are operative in Turkey, Respondent's country.
The Domain Name was registered on April 14, 2009. The Domain Name resolves to a website offering repair and maintenance services for ZANUSSI products. The website uses Complainant's stylized ZANUSSI logo and bears no disclaimer of affiliation with Complainant. Respondent has also registered a number of other domain names featuring trademarks and resolving to "service"-related websites similar to the one at issue in this case.
Complainant sent Respondent a cease-and-desist letter in September 2016, and two follow-up messages in October 2016. According to the Complaint, Respondent never responded to these missives.
5. Parties' Contentions
Complainant contends that it has satisfied the three elements required under the Policy to secure a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions, but sent informal emails on March 6, 2017, March 18, 2017 and April 14, 2017.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6.1. Language of the Proceeding
Complainant asserts that Respondent, as a purported service company who has opted to register the Domain Name, which has a ".net" Top-Level Domain, would likely be somewhat familiar with the English language. Further, Complainant asserts, Respondent did not object to the fact that Complainant's cease-and-desist letters had been transmitted in English. These reasons are not in themselves compelling, but they will suffice here, when coupled with the fact that Respondent was asked by the Center – in English and Turkish – to comment on the proper language of the proceedings, and Respondent did not bother to respond. Under these circumstances, the Panel concludes that it is appropriate to conduct these proceedings in English in accordance with paragraph 11(a) of the Rules.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights, through registration and use, in the mark ZANUSSI. The Panel also finds that the Domain Name is confusingly similar to that mark. The Domain Name incorporates the distinctive mark in its entirety and adds the generic word "servisi", a Turkish word that can be translated in English as "service". The addition of this word does not diminish the confusing similarity between the Domain Name and the mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Respondent has not come forward, either in response to the several letters from Complainant or to the Complaint in this proceeding, to explain any possible bona fides Respondent might have vis-à-vis the Domain Name. Complainant asserts that it has not authorized Respondent to use its ZANUSSI mark in a domain name or otherwise. The website to which the Domain Name resolves, through its use of the stylized ZANUSSI logo and the lack of a disclaimer, creates a misleading impression that Respondent is somehow affiliated with Complainant. Such a use is not legitimate under the Policy.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent registered the Domain Name in bad faith. The Panel finds it more likely than not that Respondent had Complainant's ZANUSSI mark in mind when registering the Domain Name. This finding is based on two facts: (1) the ZANUSSI mark is inherently distinctive; and (2) Respondent's website purports to offer services in the form of repairing Complainant's ZANUSSI products.
The Panel also finds that Respondent is using the Domain Name in bad faith within the meaning of Policy paragraphs 4(b)(ii) and 4(b)(iv), quoted above. It not only appears that Respondent uses Complainant's mark in the Domain Name in order to attract Internet users to Respondent's website for commercial gain, but that Respondent has done the same thing with other third party trademarks.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <zanussiservisi.net> be transferred to Complainant.
Robert A. Badgley
Date: April 18, 2017