WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Mohamed Ahmed
Case No. D2017-0440
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Mohamed Ahmed of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <zanussi-egypt.xyz> (the “Disputed Domain Name”) 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 March 3, 2017. On March 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 6, 2017, 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 March 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2017. The Respondent sent an email to the Center on March 23, 2017, in which he seemingly indicated he may be willing to transfer the Disputed Domain Name.
In order to explore possible settlement options, the Complainant requested a 30 day suspension of the proceedings on March 26, 2017. The Center suspended the proceedings on March 27, 2017.
None of the Parties submitted any message that a settlement had been reached as to the Disputed Domain Name. On April 25, 2017, the Complainant requested the reinstitution of the proceedings. The Center notified the reinstitution of the proceeding on April 27, 2017. The Center notified the Parties on May 11, 2017 that it will proceed to appointment of the Panel.
The Center appointed John Swinson as the sole panelist in this matter on May 18, 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 AB Electrolux which is one of the world’s leading household appliance manufacturers.
The Zanussi brand is one of the Complainant’s strategic brands. The Zanussi business has been in operation since 1916 and was acquired by the Complainant in 1984, strengthening the Complainant’s position as a global leader in household appliances.
The Complainant, through its wholly owned subsidiary Electrolux Italia S.p.A, owns registered trade marks for ZANUSSI (the “Trade Mark”) in a number of jurisdictions, including in Egypt where the Respondent is based. The Egypt designated trade mark (International trade mark registration number 1201466) was registered in 2014.
The Complainant is also the owner of a number of domain names consisting of its Trade Mark, including <zanussi.com> and <zanussi.com.eg>, which are used to promote Zanussi products.
The Disputed Domain Name was registered on May 14, 2016. The website at the Disputed Domain Name (the “Respondent’s Website”) offers an unauthorised repair and maintenance service for Zanussi products. The Respondent’s Website features the Complainant’s Trade Mark a number of times.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant submits that the Disputed Domain Name is confusingly similar to the Trade Mark given that the Trade Mark is included in entirety. The only differences are: the addition of a dash and the country name “Egypt” which, as a symbol and geographic term respectively, do not differentiate the Disputed Domain Name from the Trade Mark; and the inclusion of the generic Top-Level Domain (gTLD) “.xyz” which does not add any distinctiveness to the Disputed Domain Name.
Rights or legitimate interests
The Complainant argues that the Respondent has no connection with the Disputed Domain Name and is unable to demonstrate a bona fide offering of goods and services.
The Complainant takes particular issue with the fact that the unauthorized use of its Trade Mark in the Disputed Domain Name and on the Respondent’s Website incorrectly suggests that a legitimate relationship exists with the Complainant. The Complainant refers to the test that was established in Oki Data Americas, Inc. v ASD, Inc., WIPO Case No. D2001-0903 which identified four elements which must be satisfied to establish whether use of a trade mark as a domain name by a third party is to be regarded as a bona fide offering of goods or services. The Complainant submits that the Respondent fails on at least three of these elements.
Registration and use in bad faith
The Complainant highlights that the registration of the Trade Mark pre-dates the registration of the Disputed Domain Name and submits that it is highly unlikely that the Respondent was not aware of the Complainant’s business and international profile.
Prior to the lodging of its Complaint in relation to this Disputed Domain Name, the Complainant sent two cease and desist letters to the Respondent advising of the unauthorized trade mark use and requesting the voluntary transfer of the Disputed Domain Name. No response was received from the Respondent. The Complainant claims that the Respondent 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 the website or location or of a product or service on the website or location.
The Respondent did not submit an official response to the Complaint. The Respondent did however send an email to the Center on March 23, 2017 indicating a willingness to transfer the Disputed Domain Name to the Complainant. This transfer did not eventuate.
6. Discussion and Findings
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(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 in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
Regardless of the fact the Respondent has not filed a response, the onus of proving these elements remains on the Complainant.
A. Procedural Issues
No response from the Respondent
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
The Respondent sent an email to the Center ahead of the due date of their response indicating that they would transfer the Disputed Domain Name. The Complainant agreed to suspend the process for 30 days to allow for this transfer, however it never eventuated.
A number of prior decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least two main courses proposed: (i) to grant the relief requested by the Complainant solely on the basis of the Respondent’s consent (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207); (ii) to proceed to a substantive decision on the merits considering whether on the evidence the three elements of paragraph 4(a) are satisfied. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 4.10.
The Panel has chosen to proceed to making a decision on the merits and the consideration rather than granting the relief requested by the Complainant on the basis of the Respondent’s offer to transfer the Disputed Domain Name.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
According to the Complaint, the trade mark rights on which the Complainant relies are owned by the Complainant’s wholly owned subsidiary, Electrolux Italia S.p.A., and not by the Complainant. Previous panels have accepted that a company related as a parent or subsidiary to the owner of a trade mark on which a complaint is based will have the required trade mark rights for the purpose of the Policy. Accordingly, the Complainant has the requisite rights in the Trade Mark.
The Panel considers that the Disputed Domain Name, which incorporates the Trade Mark in its entirety, is confusingly similar to the Trade Mark. The inclusion of a dash, the geographical term “Egypt” and the gTLD “.xyz” does nothing to detract from this confusion.
The Complainant is successful on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made out a prima facie case for the following reasons.
According to the Complaint, the Respondent’s website offers repair and maintenance services for the Complainant’s products (using the Trade Mark).
In certain circumstances, a third party may legitimately sell a trade mark owner’s products or offer services relating to a trade mark owner’s products using a domain name which incorporates the relevant trade mark without the trade mark owner’s permission (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”)).
The panel in Oki Data stated that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets the following requirements:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately and prominently disclose the respondent’s relationship with the trade mark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
Based on the evidence before the Panel, the Respondent’s use of the Disputed Domain Name does not satisfy the elements of the Oki Data test. The Respondent appears to falsely represent itself as being the owner of the Trade Mark, or otherwise being affiliated with or authorized by the owner of the Trade Mark to offer repair and maintenance services. This representation is made by the Respondent’s use of the Complainant’s logo and by other text on the Respondent Website. There is no statement on the Respondent’s website which discloses the fact that the Respondent is not actually an authorized service centre.
For these reasons, the Respondent has failed to meet the Oki Data test. Use of the Disputed Domain Name in these circumstances cannot be considered as being bona fide.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In fact, by email referred to above, dated March 23, 2017, the Respondent appears to effectively concede that the Respondent has no rights or legitimate interest in the Disputed Domain Name.
The Complainant is successful on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Complainant’s brand is well-known internationally having been in operation since 1901. The Complainant has demonstrated the importance of its intellectual property by registering trade marks and domain names associated with its business. As the business has expanded internationally, it has added relevant jurisdictions to its trade mark registrations. The Complainant has also actively defended these trade marks through the UDRP.
It is likely that the Respondent was aware of the Complainant when registering the Disputed Domain Name, and that the Disputed Domain Name was registered for the primary purpose of commercial gain. This is evident from the fact that the Respondent is offering commercial services which relate specifically to the Complainant’s products.
The fact that the Respondent has not replied to the Complainant’s two cease and desist letters further demonstrates that the Disputed Domain Name was registered in bad faith. See for e.g., AB Electrolux v. Yasser Merdash, WIPO Case No. D2016-1352.
Consideration has also been given to the fact the Respondent: (i) contacted the Center suggesting that he would transfer the Disputed Domain Name to the Complainant but did not actually transfer it; and (ii) had an opportunity to officially rebut the Complainant’s contentions, but did not do so. Consequently, the Respondent has not provided any evidence as to its reasons for registering and using the Disputed Domain Name.
Following consideration of the above, the Panel finds the Respondent has registered, and is using, the Disputed Domain Name in bad faith.
The Complainant is successful on the third element 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 <zanussi-egypt.xyz> be transferred to the Complainant.
Date: June 1, 2017