WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Whois Agent, Domain Protection Services, Inc. / Mostafa Faheem
Case No. D2017-0530
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States of America / Mostafa Faheem of Giza, Egypt.
2. The Domain Name and Registrar
The disputed domain name <syant-ideal-zanussi.com> (the “Disputed Domain Name”) 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 March 15, 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 March 16, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 22, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on March 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2017.
The Center appointed John Swinson as the sole panelist in this matter on May 15, 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 on March 6, 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 October 18, 2015. The website at the Disputed Domain Name (“Respondent Website”) offers an unauthorised repair and maintenance service for Zanussi products. The Respondent Website features the Complainant’s Trade Mark a number of times.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the Disputed Domain Name is confusingly similar to the Trade Mark given that it fully comprises the Trade Mark. The Complainant acknowledges that the Disputed Domain Name differs from its Trade Mark given the inclusion of the words “syant” and “ideal” as well as the generic
Top-Level Domain (“gTLD”) “.com”. The Complainant does not believe this detracts from the confusing similarity of the Disputed Domain Name.
Rights or legitimate interests
The Complainant submits that the Respondent has no connection with the Disputed Domain Name to demonstrate a bona fide offering of goods and services. The Complainant has no official relationship with the Respondent and has not authorized the Respondent to register or use its Trade Mark.
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 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 outlined 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. It is the Complainant’s case that the Respondent fails on at least three of these elements.
Registration and use in bad faith
The Complainant submits that the Respondent was aware of the Complainant’s brand and reputation and registered the Disputed Domain Name with the primary intention of capitalizing on the Complainant’s fame and goodwill.
The Complainant highlights that, prior to submitting the Complaint, two letters were sent to the Respondent advising of the unauthorized trade mark use and requesting the voluntary transfer of the Disputed Domain Name to the Complainant. It is the Complainant’s submission that the Respondent’s failure to respond to these cease and desist letters is a further demonstration of bad faith.
In addition, the Complainant submits that, after these letters were sent, the Disputed Domain Name was redirected to another website hosted at the domain name <ideal-zanwsy-maintenance.com> which offered similar repair and maintenance services. This is considered by the Complainant to be a further demonstration of bad faith.
The Respondent did not reply to the Complainant’s contentions.
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.
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 UDRP 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 wholly incorporates the Trade Mark, is confusingly similar to the Trade Mark. With regard to the inclusion of words “syant” and “ideal”, the Panel agrees with the Complainant that this does not detract from the confusing similarity. The Complainant has helpfully referred to a number of relevant decisions throughout this Complaint, including AB Electrolux v. Handi Sofian, Sevice Electrolux Lampung, WIPO Case No. D2016-2416 which support this finding.
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 website at the Disputed Domain Name 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 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 set out in the Oki Data test. First, 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 Trade Mark and the Complainant’s logo, and by the text on the Respondent Website. While the Respondent has included a small disclaimer in the footer of Respondent Website, the Panel does not consider that this disclaimer is sufficient disclosure of the Respondent’s relationship to the Complainant or that it is readily apparent to users of the website.
Based on the above, and that the Respondent has failed to respond to the Complaint, the Panel finds that the Respondent lacks rights or legitimate interests 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 subsequently 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, and actively defended these trade marks.
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, coupled with the fact that the Disputed Domain Name was redirected to the domain name <ideal-zanwsy-maintenance.com> (with similar content) following the issuing of these letters, further demonstrates that the Disputed Domain Name was registered in bad faith. See, e.g., AB Electrolux v. Yasser Merdash, WIPO Case No. D2016-1352.
Consideration has also been given to the fact the Respondent had an opportunity to rebut the Complainant’s contentions, but did not do so. It has not provided any evidence as to its reasons for registering and using the Disputed Domain Name.
In light 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 <syant-ideal-zanussi.com> be transferred to the Complainant.
Date: May 29, 2017