WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. WhoisGuard Protected, WhoisGuard, Inc./ Mark Francom
Case No. D2017-0834
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Mark Francom of Seattle, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <zanussipro.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2017. On April 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 26, 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 April 27, 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 April 28, 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 May 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2017.
The Center appointed Peter Wild as the sole panelist in this matter on June 7, 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 owns a large number of trademarks for ZANUSSI and ZANUSSI PROFESSIONAL in various countries, jurisdictions and classes, e.g., International registration number 950678 registered on September 3, 2009 which designates several countries. The Complainant is active and well-known as a manufacturer of home appliances and kitchen equipment. “www.zanussi.com” is its main Internet address (domain name registered on November 17, 2005) and it owns and uses a range of domain names containing the term “Zanussi”.
The Disputed Domain Name was registered on January 11, 2017. The Disputed Domain Name used to resolve to a website appearing to offer home appliances and kitchen equipment for sale. It no longer resolves to an active page. According to the Complainant, the Disputed Domain Name was also used to approach the public who was looking for jobs, pretending to be related to the Complainant.
5. Parties’ Contentions
The Complainant contends that it is the owner of a number of trademarks consisting of the element “Zanussi” and that it has worldwide reputation for the products under this trademark. It has a strong presence on the Internet, with its main website at “www.zanussi.com”. The Complainant asserts that the Disputed Domain Name <zanussipro.com> is confusingly similar to the above mentioned ZANUSSI trademarks. According to the Complainant, the Respondent’s website is using the same, distinctive color scheme as the Complainant including the stylized Italian flag. The Complainant alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name which was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns registered rights in the trademark ZANUSSI. This trademark is fully integrated in the Disputed Domain Name. It stands prominently at the beginning of the Disputed Domain Name and is followed by a descriptive term “pro” which is a common abbreviation for “professional”. The Complainant not only owns trademarks and domain names for ZANUSSI, but also for ZANUSSI PROFESSIONAL. In the Disputed Domain Name, the second level domain “zanussipro” is followed by the generic Top Level Domain (“gTLD”) “.com”. A gTLD is typically ignored when assessing confusing similarity. Furthermore, additional elements do not add or create a new, distinctive overall impression for the domain name and are generally not sufficient to avoid a confusing similarity. The term “pro” may be seen as an abbreviation of the Complainant’s ZANUSSI PROFESSIONAL trademark. Therefore, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must establish a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
The Respondent is not known under the Disputed Domain Name and claims no connection with or authorization from the Complainant. It is unclear whether the goods which were displayed on the website under the Disputed Domain Name are goods which were produced by the Complainant or whether they are third-party goods. As the Panel finds, this factual question has no influence on the issue of rights or legitimate interests. Should the goods be from a third party, no legitimate interest can be derived. Should they be the Complainant’s products and the Respondent is considered as a (non-authorized) reseller, the established Oki Data principles must be applied, according to which a reseller or distributor can only be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). These requirements include, inter alia, the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The fulfillment of the second point above is unclear, and the third point is not fulfilled in the Panel’s assessment.
In addition, emails have been sent under the Disputed Domain Name, contacting job seeking persons, pretending to be part of the organization of the Complainant and indicating an office address which does not exist with an office of the Complainant. This is another indication of lack of legitimate interests.
The Complainant sent a cease-and-desist letter on March 20, 2017 which remained unanswered. However, the Disputed Domain Name was deleted and reregistered in the name of the Respondent shortly after.
In the absence of any explanation by the Respondent, the Complainant’s establishment of the prima facie case is sufficient.
With the evidence on file, this Panel is satisfied that the second element of the Policy is met.
C. Registered and Used in Bad Faith
The Disputed Domain Name used to direct Internet user to a website on which various kitchen appliances were displayed. On that website, the same color scheme as on the Complainant’s official website was used, together with the stylized Italian flag underlining the “ZANUSSI PRO.COM” words which are separated to highlight the element “Zanussi” in a separate line. In addition, the same font is used as on the Complainant’s original website. These elements are clear indication that the Respondent was aware of the Complainant, its name and website. Taking also into account the notoriety of the Complainant’s trademark ZANUSSI, which was confirmed by a number of previous UDRP panels in recent UDRP cases (see, AB Electrolux v. Yasser Merdash, WIPO Case No. D2016-1352; AB Electrolux v. Amr Aamer, WIPO Case No. D2016-2082; AB Electrolux v. Mo qian fan, WIPO Case No. D2016-1351; AB Electrolux v. ID Shield Service, Domain ID Shield Service CO., Limited / Maksim, zanussi-shop.com, WIPO Case No. D2015-2027; AB Electrolux v. Mostafa Alashi, WIPO Case No. D2015-1754) and the Respondent’s use of the Disputed Domain Name and website design, the Panel is convinced that the Respondent was and is aware of the Complainant’s trademark. In this Panel’s view this establishes bad faith registration of the Disputed Domain Name.
Using a well-known trademark in a domain name which refers to the complainant’s products will attract Internet users who are interested in the complainant’s products. This is especially so where the domain name is almost identical to the complainant’s mark. This in turn may, among other commercial benefits, generate traffic to the website the domain name resolves to and may lead to further abuse of the domain name, such as job phishing with email addresses using the disputed domain name. The use of the Complainant’s trademark in the Disputed Domain Name and the linked website must therefore be seen as the Respondent’s intentional attempt 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 Respondent’s website or location or of a product or service on the Respondent’s website or location (paragraph 4(b)(iv) of the Policy). This establishes bad faith use of the Disputed Domain Name.
This Panel therefore comes to the conclusion that the third element of the Policy is met.
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, <zanussipro.com>, be transferred to the Complainant.
Date: June 21, 2017