WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Haron Ali, SWAQNY/ Whoisguard protected, Whoisguard, Inc.
Case No. D2017-0920
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Haron Ali, SWAQNY of Tanta, Gharbiya, Egypt / Whoisguard protected, Whoisguard, Inc., of Panama.
2. The Domain Name and Registrar
The disputed domain name <zanussi-maintenance.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2017. On May 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On May 10, 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 May 11, 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 May 12, 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 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2017.
The Center appointed Alfred Meijboom as the sole panelist in this matter on June 9, 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 Swedish joint stock company founded in 1901 and one of the world's leading producers of appliances and equipment for kitchen and cleaning products and floor care products. The Complainant acquired the Italian appliance manufacturer Zanussi in 1984. In 2015, the Complainant had sales of SEK 124 billion and about 58,000 employees.
The Complainant holds the ZANUSSI trademarks through its wholly owned subsidiary Electrolux Italia S.p.A. The ZANUSSI trademarks are globally registered, including in Egypt on the basis of International trademark registration No. 1201466, which was registered for ZANUSSI on March 6, 2014 for games and plaything in class 28 and Egyptian trademark registration no. 258519 which was registered for (which the Panel understands is Arabic for ZANUSSI) in September 2013, for goods in class 11, including refrigerators, freezers, cookers and ovens (the "Trademark").
The Respondent registered the disputed domain name on March 5, 2016. The disputed domain name resolves to a website in Arabic which offers maintenance and repair of household appliances under the Trademark.
5. Parties' Contentions
The Complainant claims that the disputed domain name is confusingly similar to the Trademark, which it directly incorporates, merely adding the generic word "maintenance". Such addition is not sufficient to distinguish the disputed domain name from the Trademark. The Complainant alleges that its presence is rather likely to increase the risk that Internet users will be confused into associating the disputed domain name with the Complainant and its Trademark.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name which is used to attract Internet users to a website where the Respondent offers maintenance and repair services in Egypt. The Respondent was not authorized by the Complainant to offer such services on the Complainant's household appliances under the Trademark, and it does not have a maintenance agreement with the Complainant's official service companies. Although the Complainant does not object to the Respondent advertising on its website that it offers repairs for products under the Trademark, the use of the word ZANUSSI in the disputed domain name strongly, but incorrectly, suggests that there is some official or authorized link with the Complainant for the purposes of repairs and services within Egypt. The Complainant's layout is prominently used on the Respondent's website. According to the Complainant, given that the prominent use of the Trademark on the Respondent's website strongly suggests that there is a connection with the Complainant, the Respondent's activities overall suggest a desire to create such impression with a view to attracting customers for its repair services. The Complainant further alleges that the Respondent's website does not meet all the Oki Data criteria (infra) as the Respondent did not publish a disclaimer on its website and is depriving the Complainant of reflecting the Trademark in the disputed domain name and on the Egyptian market. Moreover, the Respondent has made no claims to neither having any relevant prior rights of its own, or to having become commonly known by the disputed domain name.
The Complainant further asserts that the Respondent registered and is using the disputed domain name in bad faith. In this respect, the Complainant points out that the Trademark is well-known in the home appliance industry, including in Egypt, and it is therefore highly unlikely that the Respondent was not aware of the Complainant's rights in the Trademark and the value of the Trademark, at the point of the registration. The Respondent intentionally chose the disputed domain name based on a registered and well-known trademark in order to generate more traffic to its own business. The look and feel of the website is similar to the Complainant's official Zanussi website at "www.zanussi.com" by adopting the yellow and black color scheme as well as using the Complainant's logotype on the website. Further, the Respondent did not reply to the Complainant´s repeated request cease the use of the disputed domain name and the associated website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Trademark is owned by a wholly owned subsidiary of the Complainant. However, paragraph 4(a)(i) of the Policy only requires that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Policy does not require that the Complainant owns the trademark it relies on. The Complainant submitted documentary evidence of the parent-subsidiary relationship between the Complainant and the owner of the Trademark, which was not disputed by the Respondent. The Panel therefore considers the Complainant to have rights in the Trademark (e.g., Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case Case No. D2003-0796).
The disputed domain name contains the Trademark in its entirety, together with the generic word "maintenance". It has been consistently decided in cases under the Policy that adding a common or descriptive term to an established mark does not affect the finding that a domain name is confusingly similar (e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 and Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
The Panel is therefore satisfied that disputed domain name is confusingly similar to the Trademark.
Accordingly, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant stated that it has not authorized the Respondent to use the Trademark as part of the disputed domain name and that the Respondent is not commonly known by the disputed domain name, which the Respondent has not denied.
The Complainant further showed that the Respondent operates a website under the disputed domain name, which offers maintenance and repair services for the Complainant's household appliances and uses the 'look and feel' of the Complainant's website for ZANUSSI products, thereby suggesting a link between the Respondent and his maintenance services on the one hand and the Complainant and the Trademark on the other hand. As the maintenance services concerns the Complainant's genuine products, the Respondent could make a bona fide offering of maintenance services via the disputed domain name if the criteria of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, which panels commonly apply in matters of resale, were met. Considering that the Respondent, in absence of a formal service agreement with the Complainant's official service companies, is an unauthorized service provider of products under the Trademark, the Panel finds that the Respondent did not make bona fide offerings via the disputed domain name as the Complainant alleged that the Respondent did not accurately disclose his relationship with the Complainant and/or the Trademark owner, as would be required under the Oki Data precedent, which the Respondent did not dispute.
The Panel finds that the Complainant has made an unrebutted prima facie case. As a result, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of a domain name in bad faith where a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's trademark as to the source, sponsorship, affiliation, or endorsement of a respondent's website or location or of a product or service offered on the respondent's website or location. In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the Trademark in mind as the Trademark had already been registered for many years, is not generic, and the Respondent uses the website under the disputed domain name to offer unauthorized maintenance services for the Complainant's products, which compete with authorized maintenance of the Complainant's products under the Trademark.
The fact that the Complainant sent a cease and desist letter to the Respondent requiring voluntary transfer of the disputed domain name, as well as a reminder, without the Respondent replying, further contribute to the Panel's finding of bad faith registration and use of the disputed domain name (e.g., Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598).
Consequently, the third and last element of paragraph 4(a) of the Policy is also 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 <zanussi-maintenance.com> be transferred to the Complainant.
Date: June 14, 2017