WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Mostafa Faheem
Case No. D2017-2233
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Mostafa Faheem of Giza, Egypt.
2. The Domain Name and Registrar
The disputed domain name <صيانة-ايديال-زانوسى.com> (<xn-----btdbabj4c3alm0quaj4arcfb.com>) 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 November 11, 2017. On November 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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 November 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2017.
The Center appointed Martin Schwimmer as the sole panelist in this matter on December 22, 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 disputed domain name in question converts from Punycode to “Maintenance-Ideal-Zanussi.com” typed in Arabic letters (the “Domain Name”). The Complainant owns registrations for the trademark ZANUSSI in various jurisdictions (including Egypt, where the Respondent appears to be located). It uses the Mark for “white good” appliances such as washing machines and air conditioners.
The Domain Name was registered on December 7, 2014 and it resolves to a website in Arabic that promotes household appliances and related repair services, displaying the Complainant’s logo, and representing that it was authorized by the Complainant.
5. Parties’ Contentions
The Complainant has owned the ZANUSSI trademark (the “Mark”) since 1916. It utilizes the Mark in connection with white goods in Europe and the Middle East, including Egypt. The Complainant promotes its goods using, inter alia, websites as <zanussi.com> and <zanussi.com.eg>. The Complainant owns various registrations for ZANUSSI, including several Egyptian national registrations.
The Punycode in the Domain Name converts to “Maintenance-Ideal-Zanaussi.com” typed in Arabic characters. For purposes of the UDRP, punycode domain names are to be treated as equivalent to their translated Unicode domain names.
The terms “maintenance” and “ideal” are to be disregarded as they do not distinguish the trademark reflected in the Domain Name.
The Respondent is not commonly known by the Domain Name, nor is it authorized to use the Mark, nor is it using the Domain Name in connection with a bona fide offering of goods.
The Respondent purports to offer the Complainant’s goods, as well as repair services associated with those goods. The website bears the Complainant’s logo, and the website’s text states that the Respondent is authorized by the Complainant. The Complainant has not authorized such use of its Mark, nor is it the Complainant’s official policy to allow even an authorized third party to own a domain name that reflects trademarks owned by the Complainant.
The Respondent registered the Domain Name in order to generate traffic to its own business. The Respondent has been previously ordered to transfer to the Complainant 18 domain names, all reflecting the ZANUSSI Mark, in prior UDRP proceedings.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name is confusingly similar to the Complainant’s ZANUSSI trademark.
The Complainant owns the ZANUSSI trademark which it utilizes in connection with white goods in Europe and the Middle East, including Egypt. The Complainant owns various registrations for ZANUSSI, including several Egyptian national registrations.
The Punycode in the Domain Name converts to “Maintenance-Ideal-Zanaussi.com” typed in Arabic characters. For purposes of a UDRP, punycode domain names are to be treated as equivalent to their translated Unicode domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.14.
The Domain Name reflects the Complainant’s trademark in its entirety. The terms “maintenance” and “ideal” are to be disregarded as they do not distinguish the trademark reflected in the Domain Name.
B. Rights or Legitimate Interests
The Respondent’s website prominently displays the ZANUSSI logo, alongside offers for appliances purportedly originating with Complainant, as well as repair services related to such appliances. The website represents that the Respondent is authorized by the Complainant to operate the Website
However, the Complainant states that the Respondent’s website is not authorized by it in any manner. The Complainant provided documentary evidence that it is policy to never allow even authorized third parties to register domain names that reflect the Complainant’s trademarks.
As the Respondent did not respond, the Panel may assume that the Respondent is not in fact authorized by the Complainant.
Once a complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made by the Complainant. It is undisputed that the Respondent has not been authorized to use the Complainant’s Mark.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating, inter alia, that “(iii) the respondent is 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.”
As stated, the record reflects that the Respondent’s website under the Domain Name purports to sell ZANUSSI branded appliances, and to offer repair services in relation to such goods. While a reseller of a complainant’s trademarked products, could, in theory, be making a “bona fide offering of goods or services” (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”)), here, the Respondent does not satisfy the conditions set out in Oki Data.
The panel in Oki Data set out a four part test. One factor provides that “the site itself must accurately disclose the respondent’s relationship with the trademark owner”.
By utilizing the Complainant’s logo, and by falsely stating that its site was authorized by the Complainant, the Respondent has not accurately described its relationship with the trademark owner. The Respondent has thus exceeded any potential nominative fair use defense in this regard.
As the Respondent has not been authorized to use the Complainant’s ZANUSSI mark, has not been commonly known by the Domain Name, and has not otherwise demonstrated rights or legitimate interests in the Domain Name, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant owns the ZANUSSI trademark. The Respondent clearly has targeted the Complainant, as it is using the Complainant’s logo, and is selling appliances purportedly originating from the Complainant. Even if such goods were authentic, the Respondent’s registration and use of the Domain Name is in bad faith, as the use of a domain name reflecting the Complainant’s trademark, as well as the Respondent’s false declaration that its website is authorized by the Complainant, exceeds any possible concept of nominative fair use. The Panel also notes previous Panel decisions in which this Respondent was ordered to transfer 18 domain names reflecting the ZANUSSI trademark to the Complainant.
As the Respondent is likely acting for commercial gain with obvious knowledge of the Complainant’s rights in its ZANUSSI trademark, the Panel finds that the evidence establishes bad faith registration and use under paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has satisfied the requirement of paragraph 4(a)(iii) 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 Domain Name <صيانة-ايديال-زانوسى.com> (<xn-----btdbabj4c3alm0quaj4arcfb.com>) be transferred to the Complainant.
Date: January 9, 2018