WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Fahmy Sayed
Case No. D2017-2448
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Fahmy Sayed of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <zanussicare.net> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 12, 2017. On December 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 December 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2018. The Center received informal email communications from the Respondent on December 18, 2017; December 19, 2017; December 20, 2017; December 23, 2017; and January 16, 2018. A formal Response was not filed with the Center.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on January 16, 2018. 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 that produces household appliances and equipment. It was founded in 1901. The ZANUSSI brand was founded in 1916. In 1984, the Complainant acquired Zanussi.
The Complainant has rights in the ZANUSSI trademark through its wholly owned subsidiary Electrolux Italia S.p.A. The Complainant has rights in several trademarks for ZANUSSI dating back as far as 1973, e.g., International trademark number 404462.
The Complainant has registered a number of domain names under generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) containing the term “zanussi”. For example, <zanussi.com> (created on November 17, 2005) and <zanussi.com.eg> (created on December 16, 2002). The Complainant uses these domain names to connect to a website through which it informs potential customers about its ZANUSSI mark and its products and services.
The disputed domain name <zanussicare.net> was registered by the Respondent on January 11, 2017, and resolves to a website where repair and maintenance services for the Complainant’s products and other products are offered. The Respondent is based in Cairo, Egypt.
5. Parties’ Contentions
The Complainant AB Electrolux is one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products. Following its takeover of the ZANUSSI brand in 1916, the Complainant became the leader in household appliances for consumers and professionals.
ZANUSSI is one of the Complainant’s strategic brands and the Complainant has devoted substantial resources to advertising and promoting its trademark ZANUSSI. The Middle East is one of the Complainant’s growth markets, and in 2011 the Complainant acquired Egypt’s leading appliance manufacturer, the Olympic Group.
The Complainant says that the Respondent is using the disputed domain name to attract Internet users to its website where repair and maintenance services for ZANUSSI and other products are offered.
The Complainant’s contentions are that ZANUSSI is a well-known trademark in the home appliance industry globally, including in Egypt, and that:
a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in the disputed domain name;
c) The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Center received informal email communications from the Respondent on December 18, 2017; December 19, 2017; December 20, 2017; December 23, 2017; and January 16, 2018. The Respondent claimed in these communications that it is the developer, and not the owner, of the disputed domain name, and that the owner of the disputed domain name has indicated to the Respondent that he no longer “works with this domain cause he know that is not legal”. A formal Response was not filed with the Center.
6. Discussion and Findings
The Rules state that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate. See paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <zanussicare.net> entirely incorporates the Complainant’s registered trademark ZANUSSI. The Complainant submits that the addition of the generic element “care” and the gTLD “.net” does not differentiate the disputed domain name from the ZANUSSI trademark.
In Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435, the panel stated that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.
And in Hugo Boss Trade Mark Management GmbH & Co. KG and Hugo Boss AG v. Cheng Yong, WIPO Case No. D2016-0160, the panel stated that the disputed domain name consisted of the Complainants’ HUGO BOSS mark, the generic words “store”, “shop” and the gTLD “.com” and said that “It is well-established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only deviation is the inclusion of numbers, letters or a generic term or the gTLD, as prefix or suffix, such prefix or suffix does not negate the confusing similarity between the domain name and the mark.”
Here, the disputed domain name incorporates the Complainant’s trademark ZANUSSI in its entirety and the addition of “care” and the gTLD “.net” does not affect the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out various circumstances which may demonstrate that a respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive and is as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
The burden is on the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. But it is well settled that a complainant need only make out a prima facie case. The burden of production then shifts to the respondent to rebut such prima facie case by demonstrating rights or legitimate interests.
The Complainant says that the Respondent has never been granted permission to register the disputed domain name; that it has not found that the Respondent is commonly known by the disputed domain name; and that there is no evidence that the Respondent has a history of using, or preparing to use the disputed domain name in connection with a bona fide offering of goods and services.
It was open to the Respondent to reply to the Complainant’s contentions. The Respondent has not done so.
The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In relation to registration in bad faith, the Complainant says that its trademark registration predates the registration of the disputed domain name and that therefore “it seems highly unlikely that the Respondent was not aware of the existence of the well-known ZANUSSI trademark and the unlawfulness of the registration of the Domain Name.”
In relation to use in bad faith, the Complainant says that the Respondent on its website falsely claims that its maintenance center is officially approved by Complainant. Translated from Arabic into English, the website included the statement “Zanussi maintenance centers officially approved by the parent company”.
Even disregarding that deceptive statement, the incorporation of the trademark in the disputed domain name “including the ZANUSSI logo appearing prominently on the website strongly suggests that there is a connection to the Complainant and that there is some official or authorized relationship with the Complainant for the purposes of repair and maintenance services within Egypt.”
The Complainant submits that the Respondent is using the disputed domain name to attract Internet users to its website “where repair and maintenance services for inter alia ZANUSSI products are offered” and says that it is clear“that the intention of the domain name registration is to take advantage of the internet traffic generated due to the incorporation of the well-known ZANUSSI trademark in the Domain Name”.
In AB Electrolux v. Begad Negad, WIPO Case No. D2014-2092, concerning the domain names <electrolux-egy.com> and <electroluxegy.com>, the panel noted that:
“The disputed domain names resolve to (commercial) websites which use the Complainant’s (logostyle) trade mark and so make a false suggestion of an association or affiliation with the Complainant. While the Panel notes that the Respondent appears to be selling the Complainant’s products, there is no disclaimer disclosing the relationship between the Respondent and the Complainant. In the result, there is no evidence of use of the disputed domain names in connection with a bona fide offering of goods or services.”
The Complainant alleges that the Respondent intentionally chose the disputed domain name “which is based on a registered and well-known trademark in order to generate more traffic to its own business. The Respondent has not published a disclaimer anywhere on its website to explain that there is no existing relationship between itself and the Complainant, instead Respondent falsely advertises itself as an official service center. Respondent is also using the Complainant’s ZANUSSI trademark to advertise repair / maintenance services for Complainant’s competitors.”
The result is that “it is clear that Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its website.”
Again, it was open to the Respondent to answer the Complainant’s arguments by serving a Response, but has chosen not to do so.
The Panel is satisfied that the Complainant has provided evidence of bad faith registration and use pursuant to the Policy, and has proved the requirements 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 disputed domain name <zanussicare.net> be transferred to the Complainant.
Anthony R. Connerty
Date: January 28, 2018