WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Privacy protection service - whoisproxy.ru / Zoom ltd.
Case No. D2018-1823
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Privacy protection service - whoisproxy.ru of Moscow, Russian Federation / Zoom ltd of Tyumen, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <zanussi.expert> is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 9, 2018. On August 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2018, 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 the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent an email communication in English and Russian in regard to the language of the proceedings. The Complainant requested English to be the language of the proceedings. The Respondent did not submit any response on the language of the proceedings. The Complainant filed an amendment to the Complaint on August 20, 2018
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 August 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 14, 2018.
The Center appointed Taras Kyslyy as the sole panelist in this matter on September 24, 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 company founded in 1901, a producer of appliances and equipment for kitchen and cleaning products and floor care products. The Complainant markets its products internationally, including in the Russian Federation in respect of its ZANUSSI products. The Complainant acquired the well-known ZANUSSI brand in 1984 and currently owns ZANUSSI international trademark registrations relevant for this case as follows:
- No. 1201466, registered on March 6, 2014, and
- No. 404462, registered on November 9, 1973.
The disputed domain name was registered on March 20, 2018 and at the time of the complaint filing was used for a website offering ZANUSSI products. At the time of the decision the disputed domain name resolves to inactive webpage.
5. Parties' Contentions
A. Complainant
The disputed domain name is identical or at least confusingly similar to the Complainant's trademarks. The disputed domain name incorporates the Complainant's trademark in its entirety. Addition of the generic Top-Level Domain ("gTLD") ".expert" does not add any distinctiveness to the disputed domain name.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Complainant never authorized the Respondent to use and/or register domain name incorporating the Complainant's trademark. The Respondent does not meet all the Oki Data Test1 criteria.
The disputed domain name was registered and is being used in bad faith. The Respondent must have known of the trademark when registered the disputed domain name. The disputed domain name resolves to the website where the Complainant's trademark is used and so makes a false suggestion of an association or affiliation with the Complainant. The Respondent has never been granted permission to register the disputed domain name. The Respondent attempts to attract visitors to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or a product or service on its website or location.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of Proceedings
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g. General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334 ). Accordingly, account should be taken of the risk that a strict and unbending application of paragraph 11 of the Rules may result in delay, and considerable and unnecessary expenses of translating documents.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all "the relevant circumstances". The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
The Complainant has submitted in its Complaint that the language of the proceedings be English, since a) the Complainant is not familiar with Russian language and it would be a disadvantage for it to have the proceedings in Russian, and b) the disputed domain name is composed with Latin script characters rather than Russian characters.
The Panel further notes that no objection was made by the Respondent to the Complaint being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant's request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The gTLD ".expert" in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g. Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0") in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy.
The disputed domain name includes the Complainant's trademark ZANUSSI without alteration or addition, adding the gTLD ".expert". Disregarding the gTLD the Panel finds that the disputed domain name is identical to the Complainant's trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g. World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent.
According to section 2.8.1 of the WIPO Overview 3.0 resellers, distributors using a domain name containing complainant's trademark to undertake sales related to the complainant's goods may be making a bona fide offering of goods and thus have a legitimate interest in such domain name. Outlined in the Oki Data Test, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods at issue;
(ii) the respondent must use the site to sell only the trademarked goods;
(iii) the site must accurately and prominently disclose the registrant's relationship with trademark holder; and
(iv) the respondent must not try to "corner the market" in domain names reflecting trademark.
The Panel finds that the Respondent failed to satisfy at least the third above requirement and did not in any way disclose its actual relationship with the Complainant, and thus failed to pass the Oki Data Test. The Respondent's use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. This includes by way of the exact use of the Complainant's trademark in the disputed domain name (WIPO Overview 3.0, section 2.5.1), the lack of disclaimer on the website, and the use of the Complainant's graphical mark or the website (WIPO Overview 3.0, section 2.8). As such, the Respondent's use of the disputed domain name cannot be considered bona fide.
Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Respondent's use of the disputed domain name to purport to sell the Complainant's products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted Complainant's prior registered and famous trademark, which confirms the bad faith (see, e.g. The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain name was resolving to a website featuring the Complainant's trademark and falsely making impression to be official Complainant's local or authorized website to intentionally attract Internet users by creating likelihood of confusion with the Complainant's trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
7. Decision
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.expert> be transferred to the Complainant.
Taras Kyslyy
Sole Panelist
Date: October 3, 2018
1 Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.