WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Trude Jakob and Winfried Ehlers
Case No. D2018-2671
1. The Parties
Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondents are Trude Jakob of Bochum, Germany and Winfried Ehlers of Wuppertal, Germany.
2. The Domain Names and Registrar
The disputed domain names <zanussie.com> and <zanussie.net> are registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2018. On November 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 23, 2018, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the <zanussie.net> disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 29, 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 Respondent of the Complaint, and the proceedings commenced on November 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default December 21, 2018.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on January 4, 2019. 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
Complainant is a Swedish joint stock company that produces appliances and equipment for kitchen and cleaning products and floor care products. The ZANUSSI trademark and a corresponding yellow-and-black trade dress have been used in Europe and neighboring countries with these products since 1916 and were acquired by Complainant in 1984. Complainant owns a valid and subsisting international registration in the ZANUSSI trademark (No. 404462), made November 9, 1973 and based on an Italian registration (No. 274 514). Complainant owns and operates websites in connection with its business, including websites that resolve through the <zanussi.com> disputed domain name, which was created on November 17, 2005.
The disputed domain name <zanussie.com> was registered on May 7, 2018. Complainant has not specifically made of record the date on which the disputed domain name <zanussie.net> was registered, but publicly available Whois data reflects that it was registered in close proximity on July 20, 2018. Complainant’s trademark registrations predate each of the disputed domain names.
At the time the Complaint was filed, the disputed domain name <zanussie.net> redirected to <zanussie.com>. The disputed domain name <zanussie.com> resolves to a website featuring Complainant’s ZANUSSI trademark and yellow-and-black trade dress. The website purportedly advertises repair and maintenance services for ZANUSSI brand products in Egypt. The content on the website to which the disputed domain names resolve further suggests that the services offered are official or authorized by Complainant. Complainant’s contractual relationships with its official and authorized licensees and distributors, however, prohibit registration of domain names containing the ZANUSSI trademark.
5. Parties’ Contentions
Complainant asserts that the disputed domain names are identical or confusingly similar to the ZANUSSI trademark. Complainant asserts that the disputed domain names contain the entire ZANUSSI trademark and are therefore confusingly similar. Complainant asserts that the addition of the letter “e” and top-level domain names to the end of the ZANUSSI trademark in each of the disputed domain names does not diminish the confusing similarity.
Complainant asserts that Respondents have no right or legitimate interest in the disputed domain names. Complainant asserts that it has contractual relationships with all of its authorized licensees and distributors and that all of these agreements prohibit registration of domain names that incorporate the ZANUSSI trademark. Complainant asserts that, if Respondents are not authorized licensees or distributors, the manner in which they are using the disputed domain names creates a false impression to the contrary. Specifically, Respondents do not provide any disclaimer or disclosure of their relationship to Complainant on the website to which the disputed domain names resolve, they use Complainant’s logo mark on that website, and by registering the disputed domain names, they deprive Complainant of the right to reflect its own mark therein. Complainant asserts that Respondents are not making any legitimate, non-commercial fair use of the disputed domain names. Complainants further assert that Respondents are not commonly known by the disputed domain names.
Complainant asserts that Respondents’ use and registration of the disputed domain names is in bad faith. Complainant asserts that Respondents were aware of Complainant’s marks prior to the acquisition of the disputed domain names. In support of this contention, Complainant asserts that the ZANUSSI trademark has been recognizable throughout Europe and neighboring countries for decades, as of the time the Complaint was filed. Complainant asserts that the ZANUSSI trademark is well known in Egypt, noting that the disputed domain names are used with an Egyptian-language website, and Germany, noting that Respondents registration data both list German addresses. Complainant asserts that it had devoted substantial resources to advertising and promoting the ZANUSSI trademark and that sales of ZANUSSI brand products and services account for an unspecified portion of Complainant’s 124 billion Swedish kronor in sales in 2015. Complainant also asserts that, across its various brands, it had 58,000 employees in 2015. Complainant concludes, therefore, that Respondents were aware of Complainants rights in the ZANUSSI trademark. In the event that Respondents registered the disputed domain names as or on behalf of authorized licensees or distributors of ZANUSSI brand products, Complainant also asserts that such registration would have been in breach of the applicable licensing or distribution agreement.
Complainant asserts that the disputed domain names are being used in bad faith. Complainant asserts that Respondents’ use of the disputed domain names with the website to which they resolve is intended to create a false or mistaken impression on consumers as to the association or relationship of Respondents and Complainant. Complainant asserts that Respondents’ website intentionally gives the impression that Respondents are authorized to sell or service Complainants ZANUSSI brand products. Complainant claims there is no evidence that Respondent’s conduct constitutes a bona fide offering of goods or services. Finally, Complainant claims that Respondent’s registration of the disputed domain names wrongfully prevents Complainant from reflecting its ZANUSSI trademark with an extra “e” in its domain names.
Respondent did not reply to Complainant’s contentions.
6.1 Procedural Issue: Consolidation of Multiple Respondents
The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondent's cases and extracted the following general principles:
(1) Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
(2) The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
In the present case, one disputed domain name forwards to the other, such that they both resolve to an identical website; the disputed domain names are identical at the second level; the disputed domain names were registered through the same registrar; the disputed domain names were registered in close chronological proximity, less than three months apart; and both Respondents are located in Germany according to their registration data.
Accordingly, the Panel finds that Complainant has established more likely than not that the two disputed domain names are subject to common ownership or control. The Panel finds such common control to justify consolidation of Complainant's claims against the registrants of the disputed domain names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by Complainant pursuant to paragraph 10(e) of the Rules.
6.2 Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of the ZANUSSI trademark, which has been registered since at least as early as 1973.
With Complainant’s rights in the ZANUSSI trademarks established, the remaining question under the first element of the Policy is whether the disputed domain name, typically disregarding the generic Top-Level Domain (“gTLD") in which it is registered (in this case, “.com” and “.net”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc / Joseph Gross, WIPO Case No. D2010-0842. Here, the disputed domain names are confusingly similar to Complainant’s ZANUSSI trademark, because the disputed domain names fully incorporate the trademark at the second level. The single additional character “e” at the end of the second level string does not significantly alter the appearance, sound, meaning or commercial impression of the disputed domain names in a manner that would prevent likely consumer confusion.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the ZANUSSI trademark and in showing that the disputed domain names are identical or confusingly similar to its mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that respondent possesses no rights or legitimate interests in any disputed domain names. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to respondent, though the burden of proof always remains on complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained their burden under the second element of the UDRP.
The record reflects that the disputed domain names and the website to which they resolve were used to directly indicate that Complainant is the source of, sponsors, is affiliated with, or endorses the website or Respondents’ goods and services. The website uses the ZANUSSI trademark (not “ZANUSSIE,” as reflected in the disputed domain names) and Complainant’s yellow-and-black trade dress, while also stating that the goods and services offered through the website are licensed or authorized by Complainant.
Panels have recognized that resellers, distributors, or service providers using a domain name containing complainant’s trademark to undertake sales related to complainant’s goods may make a bona fide offering of services and have a legitimate interest in such domain name under certain conditions. This is clearly established in Oki Data Americans, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. See WIPO Overview 3.0, section 2.8.1.
Respondents necessarily either are or are not authorized licensees or distributors of Complainant. If Respondents are authorized licensees or distributors, their use of the disputed domain names are wrongful because they are in breach of the terms to which all of Complainant’s licensees and distributors must agree, which prohibit registration of domain names containing the ZANUSSI mark. If, alternatively, Respondents are not licensees or distributors, the evidence supports a finding that Respondents are aware of the ZANUSSI brand, and are using confusingly similar domain names to direct Internet users to a website that falsely advertises repair and maintenance services as officially licensed and certified by Complainant.
Respondents’ use of Complainant’s ZANUSSI trademark does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel, WIPO Case No. D2013-0585; and Philip Morris USA v. Prophet Partners Inc., WIPO Case No. D2007-1614 (stating when a respondent chooses a domain name to capitalize on a complainant’s famous trademark, it cannot be considered a bona fide offering of goods and services). Complainant has provided evidence supporting its prima facie claim that Respondents are not authorized licensees or distributors, and that they lack any rights or legitimate interests in the disputed domain names. Respondents have failed to produce countervailing evidence of any rights or legitimate interests in the disputed domain names. Thus, the Panel concludes that Respondents do not have any rights or legitimate interests in the disputed domain names and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondents’ actions indicate that Respondents registered and are using the disputed domain names in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 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.”
Complainant and its predecessors in interest first used the ZANUSSI trademark in 1916 and registered the mark as early as 1973. This well predates Respondents’ registration of the disputed domain names. Complainant has provided evidence that Respondents knew of Complainant’s trademark rights in ZANUSSI when they registered the disputed domain names.
Respondent’s registration and use of the disputed domain names constitutes use primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the UDRP. See, e.g., Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club and Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331 (finding the unauthorized sale of complainant’s tickets and as a competitor in ticket sales to be an indicia of bad faith). Respondent has registered and used the disputed domain names, which contain Complainant’s ZANUSSI mark, to direct Internet users to a website offering services that directly compete with authentic ZANUSSI-branded services, whether offered by Complainant directly or through its authorized licensees or distributors.
In addition, the Panel agrees that Respondent intentionally attempted to attract, for commercial gain, Internet users to the disputed domain names, by creating a likelihood of confusion with Complainant’s ZANUSSI mark in order to offer what appears to be counterfeit services under the ZANUSSI trademark. This constitutes evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
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 names <zanussie.com> and <zanussie.net> be transferred to Complainant.
Brian J. Winterfeldt
Date: January 18, 2019