WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Ali Hashem, Agent Egypt
Case No. D2019-0305
1. The Parties
Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Ali Hashem, Agent Egypt of Cairo, Egypt.
2. The Domain Name and Registrar
The disputed domain name <ideal-zanussi-service.com> (the “Domain Name”) is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2019. On February 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2019.
The Center appointed Gregor Vos as the sole panelist in this matter on March 20, 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 company engaged in the production of appliances and equipment for kitchen, cleaning and floor care products.
Complainant’s wholly owned subsidiary, Electrolux Italia S.p.A., owns the following trademark registration (the “Trademark”):
- International Trademark registration No. 1201466 for the wordmark ZANUSSI, registered on March 6, 2014;
Complainant owns the domain names <zanussi.com> and <zanussi.com.eg>.
The Domain Name was registered by Respondent on December 11, 2016. Respondent uses the Domain Name to offer repair services.
5. Parties’ Contentions
Complainant asserts that the Domain Name is confusingly similar to the Trademark. The Domain Name incorporates the well-known ZANUSSI trademark. Complainant states that the only difference between the Domain Name and the Trademark would be the generic words “ideal” and “service”. These additional non-distinctive elements would not be sufficient to avoid confusion between the Domain Name and Complainant and the Trademark.
Furthermore, Complainant asserts that Respondent has no rights to or legitimate interests in respect of the Domain Name. According to Complainant, Respondent would not practice a bona fide offering of goods or services, as it would not satisfy the test set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data test” (see below)). Additionally, Complainant states that Respondent would not have any relevant prior rights in the Domain Name, would not be commonly known by the Domain Name nor would be making a legitimate, noncommercial use of the Domain Name.
Finally, Complainant asserts that the Domain Name has been registered and used in bad faith. Respondent would be taking advantage of the Trademark by intentionally attempting to attract visitors to its website by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or a product or service on Respondent’s website or location. According to Complainant, Respondent would have intentionally chose a Domain Name incorporating the well-known ZANUSSI trademark in order to generate more traffic to its business. This would be evidenced by the fact that Respondent nowhere on its website disclaiming the non-existing relationship between itself and Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Based on paragraph 4(a) of the UDRP, a request to transfer a domain name must meet three cumulative conditions:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceedings, Complainant must prove that each of these three elements is present. Only if all three elements are fulfilled can the Panel grant the remedy requested by Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the UDRP requires two elements to be proved. A disputed domain name should be (i) identical or confusingly similar to a trademark or service mark, (ii) in which a complainant has rights.
With respect to having rights pursuant to paragraph 4(a)(i) of the UDRP, it is noted that Complainant is not registered as the owner of the Trademark. The Trademark is owned by Electrolux Italia S.p.A, a subsidiary of Complainant. Nonetheless, the Panel finds that Complainant has sufficient basis to rely on the rights in the Trademark for the purposes of this UDRP complaint as the Trademark is owned by a wholly owned subsidiary and Complainant also operates under the Trademark (see section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) Consequently, the Panel finds that Complainant has proven that it has rights in the Trademark.
With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademark, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name (see section 1.7 of the WIPO Overview 3.0)
For the purpose of assessing confusing similarity under the Policy, the generic Top-Level Domain (“gTLD”) suffix (in the present case“.com”) is generally ignored in the comparison between the disputed domain name and a complainant’s trademark (see Bialetti Industrie S.p.A. v. Onno Brantjes, Stichting Taxaceae, WIPO Case No. D2016-1450; Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014‑0269). This case does not contain any indications to the contrary.
The Domain Name incorporates the Trademark entirely. Additionally, the Domain Name contains the terms “ideal” and “service”. However, a minor variation, such as adding a generic term to a trademark, usually does not prevent a finding of confusing similarity (see section 1.8 of WIPO Overview 3.0). Here, the Panel finds that the addition of the terms “ideal” and “service” to the Trademark in the Domain Name is not sufficient to avoid a finding of confusing similarity. The Trademark is still recognizable within the Domain Name (see National Westminster Bank plc v. Steve Mart, WIPO Case No. D2012-1711; Tommy Bahama Group, Inc. v. Berno Group International, WIPO Case No. D2012-0531; National Association of Realtors v. Hammerberg & Associates, Inc., WIPO Case No. D2012-0075; Space Needle LLC v. Erik Olson, WIPO Case No. D2011-0931; Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trademark.
Consequently, the Panel finds that the requirement under paragraph 4(a)(i) of the UDRP is fulfilled
B. Rights or Legitimate Interests
In order to fulfil the requirement of paragraph 4(a)(ii) of the UDRP, a complainant has to prove that the respondent lacks rights or legitimate interests in the disputed domain name. As this may result in the often impossible task of “proving a negative”, a complainant bears the burden of prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name (see section 2.1of the WIPO Overview 3.0).
Complainant has stated that Respondent does not have any relevant prior rights in the Domain Name, is not commonly known by the Domain Name and is not making a legitimate, noncommercial use of the Domain Name.
Additionally, Complainant has stated that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services as it would not meet the Oki Data test.
According to section 2.8.1 of the WIPO Overview 3.0, services providers using a domain name containing the complainant's trademark to undertake repairs 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 Respondent failed to satisfy the third above requirement as it did not in any way disclose its actual relationship with Complainant. Respondent's use of the Domain Name misleads consumers into thinking that the website is operated by or affiliated with Complainant. This includes by way of the exact use of the Trademark in the Domain Name, the lack of disclaimer on the website, and the use of the stylized ZANUSSI mark on the website. As such, Respondent's use of the Domain Name cannot be considered bona fide.
Considering the above the Panel finds Respondent does not have rights or legitimate interests in the Domain Name. Therefore, Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the UDRP, the circumstances in paragraph 4(b) of the UDRP, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith. One of these circumstances is (paragraph 4(b)(iv) of the Policy):
“by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.”
In this matter, the Panel finds that this situation occurs. It is clear from the case file that Respondent has registered and used the Domain Name primarily for the purpose of creating confusion with Complainant, for commercial gain. The Domain Name resolves to a (commercial) website on which the stylized ZANUSSI mark is prominently used and on which the non-existing relationship with Complainant is not disclosed. As a result, Respondent creates the false suggestion that the website is operated by or affiliated with Complainant.
Therefore, the Panel finds that the requirement under paragraph 4(a)(iii) of the UDRP is fulfilled.
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 <ideal-zanussi-service.com> be transferred to Complainant.
Date: April 9, 2019