WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. WhoisGuard, Inc. / Fade Milad / Eng. Mohammad Hussain
Case No. D2019-0594
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is WhoisGuard, Inc. of Panama, Panama / fade milad of Cairo, Egypt / Eng. Mohammad Hussain of Cairo, United Arab Emirates.
2. The Domain Names and Registrar
The Disputed Domain Names <zanussi-eg.site>, <zanussi-egyptfix.win>, <zanussi-fixat.trade>, <Zanussi‑fixat75.win> and <zanussi-irepair.website> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a request for consolidation on March 20, 2019. The Center prima facie accepted the Complaint for the Panel’s final determination of the consolidation on March 21, 2019.
The Center verified that the Complaint together with the consolidation request 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 March 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 17, 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
The Complainant is a Swedish joint stock company founded in 1901, which produces appliance and equipment for kitchen and cleaning products, as well as floor care products.
The ZANUSSI brand was founded in 1916. ZANUSSI is one of the Complainant’s trademark.
The Complainant owns numerous trademarks registrations, throughout the world for the term ZANUSSI. Among others, the Complainant is the owner of the following trademark registrations:
- ZANUSSI, International trademark registration No. 404462 (live in Egypt since 1973) and
- ZANUSSI, International trademark registration No.1201466 (live in Egypt since 2014).
Moreover, the Complainant has registered a number of domain names containing the term ZANUSSI, such as <zanussi.com>, registered on November 17, 1995.
The Respondent registered the following Disputed Domain Names:
- <zanussi-eg.site> registered on April 2, 2018;
- <zanussi-egyptfix.win> registered on April 9, 2018;
- <zanussi-fixat.trade> registered on April 4, 2018;
- <zanussi-fixat75.win> registered on April 5, 2018;
- <zanussi-irepair.website> registered on March 31, 2018.
At the time of the Complaint was filed all the Disputed Domain Names were used to offer repair and maintenances services of ZANUSSI products (see Annex 10 of the Complaint).
Currently, the following Disputed Domain Names <zanussi-egyptfix.win>, <zanussi-fixat.trade> and <zanussi‑fixat75.win> redirect to pay per click webpages, while the others two <zanussi-eg.site>, <zanussi‑irepair.website> redirect to inactive webpages.
However, the Complainant presented evidence that the websites on the Disputed Domain Names featured the ZANUSSI logo, as well as various indications of being authorized or certified by the Complainant.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant states that the Disputed Domain Names are confusingly similar to the Complainant’s trademark ZANUSSI.
The addition of the generic words “fix”, “fixat75”, “repair” and a geographic indication of the generic word “eg” for Egypt does not differentiate the Disputed Domain Names from the ZANUSSI registered trademark.
Furthermore, regarding the generic Top-Level Domains (“gTLD”), “.site”, “.win”, “.trade” and “.website”, do not add any distinctiveness to the Disputed Domain Names.
Rights or legitimate interest
The Complainant submits that the Respondent is not commonly known by the Disputed Domain Names and there is no evidence that the Respondent has used them.
The Complainant further alleges that the Respondent is using the Disputed Domain Names to attract Internet users to their websites, since the Disputed Domain Names create an overall impression that they are affiliated with the Complainant.
In addition, the Respondent does not meet the Oki Data criteria.
Registration and use in bad faith
The Complainant contends that it is unlikely that the Respondent was not aware of the existence of the Complainant’s trademark.
Moreover, the Respondent has failed to respond to any communication made by the Complainant.
In addition, the Respondent has never been granted permission to register the Disputed Domain Names. The websites of the Disputed Domain Names use the words such as “accredited” and “certified” to enhance the impression of the Respondent being affiliated with the Complainant.
Finally, the Respondent intentionally chose the Disputed Domain Names in order to generate more traffic to its own websites.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Consolidation of Respondents
The Complainant requests for consolidation because the Disputed Domain Names are registered via the same Registrar, the websites share identical content, the Disputed Domain Names target the same trademark ZANUSSI and the Disputed Domain Names were registered with just a few days apart.
Noting that the Respondent did not comment on the Complainant’s request, the Panel finds the Complainant’s consolidation arguments accurate, and the Panel is persuaded the Disputed Domain Names are under common control, and this consolidation would be fair and equitable to the parties.
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names in this case:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has demonstrated that it has trademarks rights over the term “Zanussi”.
Based on the evidence submitted, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s ZANUSSI trademark. The Complainant’s trademark is clearly recognizable within the Disputed Domain Names.
Furthermore, the Disputed Domain Names contain the Complainant’s ZANUSSI trademark in its entirety. The addition of the terms “eg”, “egyptfix”, “fixat” “fixat75” and “irepair” and the use of hyphens do not alter the assessment of confusing similarity. Moreover, the addition, of the gTLD “.site”, “.win”, “.trade”, “.webiste” do not change this finding, since the TLDs are generally disregarded in such an assessment of confusingly similarity.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:
(i) Before any notice to you of the dispute, your use of, 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the ZANUSSI trademark. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Names by several years.
The Respondent has failed to show that it has acquired any trademark rights with respect of the Disputed Domain Names or that the Disputed Domain Names are use in connection with a bona fide offering of goods and services.
The Disputed Domain Names were used to offer repair and maintenance services of ZANUSSI products, but the websites were not disclosing the Respondent’s relationship with the Complainant, on the contrary the Respondent was using words such as “accredited” or “certified”.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so.
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Complainant has used its trademark long before the Disputed Domain Names were registered.
In light of the use of the Disputed Domain Names (offering repair and maintenance services), the Respondent had evidently knowledge of the Complainant’s trademark when it registered the Disputed Domain Names. The use of the ZANUSSI logo on the websites of the Disputed Domain Names is evidence of this.
The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s trademark when registering the Disputed Domain Names and it has intentionally created likelihood confusion with the Complainant’s trademark in order to attract Internet users for its own commercial gain.
Paragraph 4(b)(iv) of the Policy states: “By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
In the case at hand, in view of the Respondent’s registration of five Disputed Domain Names confusingly similar to the Complainant’s well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Names, and its failure to respond to the Complaint, the Panel finds that the Respondent’s registered the Disputed Domain Names in bad faith.
Due to this pattern of conduct, it is obvious that the Respondent intentionally created likelihood confusion with the Complainant’s trademark and websites in order to attract Internet users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
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, <zanussi-eg.site>, <zanussi-egyptfix.win>, <zanussi-fixat.trade>, <zanussi-fixat75.win> and <zanussi-irepair.website> be transferred to the Complainant.
Pablo A. Palazzi
Date: May 7, 2019