WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Domain Admin, Whois Privacy Corp.
Case No. D2020-0737
1. The Parties
Complainant is AB Electrolux, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <zanussi-remont.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2020, 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 April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 13, 2020.
The Center appointed Anne Gundelfinger as the sole panelist in this matter on May 19, 2020. 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.
While the language of Respondent’s website under the disputed domain name is Russian, Complainant requests that the proceedings be conducted in English. Respondent has filed no response, and accordingly the Panel agrees that the proceedings should be conducted in English, given that the registration agreement is in English and therefore English is the default language of the proceedings. See, paragraph 11 of the Rules.
4. Factual Background
Complainant AB Electrolux is a Swedish joint stock company founded in 1901 and is one of the world’s leading producers of home appliances and related products. The ZANUSSI brand was founded in Italy in 1916. In 1984, Complainant acquired the Italian appliance manufacturer Zanussi.
As further detailed in the Complaint and its Annexes, Complainant owns rights in the ZANUSSI trademark through its wholly owned subsidiary Electrolux Italia S.p.A. Among its registrations for marks made up in whole or in part of ZANUSSI are International Registrations 404462 (registered on November 9, 1973), 474019 (registered on August 27, 1982), 950678 (registered on September 3, 2007), and 1201466 (registered on March 6, 2014), all designating the European Union, Russian Federation, and many other major markets around the world. In addition, 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”, including <zanussi.com> (created on November 17, 2005) and <zanussi.ru> (created on July 2, 1998). Complainant uses these domain names to inform potential customers about its ZANUSSI branded products and services.
Respondent registered the disputed domain name <zanussi-remont.com> on October 31, 2019. The disputed domain name resolves to a website that displays the ZANUSSI Mark (the “Mark”) and appears to be an active business offering installation and repair services, as well as spare parts, for ZANUSSI appliances. The word “remont” is the Latin character transliteration of the Russian word “ремонт” which translates to “repair” in English.
The Panel notes that the website found at the disputed domain name is entirely in Russian. Following the practice of other panels, the Panel has used Google Translate to translate substantial portions of the website to English in order to evaluate the evidence. See, e.g., Koninklijke Douwe Egberts B.V. v. Big Kot, WIPO Case No. D2019-1752; Philip Morris Products S.A. v. Tarik Sucu, GPM, WIPO Case No. DPW2019-0004.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to its long-used, well-established, and well-known ZANUSSI Mark because the disputed domain name wholly incorporates the Mark along with the dictionary term “remont” or “repair” in English.
Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. Specifically, Complainant asserts that (a) Complainant’s Mark is well known globally and in Russian Federation, (b) Complainant has given no permission or license for use of the disputed domain name, nor is Respondent known by the disputed domain name, (c) by registering the disputed domain name, Respondent has precluded Complainant from doing so, (d) Respondent’s use of the disputed domain name to offer unauthorized maintenance and repair services for Zanussi products on a ZANUSSI-branded website is not a bona fide offering of goods and services, (e) Respondent’s use of the disputed domain name and the ZANUSSI Mark creates a likelihood of confusion as to the source or sponsorship of Respondent’s website, and (f) when registering the disputed domain name Respondent cloaked its true identity by use of a domain name privacy service, and (g) when Complainant sent a cease and desist letter to Respondent, as well as a follow-up letter, it received no response.
It is also worth capturing in detail Complainant’s specific arguments regarding the nature of Respondent’s business and its use of Complainant’s Mark in the disputed domain name and on Respondent’s website:
“Respondent is using the Domain Names [sic] to attract internet users to their websites [sic] where they offer repair and maintenance services for Zanussi products. A common misunderstanding with authorized or non-authorized repair centers is that they are also of the impression that they can freely register domain names incorporating the trademark names of the products they are offering services on. The Complainant has an agreement with all its authorized partners where it is stated that this is strictly forbidden. The agreements that are signed between Complainant and its licensee’s / distributors clearly stipulates that they are not entitled to register domain names incorporating Complainant’s trademark. […] Such an agreement would have been in place with the Respondent too if they were a licensee or distributor, in which case the registration and use of the disputed Domain Name would constitute a breach of said agreement. The incorporation of the trademarks in the Domain Name and the Respondent’s layout, including the ZANUSSI logos appearing prominently and frequently throughout the website in connection with Complainant’s products, strongly suggests that there is a connection to the Complainant and that here is some official or authorized relationship with the Complainant for the purposes of repairs and services within Russia. Finally, no disclaimer can be found on any page of the website where information is given about the company and its services....”
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant prove the following three elements in order to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name wholly incorporates Complainant’s ZANUSSI Mark along with the term “remont”, which means “repair” in English. Prior UDRP panels have consistently held that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark does not prevent a finding of confusing similarity between a domain name and that mark. See, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287. Similarly, the addition of the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test.
Accordingly, the Panel finds that the disputed domain name is confusing similar to Complainant’s Mark, and that the first element of the test is satisfied.
B. Rights or Legitimate Interests & Registered and Used in Bad Faith
The Panel addresses together the questions of Respondent’s rights or legitimate interests and Respondent’s registration and use in bad faith, as the two analyses are closely intertwined in this case.
In a nutshell, this case involves a respondent offering repair services and spare parts for Complainant’s products on a website with the disputed domain name <zanussi-remont.com> and displaying Complainant’s ZANUSSI Mark. Accordingly, this case raises the issue of fair use by resellers and repair providers and is governed by the principles laid out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001–0903. In Oki Data, the Panel held that an authorized Oki Data repair facility’s use of the domain name <okidataparts.com> was a bona fide offering of goods under the domain name, and therefore established respondent’s legitimate interest in the domain name and precluded a finding of bad faith. The Oki Data panel so held because the respondent in that case met certain minimum requirements, which are summarized in section 2.8 of the WIPO Overview 3.0 as follows:
(i) respondent must actually be offering the goods or services at issue;
(ii) respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) respondent must not try to “corner the market” in domain names that reflect the trademark.
Applying these principles to the case at hand, Respondent’s use appears to satisfy the first, second, and fourth requirements. It appears that Respondent is in fact offering legitimate repair services and spare parts, and is offering them only in connection with ZANUSSI products. At least, Complainant has offered no evidence to the contrary. Moreover, Complainant has submitted no evidence that Respondent has tried to corner the market in domain names that include the Mark at issue or has otherwise engaged in a pattern of abusive conduct.
However, it appears that Respondent’s conduct does not satisfy the third requirement, that the website under the disputed domain name must accurately and prominently disclose the registrant’s relationship with the trademark holder. Of particular concern, Respondent uses the ZANUSSI Mark prominently on every page of the site in the upper left corner along with the designation “ОФИЦИАЛЬНЫЙ СЕРВИСНЫЙ ЦЕНТР”, or in English “Official Service Center.” Moreover, Respondent does not use any corporate identity of its own, instead simply referring to itself as “Zanussi.Remont.com” or “Zanussi service center.” Finally, there is no disclaimer or other clarification of the relationship - or lack of relationship - with Complainant. All of this taken together results in a website that is potentially confusing as to the source or sponsorship of the website and Respondent’s services. In particular, the use of the designation “Official Service Center” would seem to be affirmatively misleading, and simply untrue, given the apparent lack of relationship between Complainant and Respondent.
Moreover, the Panel is troubled by (a) Respondent’s use of a privacy service to cloak its identity, and (b) the lack of response from Respondent to Complainant’s cease and desist letters and to the Complaint in this case. While in no way conclusive on the question of bad faith, these facts may support an inference of bad faith, and are certainly not the hallmarks of a Respondent acting in good faith. See, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623 (lack of response considered as a relevant factor in the analysis of bad faith); Section 3.6 of the WIPO Overview 3.0 and cases cited therein (use of a privacy service may support an inference of bad faith).
That said, the Panel has concerns about Complainant’s arguments and evidence in this case. At the outset, the Panel is not persuaded by Complainant’s somewhat circular and flatly incorrect argument that Respondent’s lack of an authorized distributor agreement means that Respondent’s use of the disputed domain name is necessarily illegitimate and in bad faith. Oki Data and its progeny clearly hold otherwise. See, section 2.8 of the WIPO Overview 3.0 and cases cited therein. The Panel notes that Complainant has not raised the argument that Respondent is using the misleading designation “Official Service Center” at the website – the Panel wonders why? Is this an oversight, or is there some history of relationship between Complainant and Respondent than has not been revealed? And indeed, there are at least a couple of factors that suggest that Respondent may in fact be attempting to operate in good faith, such as Respondent’s apparently well-established and substantial service business (The Panel also notes that the website at the disputed domain name refers to multiple service centers in a number of major metro areas in the Russian Federation, and notes the prominent acknowledgement of Complainant’s trademark rights in the ZANUSSI Mark and logos in a persistent legend at the bottom of every page of the website (which legend Complainant omitted from the screenshots of Respondent’s website that it submitted as evidence).
However, the Panel must evaluate the evidence before it and rule on the basis of that evidence. In the absence of any evidence from Respondent, the Panel concludes that the extensive use of the ZANUSSI Mark and the designation “Official Service Center” on Respondent’s website is misleading and is likely to cause confusion as to source or sponsorship of the website and the services offered thereon. In addition, the disputed domain name itself carries a high risk of implied affiliation. See, WIPO Overview 3.0, section 2.5.1. This combined with Respondent’s lack of clarity regarding its relationship with Complainant all points to a finding that Respondent does not have a legitimate interest in the use of the disputed domain name and has acted in bad faith. Respondent’s lack of response to Complainant’s demands and to this proceeding, as well as its use of a privacy service, further support this finding.
Accordingly, while the Panel has concerns with some of Complainant’s arguments and evidence, the Panel nevertheless rules based on its own review of Respondent’s website that the second and third elements of the test are satisfied. Specifically, a prima facie showing has been made that Respondent lacks any rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and has been used 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 name <zanussi-remont.com> be transferred to Complainant.
Date: June 2, 2020