WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Far Kalaye Pars Co.
Case No. DIR2015-0002
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is Far Kalaye Pars Co. of Tehran, Iran (Islamic Republic of).
2. The Domain Name and Registrar
The disputed domain name <zanussi.co.ir> (the “Domain Name”) is registered with IRNIC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2015. The Center sent its request for registrar verification to the Registrar the same day. The Registrar replied on May 19, 2015, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Domain Name was created on September 16, 2010, that the Respondent is the current registrant of the Domain Name, that the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”) applies to the Domain Name, and that the Domain Name would remain locked during this proceeding. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
Hard copies of the Complaint were received by the Center on May 20, 2015.
The Center verified that the Complaint satisfied the formal requirements of the irDRP, the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2015. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 17, 2015. No Response was filed. The Center notified the Respondent’s default on June 18, 2015.
The Center appointed Jonathan Turner as the sole panelist in this matter on June 24, 2015. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the irDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a leading producer of kitchen appliances and cleaning products, with sales in 2014 of SEK 112 billion and some 60,000 employees. In 1984 the Complainant acquired the Italian appliance manufacturer, Zanussi, whose Zanussi brand had been founded in 1916.
The Complainant’s wholly-owned subsidiary Electrolux Italia SpA is the proprietor of various registered trademarks for ZANUSSI, including a registration in Iran dating back to 1962. The Complainant owns a number of domain names containing the name “Zanussi”, including <zanussi.com> and <zanussi.ir>, that are directed to websites of the Complainant’s group promoting its Zanussi products. The branding of the Zanussi range includes an orange and black livery.
The Domain Name was registered on September 16, 2010.
The Respondent has directed the Domain Name to a website at “www.farkap.com” advertising Zanussi products for sale, with the mark ZANUSSI in a large font in the banner, followed by the tag “get living!” The website displays pictures of the Complainant’s group’s Zanussi products.
The Complainant sent cease-and-desist letters to the Respondent on November 27, 2014, December 9, 2014, and January 5, 2015, but did not receive any reply.
5. Parties’ Contentions
The Complainant contends that the Domain Name is effectively identical to its ZANUSSI mark, from which it differs only in the country-code Top-Level Domain (“ccTLD”) “.co.ir”. The Complainant points out that it is well-established that a Top-Level Domain is normally disregarded unless it forms part of the relevant trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant refers to the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, <okidataparts.com> (the “Oki Data decision”) and points out that the Respondent has not complied with the conditions of legitimacy identified therein. The Complainant states that the Respondent is not an authorised dealer of its Zanussi products, that the website contains no disclaimer to that effect and falsely suggests that the Respondent is an authorised dealer.
The Complainant also alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant draws attention to the Respondent’s failure to reply to its cease-and-desist letters. The Complainant submits that the Respondent is intentionally attempting to attract visitors to its website through its use of the Domain Name by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website. The Complainant adds that the Respondent must have known of the Complainant’s prior rights.
The Complainant seeks a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered or is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark ZANUSSI. It is well-established that a parent company can rely for this purpose on rights in a trademark registered in the name of a subsidiary.
The Panel further finds that the Domain Name is effectively identical to this mark, from which it differs only in the ccTLD suffix “.co.ir”. Many Internet users would understand the Domain Name to refer to an operation of or authorized by the Complainant’s group in Iran (Islamic Republic of). The first requirement of the irDRP is satisfied.
B. Rights or Legitimate Interests
Although the position is not clear on the evidence, the Panel will assume in the Respondent’s favour that it is reselling in Iran (Islamic Republic of) products sourced from the Complainant’s group.
As noted in section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), many Uniform Domain Name Dispute Resolution Policy (“UDRP”) Panels have followed the guidance in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the Oki Data decision), as to the circumstances in which a reseller who is using a domain name corresponding to a supplier’s mark may be regarded as making a bona fide offering, and hence as having a legitimate interest in the domain name in accordance with paragraph 4(c)(i) of the UDRP. The Panel considers that this precedent should be followed under the similar provisions of the irDRP.
According to the guidance in the Oki Data decision, the reseller may have a legitimate interest provided that the following conditions are satisfied: it is actually offering the supplier’s products; the website at the domain name is used to sell only those products; the website accurately and prominently discloses the true relationship between the registrant and the supplier, and the respondent does not attempt to register all domain names that reflect the supplier’s mark.
In this case, the Respondent’s website, to which the Domain Name is directed, does not accurately and prominently disclose the Respondent’s relationship with the Complainant. On the contrary, the Panel accepts the Complainant’s undisputed evidence that the Respondent is not an authorized dealer in Zanussi products but that its website is liable to mislead consumers into believing that it is a website of the Complainant or an authorized dealer. In these circumstances, the Respondent cannot be regarded as making a bona fide offering within the meaning of paragraph 4(c)(1) of the irDRP so as to give it a right or legitimate interest in the Domain Name.
Furthermore, it is evident that the Respondent is not commonly known by the Domain Name and that it is not making a legitimate noncommercial or fair use of the Domain Name.
In this Panel’s view there is no other basis on which the Respondent could claim a right or legitimate interest in the Domain Name. The second requirement of the irDRP is satisfied.
C. Registered or Used in Bad Faith
As stated above, the Panel accepts the Complainant’s evidence that the Respondent’s website is liable to mislead customers into believing that it is a website of the Complainant or an authorized distributor. This evidence is well-substantiated by the nature of the Domain Name, the absence of any statement that the Respondent is not an authorized dealer, the prominent ZANUSSI mark in the banner together with the tag “get living!”, the orange and black livery, and the pictures of the Complainant’s group’s products. Furthermore, having regard to all the circumstances, the Panel considers that it was the Respondent’s intention so to mislead customers.
Accordingly, the Panel finds that by using the Domain Name the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website.
Under paragraph 4(b)(iv) of the irDRP this constitutes evidence that the Domain Name was registered and is being used in bad faith. There is no material on the file which would displace this presumption. In all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. The third requirement of the irDRP is satisfied.
The Panel concludes that all three requirements of the irDRP are satisfied. The Domain Name should be transferred to the Complainant.
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 <zanussi.co.ir> be transferred to the Complainant.
Date: July 7, 2015