WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AB Electrolux v. Hany Saad
Case No. D2017-2195
1. The Parties
The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Hany Saad of Cairo, Egypt, self-represented.
2. The Domain Name and Registrar
The disputed domain name <zanussimaintenanceegy.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2017. On November 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2017. Upon the request of the Respondent dated November 29, 2017, the Response due date was extended to December 4, 2017, under paragraph 5(b) of the Rules. The Response was filed with the Center on November 29, 2017.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 12, 2017. 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 and one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products. In 2016, Electrolux had sales of SEK 121 billion and about 55,000 employees. The Zanussi brand was founded in 1916 and stands for Italian innovation with flair, and its yellow-black color combination and distinctive logo have made it recognizable throughout Europe and neighboring countries for many decades. In 1984, the Complainant acquired the Italian appliance manufacturer Zanussi making the Complainant the leader in household appliances for consumers and professionals. Zanussi is one of the Complainant’s strategic brands and has devoted substantial resources to advertising and promoting its ZANUSSI trademark. It is a market leader in white goods and floor care products in Europe and the Middle East is one of the growth markets for the Complainant, as such, it has experienced an increase in third-party domain name registrations in this region the last year.
The Complainant hold previous rights on the ZANUSSI sign as notably through its wholly owned subsidiary Electrolux Italia S.p.A.:
- ZANUSSI Egyptian trademark registration, No. 258519, registered on September 24, 2013; and
- ZANUSSI International Trademark registration, No. 1201466, registered on March 6, 2014, registered among others in Egypt (collectively, the “Trademarks”).
The Complainant also owns and maintains the following domain names which resolve to a website used by the Complainant to inform its potential customers about its ZANUSSI Trademarks and its products and services:
- <zanussi.com>, registered on November 17, 1995; and
- <zanussi.com.eg>, registered on December 16, 2002.
The Domain Name was registered on May 17, 2016. It resolves to a website that reproduces the Complainant’s Trademarks and logo, offers to Internet consumers repair and maintenance services for Zanussi products.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s ZANUSSI Trademarks;
(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 and is being used in bad faith.
The Complainant argues that the Domain Name incorporates directly the Complainant’s well-known registered ZANUSSI Trademarks with an adjunction of the descriptive word “maintenance” and the geographic indicator “egy” (indicating Egypt). The Complainant reminds the Panel that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 indicates that the addition of descriptive or geographic terms does not prevent a finding of confusing similarity under the first element. Furthermore, section 1.11 of the WIPO Overview 3.0 explains that the addition of the generic Top-Level Domain (“gTLD”) such as “.com” does not add any distinctiveness to the Domain Name, underlined also by the panel’s decision in International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO Case No. D2014-0581.
The Complainant further argues that the Respondent is not commonly known by the Domain Name and has not been authorized by the Complainant to use its ZANUSSI Trademarks. Thus, the Complainant indicates that the Respondent acts with the intention of taking advantage of the Complainant’s ZANUSSI Trademarks’ internet traffic. Indeed, it argues that the Respondent acts in such way in order to attract Internet users to offer repair and maintenance services for Zanussi products. To that extent, the Complainant clarifies that it has an agreement with all authorized partners and it is even forbidden for them to register any domain name with the “ZANUSSI” Trademarks in it. Moreover, the Complainant reveals that the Respondent incorporates the ZANUSSI Trademarks and logo on its website and refers to the Trademarks frequently which suggests an official or authorized relationship with the Complainant, creating a misleading and a likelihood of confusion between the Domain Name and the Complainant’s Trademarks.
The Complainant refers to Oki Data Americas, Inc. ASD, Inc., WIPO Case No. D2001-0903 and states that the Respondent cannot rely on its exception as it fails to meet all the “Oki Data” criteria. Therefore, the Respondent has been granted an opportunity to present some compelling arguments that it has rights in the Domain Name but failed to do so. The Complainant argues that the use of the Domain Name cannot be considered as legitimate use of the Domain Name.
The Complainant further argues that the Domain Name is registered in bad faith by the Respondent as the Complainant’s trademark registrations predate the registration of the Domain Name and therefore it seems unlikely that the Respondent was not aware of the existence of the Complainant’s Trademarks and the unlawfulness of the registration of the Domain Name. Moreover, the failure of the Respondent to respond to any communication attempts made by the Complainant should also be considered as an indication of bad faith.
The Complainant further argues that the Domain Name is used in bad faith. First of all, the Complainant argues that a respondent’s failure to respond to a cease and desist letter has been considered relevant in a finding of bad faith (AB Electrolux v. Yasser Merdash, WIPO Case No. D2016-1352; News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
Furthermore, the Complainant relies on the following cases (AB Electrolux v. Ferhat TUNALI, FBS, WIPO Case No. D2010-1791; AB Electrolux v. Begad Negad of Cairo, Egypt, WIPO Case No. D2014-2092; Aktiebolaget Electrolux v. electroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon, WIPO Case No. D2014-0487; Philip Moris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946) to argue that the behavior of the Respondent is likely to cause confusion amongst Internet users.
The Respondent did not submit a substantive Response. In its Response, the Respondent solely states: “We have been mistakenly booking the domain name and there were no bad intentions and we did not work through this site or receive any of the maintenance cases and we do not have any financial support or financial resources to pay”.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has submitted evidence of its prior rights on the ZANUSSI sign in the form of registered Trademarks.
The Domain Name <zanussimaintenanceegy.com> consists of the Complainant’s ZANUSSI Trademarks, together with the descriptive term “maintenance” and the geographic indication “egy” for Egypt. This is sufficient to find confusing similarity in the sense of the Policy. See, Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075; M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384; and ERGO Versicherungsgruppe AG v. Idealist, WIPO Case No. D2008-0377. It is well established that the applicable gTLD in a domain name such as “.com” is viewed as a standard registration requirement and, as such, is typically disregarded under the confusing similarity test. See, RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540 and Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Based on the evidence provided by the Complainant, decisions of prior UDRP panels cited above, and the Panel's own analysis, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy has been met.
Consequently, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent comes forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Respondent is not affiliated or connected to the Complainant in any way nor has it been authorized and licensed by the Complainant to register and use the Domain Name which incorporates the Trademarks. It does not appear to have any independent right to the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name. The Domain Name refers to a website registered in order to offer repair and maintenance services for ZANUSSI products.
The Panel finds that the Complainant has made out a prima facie case. The Respondent has not filed a substantive response, thus, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel also holds that in the present case, the Respondent cannot rely on the so-called Oki Data” test, given that the Domain Name is being used to point to a website that displays information in relation with the Complainant, in which it reproduces the logo of the Complainant’s trademark and for which it has not been given any authorization by the Complainant. This, together with absence of any disclaimer clarifying the nature of the relationship (or lack thereof) with the Complainant, creates a misleading impression of association between the Domain Name, the Complainant, and its Trademarks. The Respondent cannot be said to be making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the Policy either.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Pursuant to the Policy (paragraph 4(a)(iii)), the Complainant must show that the Respondent registered and is using the Domain Name in bad faith.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the ZANUSSI Trademarks at the time the Respondent registered the Domain Name. The Complainant has submitted evidence, which shows that the Respondent registered the Domain Name long after the Complainant registered its Trademarks. According to the evidence filed by the Complainant, the Complainant has owned a registration for the ZANUSSI Trademark since at least the year 2013. It is suggestive of the Respondent’s bad faith in these particular circumstances that the ZANUSSI Trademarks, owned by the Complainant, were registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). The WIPO Overview 3.0, section 3.2.2 states the following:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.
The ZANUSSI sign does not have any signification in English or in French and is distinctive, thus, it refers directly and only to the Complainant’s Trademarks. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that combines a reproduction of the Trademarks in its entirety and the adjunction of a descriptive word as well as a geographic indication unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant’s ZANUSSI Trademarks.
The Domain Name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, it is reasonable to infer that the Respondent’s intention in registering the Domain Name was to put it to the specific purpose for which it has subsequently been used, namely to promote his capability and willingness to service and maintain the products of the Complainant in the form which has been adopted in its website. As set out above, the manner in which the Respondent has done so is likely to cause confusion to Internet users. The lack of a disclaimer and of any relationship with the Complainant, the adoption of the Complainant’s stylized ZANUSSI Trademark coupled with the adoption of the black and yellow format used by the Complainant on its website and the multiple references in the text on the home page to the Respondent having some form of “official” status, all contribute to the inaccurate impression that the Respondent is the Complainant or is officially authorized by the Complainant.
Ultimately, the evidence reveals that the Respondent has taken advantage of the Complainant’s ZANUSSI Trademarks to intentionally attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement of the Respondent’s websites. As held in recent UDRP decisions, involving similar circumstances namely Aktiebolaget Electrolux v. Muneer Mohamed of Cairo, WIPO Case No. D2015-0874 and Aktiebolaget Electrolux v. eletroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon, supra, such conduct of deliberately misleading and diverting Internet users is undoubtedly evidence of bad faith registration and continued bad faith use.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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, <zanussimaintenanceegy.com> be transferred to the Complainant.
Date: December 26, 2017