WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. “usa” and Ahmed Ismail
Case No. D2013-0829
1. The Parties
Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is “usa” and Ahmed Ismail of Fayou, Egypt.
2. The Domain Name and Registrar
The disputed domain name <zanussi-egypt.com> 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 May 13, 2013. On May 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2013, the Registrar transmitted by email to the Center its verification response, disclosing registrant information for the disputed domain name, which differed from the named Respondent, however the Registrar confirmed that the contact information in the Complaint was correct.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2013. Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on June 6, 2013.
The Center appointed Nasser Ali Khasawneh as sole panelist in this matter on June 24, 2013. 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 has registered ZANUSSI as a word mark for appliances and equipment for kitchen, cleaning and outdoor products in several classes all over the world, including for example Community Trademark Registration No. 000492447 registered February 8, 1999.
The disputed domain name was registered on June 9, 2012.1 The disputed domain name presently resolves to a webpage stating in Arabic and English that the domain name is for sale. At the time the Complaint was filed, however, it routed to an Arabic language website promoting appliance repair services. 2 The listed brands serviced are not limited to Complainant’s ZANUSSI brand, and include brands of several of Complainant’s competitors.
5. Parties’ Contentions
A. Complainant
Complainant avers that AB Electrolux is a Swedish company founded in 1901 and that Complainant is a leading producer of appliances and equipment for kitchens, cleaning, and outdoor use.
Complainant alleges that its ZANUSSI marks are well known and have been registered in over 150 countries as word and figure marks in several classes.3 Complainant also alleges that in has registered the ZANUSSI mark in domain names under more than 200 gTLDs and ccTLDs worldwide, including <zanussi.co.uk> and <zanussi.com>.
Under the Policy, Complainant alleges that the disputed domain name is confusingly similar to Complainant’s marks. Complainant contends that the addition of the suffix “egypt” to the ZANUSSI mark is not relevant and has no impact on the overall impression of the dominant part of the name, ZANUSSI.
Complainant contends that Respondent registered the disputed domain name after registrations for the ZANUSSI marks were completed. Complainant avers that Respondent has no connection with Complainant, and that Complainant has not licensed or otherwise authorized Respondent to use the trademark. Further, Complainant avers that Respondent is not an authorized dealer or service provider for its products.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent’s use of the disputed domain name cannot create a legitimate interest or be considered as bona fide, citing, among other cases, Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488; and Citigroup Inc.,Citicorp and Citibank, N.A. v. Ghinwa and Gaiia and Faouzi Kh etc., WIPO Case No. D2003-0494.
Contending that Respondent registered and is using the disputed domain name in bad faith, Complainant notes that its mark has the status of a well-known trademark, and that, because Respondent’s website offers services and products under Complainant’s trademark, the value and goodwill associated with the mark could not have been unknown to Respondent. In short, Complainant avers that the domain name registrations were made with the intention of trading on the value of Complainant’s mark, as also demonstrated by screen shots of Respondent’s website which has an overall appearance similar to the legitimate websites of Complainant.
Complainant avers that it sent Respondent a cease and desist letter on April 1, 2013, requesting that the disputed domain name be transferred. Complainant also avers that it sent a later reminder by email to Respondent and received no responses.4
On the basis of the above, Complainant concludes that Respondent must be considered to have registered and be using the disputed domain name in bad faith. Complainant seeks transfer of the disputed domain name.
B. Respondent
Respondent did not formally reply to Complainant’s contentions. However, following the Center’s notification of respondent default, the Center received from the email address of Ahmed Ismail, the administrative contact listed in the WhoIs record, several email messages.
Since the messages emanated from the email address for the administrative contact, and the communications used the first person and indicated contextually that the contact was the interested party, the Panel has determined for purposes of this proceeding that the listed domain name holder “usa” and the administrative contact Ahmed Ismail are one and the same. 5
Respondent’s June 6, 2013 communication stated:
“i want know what is the problem of this domain ? this a website for local services as maintaince and fixing .. not a website for sale Zanussi products !! if there is confusion pls contact me”
The Center acknowledged receipt of this email and directed Respondent’s attention to the Policy and notification sent to Respondent and the administrative contact. On June 7, 2013, Respondent sent the Center another email:
“i want know what is the problem of this domain ? this a website for local services as maintaince and fixing .. not a website for sale Zanussi products !! if there is confusion pls contact me”
In three further emails on June 10, 2013, Respondent wrote:
“Dear Sir . About uniform of domain is not related to original zanussi company the domain is “www.zanussi-egypt.com” there is a dash (-) between zanussi and Egypt Also Egypt in end as the services in the website introduced in Egypt only. As u see it is too far that is uniform domain simply uniform domains always doesnot have dashes in uniform of domain. it is local domain for small bussiness for maintaince productes. it a home service provided in website .. i will not transfer domain
Simply it is my domain not complaintant domain. and i am not selling any branded productes through it .”
“dear , Sir i dont know what is the copmlain exactly and i am not transfereing the domain to any one the only possible way that i can sell the domain so as to solve the problem. pls provide me accurate steps to keep my right Also i am so affcted now because of the domain
Ahmed”
“Dear, Sir Hope u r nice today. About domain www.zanussi-egypt.com
We can settle the dispute through you so that I will sell the disputed domain reasonable amount. And we can start implementing the agreement as soon as possible. And also to protect the complainant's rights, he must accelerate to settle the dispute through you now better than that there will be a competent court or conflict that extends a long-term path. I proposed sale of domain through our mediation in this problem
Ahmed”
6. Discussion and Findings
The Panel is required to render its Decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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.
Complainant must establish these elements even if Respondent does not submit a formal Response. E.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a formal response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Although the disputed domain name is not identical to Complainant’s trademark, the Panel agrees with Complainant that the disputed domain name is confusingly similar to Complainant’s trademark.
UDRP panels usually disregard the GTLD domain name suffix in evaluating confusing similarity. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315. Removing the domain name suffix, the remaining term “zanussi-egypt” is made up of the simple combination of Complainant’s ZANUSSI trademark and the shortened English form for the official country name “Arab Republic of Egypt.”
Many UDRP cases have considered the effect of linking a trademark with a geographical name to create a domain name. The common conclusion is that the addition of a geographical name does not by itself distinguish the domain name from the trademark. See, e.g., Koninklijke Philips Electronics NV v. P.K. Gopan, WIPO Case No. D2001-0171 (geographical name “adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of [the complainant] as utilized in [that location]”).
Consistent with previous UDRP decisions, the Panel agrees that the addition of the English country name for Egypt to Complainant’s trademark does not alter the confusion with Complainant’s marks that Internet users would experience.
The disputed domain name is confusingly similar to Complainant’s trademark, therefore the Panel concludes that the requirements of Policy paragraph 4(a)(i) are established.
B. Rights or Legitimate Interests
The Panel also concludes that the second element of paragraph 4(a) of the Policy is fulfilled.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods and services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must establish a record showing a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if a prima facie case is established and Respondent does not rebut that prima facie case.
First, the Panel accepts as true Complainant’s uncontroverted allegations that Respondent has no authorization or license to use Complainant’s trademark.
Moreover, there is no indication on the record that Respondent is commonly known by the disputed domain name, that Respondent has a legitimate noncommercial interest, or that Respondent is making fair use of the disputed domain name. The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
While there may have been an offering of services, Complainant’s uncontroverted allegation is that Respondent is not an authorized dealer and has no permission to make a services offering under the trademark. This Panel further notes that the Respondent is offering Complainant’s products and of competitors and that there is no disclaimer on the website to disclose the relationship between Respondent and Complainant. Therefore the Panel also finds there is no bona fide offering of goods or services by Respondent.
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including failure to respond to a Complaint and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Both bad faith registration and bad faith use must be established under the third element of paragraph 4(a) of the Policy.
The record shows that Respondent registered the disputed domain name many years after Complainant perfected its trademark rights in many countries. The content of Respondent’s website, employing the trademark and purporting to provide services connected to Complainant’s trademarked goods, demonstrates Respondent’s prior awareness of Complainant’s trademark. The Panel therefore infers that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Registration in bad faith is therefore established under the Policy.
Since the disputed domain name is used to promote Respondent’s services supporting third-party products in the same field as Complainant, the disputed domain name is being used for direct competition with Complainant. This is frequently deemed to be evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088).
Under the circumstances, Respondent’s failure to answer Complainant’s cease and desist letters may be further evidence of bad faith. E.g., 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 (citing Encyclopaedia Britannica v. Zucarini, WIPO Case No. D2000-0330); America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460; Telstra Corporation Limited v. Nuclear Marshmallows, supra.
The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
7. Decision
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-egypt.com> be transferred to Complainant.
Nasser Ali Khasawneh
Sole Panelist
Date: July 8, 2013
1 Although attaching a copy of the WhoIs record, the Complaint erroneously states that the disputed domain name was registered on June 12, 2012. This is one of many errors and omissions in the Complaint, the majority of which are not discussed in this decision since they are not germane to the outcome of this proceeding.
2 The Panel has undertaken limited research by visiting the website on line, in addition to viewing historical screen captures at “www.archive.org”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, second edition, paragraph 4.5. The appearance of the website in the archives is consistent with the exhibits submitted by Complainant.
3 The Complaint largely omits to provide evidence in support of its allegations, for example, providing only listings of the vast majority of marks, without registration numbers, certificates or any other particulars. The one exception is the provision in Annex 6 of certified copies of its certificates of Community Trademark registration. The allegations respecting the trademark’s well-known status are also made without submitting evidentiary support; consequently, the Panel refrains from making a finding on whether the ZANUSSI trademark is well-known.
4 Copies of the communications are annexed to the Complaint.
5 All communications by the administrative contact are reproduced verbatim, along with typographical errors.