The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Abo Hamza of Alexanderia, Egypt.
The disputed domain names <idealzanussi-eg.net> and <zanussi-eg.com> are registered with Name.com LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 19, 2016. On January 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 January 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 16, 2016.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on February 23, 2016. 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.
On February 29, 2016 the Complainant requested that the Panel suspend proceedings in order that it might explore settlement options with the Respondent. Pursuant to the Panel's instructions the Center on March 1, 2016 suspended proceedings until March 23, 2016 so that the Parties could enter into settlement discussions. The Complainant signed a Standard Settlement Form on March 1, 2016 and the Respondent was invited to countersign said form but did not do so. On March 22, 2016 the Complainant wrote the Center: "Absent a response from the Respondent, we kindly ask you to re-institute the proceedings." There was no response or counter signature from the Respondent and on March 31, 2016 the Center informed the Panel that the proceedings were reinstituted.
The Complainant is a long-established Sweden-based large multinational corporation and a major producer and marketer of household appliances and other products. "Zanussi" is one of the Complainant's brands. The Complaint and its Annexes reveal that the Complainant, or its wholly-owned subsidiary Electrolux Italia S.p.A., hold several trademarks for the term "zanussi" some of which are valid in Egypt where the Respondent resides. International trademark registration No. 1201466 (Egypt designated) (registered in 2014). The Complaint and its Annexes further reveal that the Complainant has registered a number of domain names containing the term "zanussi", including<zanussi.com> (created in 2005) and <zanusssi.com.eg> (created in 2002), and that these domain names are used in connection with the promotion of the ZANUSSI mark and its products and services.
The disputed domain names were both registered on July 28, 2015. The disputed domain names resolve to an online shop offering repair services. Both websites are in the Arabic language.
The Respondent appears to be an individual resident in Egypt.
The Complainant maintains that the disputed domain names contain the entirety of the trademark ZANUSSI and are confusingly similar to it. The Complainant further asserts that the Respondent has not been granted any rights in that trademark or any permission to register and use the disputed domain names, and that such use wrongly suggests that there is some official or authorized link between the Respondent's activities and site and the Complainant. To this the Complainant adds that the apparent activities of the Respondent - the offering of repair and servicing on Zanussi products - is not itself objectionable, but that the manner in which it is done impermissibly suggests a connection with the Complainant, and does not fall within the definition of bona fide offerings of goods and services within the meaning of paragraph 4(c) of the Policy, as delineated in, notably, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Complainant furthermore asserts that the timing, use and content of the disputed domain names makes it clear that they were both registered and used in a bad faith attempt to trade on the Complainant's registered trademarks and reputation.
The facts and allegations are further discussed in Section 6, below
The Respondent did not reply to the Complainant's contentions.
The disputed domain names both contain the entirety of the Complainant's registered ZANUSSI trademark followed by a hyphen and the letters "eg". The suffix "eg" is a geographical reference to Egypt, where the Respondent is located; this obviously does not diminish the similarity or possible confusion with the Complainant's trademarks and may add to such confusion by suggesting that the Respondent is some genre of Egyptian outlet or branch for the Complainant. One of the disputed domain names also contains the prefix "ideal" before the recitation of ZANUSSI, the addition of this generic word before the Complainant's trademark does not, in the Panel's view substantially diminish the confusing similarity of the disputed domain name with the Complainant's trademark.
The first element of paragraph 4(a) of the Policy is accordingly proven.
As noted above the Complainant does not object to the Respondent offering repairs and services for ZANUSSI products, but asserts that the Respondent does not have the right to do so by means of domain names that suggest that the Respondent is part of or affiliated with the Complainant, and that this is evidenced by the lack of a disclaimer and a website presentation that presents the Respondent as an official part of the Complainant's organization.
The Complainant further states that its licensees and distributors are not entitled to register domain names incorporating the Complainant's trademark and that, to the extent (which is not clear) that the Respondent has any contractual rights it would be subject to that limitation. Finally, the Complainant adds the Respondent has been given several opportunities to establish that it has rights in the disputed domain names, but has failed to do so.
It is well-established that a complainant needs to establish at least a prima facie case showing that the respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See also, Meizu Technology Co., Ltd. v. "osama bin laden", WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz AB v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
In the present case the Complainant has sufficiently asserted that it has never given permission to the Respondent to use its trademarks in the disputed domain names and that it has no knowledge or belief of any rights of legitimate interests of the Respondent in the disputed domain names. Furthermore there is no evidence in the file of this case that would suggest that the Respondent is known by either disputed domain name or has rights and legitimate interests in the disputed domain names.
The Respondent having failed to answer the Complaint, the Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy
The disputed domain names were both registered on July 28, 2015, given that date, how well known the ZANUSSI trademark has been shown to be in the appliance industry, and the other circumstances of this case it is very likely that both disputed domain names were registered with knowledge of the Complainant's trademarks and rights.
The evidence and circumstances of this case also clearly indicate that the Respondent has intentionally been making use of the ZANUSSI trademark to seek to attract visitors to the Respondent's websites for commercial gain by creating a likelihood of confusion with the Complainant's trademark - such conduct is considered bad faith under the Policy and many UDRP WIPO decisions. The Complainant cites a number of UDRP WIPO decisions in support including Ab Electrolux v. Wael Aly, WIPO Case No. D2015- 0664 an analogous matter concerning the disputed domain name <idealzanussi-eg.com>, and which concluded that the respondent's failure to provide a disclaimer and misrepresentation of its relationship with the Complainant, lead to the conclusion that there was no bona fide offering of services with the meaning of the Policy and that a finding of bad faith was appropriate. A similar conclusion and finding applies here.
The Respondent's failure to answer a cease and desist letter sent by the Complainant is further indicia of bad faith.
The Panel thus concludes that the Respondent both registered and used the disputed domain names in bad faith within the meaning of 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 disputed domain names <idealzanussi-eg.net> and <zanussi-eg.com> be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: April 6, 2016