WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk

Case No. D2013-1224

1. The Parties<

The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.

The Respondent is Maksim, SPD CHervinchuk of Kiev, Ukraine.

The disputed domain name <zanussi-ua.net> is registered with OnlineNIC, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2013.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on August 28, 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

The Complainant, AB Electrolux, is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. AB Electrolux is a world-leading producer of appliances and equipment for kitchen and cleaning. AB Electrolux is also one of the largest producers in the world of similar equipment for professional users.

AB Electrolux is also a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year. AB Electrolux products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed brands such as ELECTROLUX, AEG, ZANUSSI, EUREKA and FRIGIDAIRE. In 2010, Electrolux had sales of SEK 109 billion and 55,150 employees.

The trademark ZANUSSI has acquired the status of a well-known trademark within the areas for appliances and equipment for kitchen, cleaning and outdoor products due to extensive and long-term use in relation to products and services of the Complainant. As a result, the trademarks and the products and services designated by this trademark are connected with good reputation and international recognition.

The Complainant has registered the trademark ZANUSSI as word and figure marks in several classes in more than 150 countries around the world, including in the European Union and in Ukraine, where the Respondent is located. The trademark ZANUSSI was registered long before the registration of the disputed domain name. The Complainant has also registered the trademark ZANUSSI as domain names under more than 200 generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs) worldwide, among these, <zanussi.com>, <zanussi.co.uk> and <zanussi.ua>.

The disputed domain name <zanussi-ua.net> was created on April 9, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights:

- The dominant part of the disputed domain name <zanussi-ua.net> comprises the word “zanussi”, which is identical to the registered trademark ZANUSSI, which has been registered by the Complainant as a trademark in countries around the world and is represented in various domain names.

- The disputed domain name is confusingly similar to the trademark ZANUSSI. The ZANUSSI brand was founded in 1916 and its yellow-black color combination and distinctive logo have made it recognizable throughout Europe and other countries for many decades. The addition of the suffix “ua” to the disputed domain name in combination with a hyphen is not relevant and will not have any impact on the overall impression of the dominant part of the name, “Zanussi”. Considering that the Complainant is very active on the Ukrainian market, the suffix “ua”, which is also the ccTLD for Ukraine, strengthens the impression that the disputed domain name is in some way connected to the Complainant.

- The addition of the gTLD “.net” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity of the trademark.

- Anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the trademark ZANUSSI there is a considerable risk that the public will perceive the disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. By using the trademark ZANUSSI as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademarks.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Complainant has not found that the Respondent has registered trademarks or trade names corresponding to the disputed domain name. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademarks.

- The Respondent registered the disputed domain name on April 9, 2012. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. This registration date is several decades after the worldwide trademark registrations of the mark ZANUSSI.

- The Complainant has also not found anything that would suggest that the Respondent has been using ZANUSSI in any other way that would give him any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage.

- The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website which connects to a website appearing to be an official service center for ZANUSSI products endorsed or sponsored by the Complainant. In addition, there are many circumstances indicating that the website is used in connection with counterfeit activities. By doing this, the Respondent is misleading Internet users and consequently the Respondent is tarnishing the trademark ZANUSSI.

- Further, the Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. It is important to point out that in the current case, the Respondent is not an authorized reseller. Further, the Respondent does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant and does therefore convey the false impression that the Respondent is an authorized service center for the Complainant’s products. Had the Respondent been an authorized licensee or reseller, such documents would have been easy to obtain as proof of use when sending the cease and desist letter. There is also no visible disclaimer that the website is not endorsed or sponsored by the Complainant to explain the non-existing relationship with the trademark holder.

- In addition to above, when entering the homepage related to the disputed domain name, the Complainant’s trademark protected logotype for ZANUSSI is displayed on the website, and by doing this, the Respondent is using the ZANUSSI logotype to further mislead Internet users and is tarnishing the trademark ZANUSSI. The fact that the ZANUSSI logotype is displayed on the website related to the disputed domain name has earlier been stated by Panels to not be a bona fide use.

(c) The disputed domain name was registered and is being used in bad faith:

- The trademark ZANUSSI belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. The awareness of the trademark is to be considered to be significant and substantial. The considerable value and goodwill of the trademark ZANUSSI is most likely to be the reason why the Respondent registered the disputed domain name.

- The Complainant first tried to contact the Respondent on May 24, 2013 through a cease and desist letter, sent by email. The Complainant advised the Respondent that the unauthorized use of the ZANUSSI trademark within the disputed domain name violated the Complainant’s rights in said trademarks. The Complainant requested a voluntary transfer of the disputed domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out-of-pocket expenses). Despite a reminder sent, no reply was received. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP. Failure of a respondent to reply to a cease and desist letter, or similar attempt at contact, has been considered relevant in finding of bad faith.

- The disputed domain name is currently connected to a web site, which appears to be an official reseller and service center for ZANUSSI products endorsed or sponsored by the Complainant. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

- It is obvious that the Respondent knew of the Complainant and its trademarks at the time of registration and therefore the Respondent has entered the registration agreement knowing that the disputed domain name registration infringed on a third party right. Therefore, the Complainant has established that Respondent’s use of the disputed domain name is in bad faith. The disputed domain name is designed to attract Internet users who are looking for the Complainant’s services and causes confusion with the Complainant’s marks and websites and disrupts the Complainant’s business by diverting consumers away from Complainant’s official websites. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

- The creation of a disputed domain name confusingly similar to the ZANUSSI trademark; the use of the ZANUSSI logotype; the re-creation of the look and feel of the Complainant’s official website on the website related to the disputed domain name, and the absence of disclaimers disclosing the real relationship between the parties (or more specifically, the lack of any relationship) indicates that the Respondent knew about the Complainant’s trademark and reputation, and used them to his advantage in bad faith. Further, many circumstances suggest that the website is used in connection with counterfeit activities.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has registered the ZANUSSI trademark in a number of jurisdictions. The Complainant submits that the disputed domain name is confusingly similar to its trademark as the disputed domain name incorporates the ZANUSSI trademark in its entirety. As the word “zanussi” has no meaning in the English language, the Panel finds the Complainant’s ZANUSSI trademark to be highly distinctive.

In relation to the incorporation in the disputed domain name of the generic or descriptive geographical indicator “ua”, the Panel finds that the inclusion of a generic or descriptive geographical indicator together with a trademark cannot contribute to distinguishing the disputed domain name from a registered trademark where such domain name incorporates a distinctive trademark. The Panel finds that due to the high distinctiveness of the ZANUSSI trademark of the Complainant, the addition of the merely generic or descriptive geographical indicator “ua” in the disputed domain name does not avoid to find it confusingly similar in this case. The Panel here further notes that “ua” is a widely used abbreviation for Ukraine (a country to which the website associated with the disputed domain name is targeted at).

Indeed, the inclusion of a generic or descriptive geographical indicator together with a trademark in the disputed domain name may increase the risk of confusion for Internet users taking into account that the Respondent is using the disputed domain name to link to a website that is offering the ability to purchase goods that are purportedly those of the Complainant, sold under the Complainant’s ZANUSSI trademark and furthermore are sold in Ukraine. This, and the fact that the website associated with the disputed domain name claims to be an authorized ZANUSSI shop as well as service center, may lead Internet users to believe that the website associated with the disputed domain name is in fact a genuine operation of the Complainant in that country.

It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusingly similar to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).

Accordingly, the Panel finds the incorporation of the merely generic or descriptive geographical indicator “ua” in the disputed domain name <zanussi-ua.net> together with a hyphen does not prevent a finding of confusingly similarity to the Complainant’s trademark ZANUSSI.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response and has not contested the Complainant’s assertions, the Panel will need to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy, the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the disputed domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)-(iii) of the Policy.

By not responding to the Complainant’s contentions, the Respondent in these proceedings has not attempted to demonstrate its rights and legitimate interests in the disputed domain name.

The Panel further notes that there is no evidence that, before any notice of the present dispute, the Respondent was using the disputed domain name for a bona fide offering of goods and services.

According to the documents submitted by the Complainant, the disputed domain name links to a website that is in the business of offering for sale various products that are sold under the ZANUSSI trademark. It is unclear to the Panel whether these are genuine products of the Complainant (not duly authorized for sale in such fashion) or whether they are counterfeit and/or imitations of the Complainant’s product sold under the ZANUSSI trademark, however this is beyond the scope of deliberations of the Panel. However, what is clear is that the current use of the disputed domain name in the Panel’s view, cannot constitute a bona fide offering of goods and services in the circumstances of this case due to the unauthorized, misleading and plainly incorrect claims made on the website connected with the disputed domain name, so there appears to be no evidence that the Respondent is able to show rights or legitimate interests in respect of the disputed domain name under paragraph 4(c)(i) of the Policy.

As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on April 9, 2012. The Complainant asserts that the Complainant has been trading under the ZANUSSI trademark long before the registration of the disputed domain name and the ZANUSSI trademark has acquired worldwide reputation and is globally known.

Therefore the disputed domain name was registered with the knowledge of the ZANUSSI trademark and its reputation and it is highly unlikely that the Respondent has been commonly known by the disputed domain name, as provided in paragraph 4(c)(ii) of the Policy.

It is the Panel’s view, on the present facts, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s ZANUSSI trademark as well as the goodwill associated with it.

There is further evidence that the Respondent is possibly making commercial use from the disputed domain name. The Respondent is using the disputed domain name to further misleadingly divert Internet users to another website that is not associated with the Complainant. The fact that the website associated with the disputed domain name claims to be an authorized ZANUSSI reseller and service center, while in fact it is not authorized by the Complainant, may further tarnish the ZANUSSI trademark. Therefore, paragraph 4(c)(iii) of the Policy does not apply.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in the corresponding disputed domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name is used in connection with selling of products that are branded under the ZANUSSI trademark on a website that is an allegedly an official ZANUSSI reseller and service center. In fact, the Complainant has never provided any authorizations to the Respondent to be an official ZANUSSI reseller and/or service center. The Complainant further contends that the disputed domain name was registered and is used primarily for the purpose of confusing and misleading Internet users as to the affiliation of the disputed domain name as well as associated website with the trademark of the Complainant.

The Panel finds that the Respondent's use of the disputed domain name has created a risk of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and the website associated with it.

The Panel finds that the Complainant has presented evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy in respect of the disputed domain name.

The Panel holds that the Respondent has registered the disputed domain name in bad faith. In the circumstances, the Respondent should have known about the Complainant’s products and should have been aware of the trademark of the Complainant. The Panel is not aware of the Respondent conducting any legitimate business activity using the disputed domain name. These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith.

The Panel also is able to drawn bad faith intentions of the Respondent from the fact that the Respondent seems to target the Complainant in Ukraine by engaging in such conduct not for the first time, which can be seen from a previous case between the Complainant and the Respondent concerning other related domain names, such as, <electrolux-ua.com> and <zanussi-ua.com>, which were transferred to the Complainant (see Aktiebolaget Electrolux v. Maksim, SPD CHervinchuk, WIPO Case No. D2011-0403).

The Panel also draws inferences of bad faith from the lack of any response from the Respondent to the cease and desist letter as well as to the Complaint.

The Panel finds the Complainant has shown that the Respondent registered and is using the disputed domain name in bad faith.

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-ua.net> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist
Date: September 12, 2013