The Complainant is AB Electrolux, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Zanussi Center, Egypt.
The disputed domain name <zanussi-center.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2019. On July 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2019, 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 August 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2019.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on September 10, 2019. 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.
The Complainant, AB Electrolux, is a Swedish 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 1984, the Complainant acquired the Italian appliance manufacturer Zanussi, the owner of the brand ZANUSSI founded in 1916 and used since then in Europe and elsewhere for home appliances.
For the purpose of this Complaint, the Complainant relies specifically on the rights owned by its subsidiary, Electrolux Italia S.p.A in Egypt, namely:
- International trademark ZANUSSI No 1201466, registered on March 6, 2014.
- Egyptian trademark No 258519 over the Arabic transliteration of ZANUSSI, filed on March 27, 2011.
The Complainant is also the owner of a number of domain names containing the term “zanussi”, such as <zanussi.com> (created on November 17, 2005) and <zanussi.com.eg> (created on December 16, 2002). The domain names are used to inform its customers about its products sold under the brand ZANUSSI.
The disputed domain name, <zanussi-center.com>, was registered by the Respondent on February 28, 2019.
The Respondent’s identity is allegedly Zanussi Center, with an address and a telephone number in Egypt. No information is available on file regarding the activities of the Respondent.
The disputed domain name is being used to host a parking page of the Registrar, GoDaddy. It contains a list of links to brands of the Complainant, to brands of competitors such as Siemens and Bosch, and to household appliances.
On April 1, 2019 the Complainant sent a cease and desist letter to the Respondent, requesting the voluntary transfer of the disputed domain name. The Respondent did not respond, and accordingly the Complainant initiated this proceeding.
On the first element of the Policy, the Complainant claims that the disputed domain name <zanussicenter.com> wholly incorporates its earlier trademark ZANUSSI. It adds that “The only difference between the Domain Name and the trademark is the addition of the generic word “center”. The additional non - distinctive elements within the dispute domain name is not sufficient to distinguish it from Complainant’s trademark; on the contrary, their presence is likely to increase the risk that internet users will be confused into associating the disputed domain name with the Complainant and its ZANUSSI brand”.
On the second element of the Policy, the Complainant provides detailed arguments. It claims, first, that the true identity of the Respondent is not Zanussi Center. Verifications conducted with its local agents in Egypt reveal that no business exists under that name. It also indicates that it has not authorized the use of the name “Zanussi” by the Respondent. Second, it claims that the Respondent is not making a bona fide offering of goods and services under the disputed domain name <zanussi-center.com>. Indeed, the presumed pay-per-click scheme, which may provide revenues to the Respondent, is not legitimate insofar it provides links to competing brands. Finally, it highlights that the Respondent was provided with the opportunity to comment on his rights or legitimate interests, further to the letter sent by the Complainant’s representative, and that it failed to do so.
On the third element of the Policy, the Complainant formulates a claim of bad faith passive holding, and indicates in particular that that it has “conducted thorough searches to try to establish whether the Respondent would have any rights in the name ZANUSSI in conjunction similar goods and services that the trademark ZANUSSI is registered under. This has been accomplished by trademark database searches, searches on Google, business registers etc. Complainant cannot find that the company has any registered rights in the name ZANUSSI or has become known under the name ZANUSSI. The passive holding of the website is not fair use. Here, given the apparently widespread reputation that Complainant enjoys in the ZANUSSI trademark”. The Complainant also points out the lack of response of the Respondent to its letter, as an indirect evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Panel notes that the trademark rights claimed as a basis for this Complaint are owned by Electrolux Italia S.p.A, a subsidiary of the Complainant. As mentioned in section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it is generally admitted that the parent company of the holder of the trademarks has standing for the purpose of bringing a complaint under the Policy. Therefore, there is no impediment for the Complainant to bring this case and its examination can proceed further.
The disputed domain name <zanussi-center.com> is indeed confusingly similar with the earlier trademarks ZANUSSI of the Complainant. The disputed domain name consists, materially, in the mere combination of the word “Zanussi”, which is identical to the trademarks of the Complainant, and the word “Center”. Both elements are separated by a hyphen. The addition of the element “center” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel gives credit to the Complainant’s allegation regarding the presumed false identity of the Respondent. Apparently, further to inquiries made by the Complainant’s representatives, there is no entity named “Zanussi Center” established in Egypt. This name was probably adopted by the Respondent simply for the purpose of registering the disputed domain name. And the Respondent has failed to rebut this information.
Accordingly, the Complainant has sufficiently argued and demonstrated that the Respondent is not known by the disputed domain name, and has not been authorized by the Complainant to register and use the disputed domain name. Besides, with a mere use of the disputed domain name to host a parking page, no bona fide use can be claimed, noting the nature of the disputed domain name in the present case.
Accordingly, The Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In order to prevail under the third element of paragraph 4(a) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. These are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] 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 complainant from reflecting the complainant’s trademark or service mark in a corresponding 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 [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Regarding, firstly, the bad faith registration, the panel is of the opinion that the Respondent knew, or at the very least should have known, of the Complainant and its rights over the trademark ZANUSSI, when registering the domain name. “Zanussi” is indeed a coined word, totally arbitrary, which is immediately linked to the Complainant when conducting a search online on this word. Besides, the combination of the words “Zanussi” and “center” may be perceived as an indication that the disputed domain name is aimed at hosting a center of information on the sale, maintenance or repair of Zanussi branded household products.
Regarding, secondly, the bad faith use, the Panel notes that the Complainant relies primarily on bad faith holding. The panel is a prepared to accept this claim. However, what is more relevant in the panel’s view is the use of the disputed domain name <zanussi-center.com> for an apparent scheme of pay-per-click links. Some of these links direct users to competing brands and this is an indication of bad faith, even if the page is configured automatically by the registrar and even if the Respondent may not have benefited directly from it. Indeed, in accordance with section 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”.
Finally, another evidence of bad faith in this matter is the apparent use of a false identity by the Respondent to register the disputed domain name.
Accordingly, the third criteria element set out in paragraph 4(a) of the Policy is also satisfied.
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-center.com> be transferred to the Complainant.
Date: September 20, 2019
Stay updated! Get new cases and decisions by daily email.