AB Electrolux v. ali hashem / Appliances Maintenance
Claim Number: FA1708001743720
Complainant is AB Electrolux (“Complainant”), represented by Cecilia Borgenstam of SILKA Law AB, Sweden. Respondent is ali hashem / Appliances Maintenance (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zanussi-agent.com>, registered with easyDNS Technologies Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2017; the Forum received payment on August 9, 2017.
On August 10, 2017, easyDNS Technologies Inc. confirmed by e-mail to the Forum that the <zanussi-agent.com> domain name is registered with easyDNS Technologies Inc. and that Respondent is the current registrant of the name. easyDNS Technologies Inc. has verified that Respondent is bound by the easyDNS Technologies Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zanussi-agent.com. Also on August 17, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global producer of kitchen appliances, equipment, and other kitchen-related products. Complainant acquired the ZANUSSI brand in 1984 and uses the mark in conjunction with its business practices. Complainant registered the ZANUSSI mark with the World Intellectual Property Organization (“WIPO”) (e.g., Reg. No. 1201466, registered Mar. 6, 2014). Additionally, Complainant registered the ZANUSSI mark with the Ministry of Supply and Internal Trade Department of Commercial Registration Trade Mark Office in Egypt (e.g., Reg. No. 258519, registered Sept. 24, 2013). Respondent’s <zanussi-agent.com> is confusingly similar to Complainant’s ZANUSSI mark because it incorporates the mark in its entirety, adding a hyphen, the generic term “agent,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <zanussi-agent.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the ZANUSSI mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <zanussi-agent.com> resolves to a website mimicking Complainant’s color scheme and ZANUSSI logo, attempting to pass itself off as Complainant by offering unauthorized repair and maintenance services for Complainant’s products.
Respondent registered and is using <zanussi-agent.com> in bad faith. The disputed domain name attracts internet users to Respondent’s website for commercial gain, creating a likelihood of confusion that Respondent is affiliated with Complainant. Respondent registered <zanussi-agent.com> with actual knowledge of Complainant and its rights to the ZANUSSI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <zanussi-agent.com> domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant is a global producer of kitchen appliances, equipment, and other kitchen-related products. Complainant acquired the ZANUSSI brand in 1984 and uses the mark in conjunction with its business practices. Complainant claims it registered the ZANUSSI mark with WIPO (e.g., Reg. No. 1201466, registered Mar. 6, 2014). Additionally, Complainant claims it registered the ZANUSSI mark with the Ministry of Supply and Internal Trade Department of Commercial Registration Trade Mark Office in Egypt (e.g., Reg. No. 258519, registered Sept. 24, 2013). The consensus among panels is that mark registrations with government entities is sufficient to show rights in a mark. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Therefore, the Panel concludes that Complainant’s registrations with WIPO and the Egyptian trade mark office are sufficient to show rights in the ZANUSSI mark.
Complainant contends that Respondent’s <zanussi-agent.com> is confusingly similar to Complainant’s ZANUSSI mark because it incorporates the mark in its entirety, adding a hyphen, the generic term “agent,” and the “.com” gTLD. A confusing similarity exists where a disputed domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). As such, panels have concluded that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016). Moreover, “the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark." Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000). In the instant case, the Panel finds that Respondent’s addition of a generic term to Complainant’s ZANUSSI mark does not adequately distinguish <zanussi-agent.com> from Complainant’s mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent does not have rights or legitimate interests in <zanussi-agent.com>. In support of its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “ali hashem.” Panels have determined that the respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the name [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). The Panel finds Respondent is not known by the disputed domain name.
Complainant argues that it has not authorized or licensed Respondent to use the ZANUSSI mark in any regard, nor is Respondent affiliated with Complainant. Moreover, Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its contention, Complainant demonstrates that Respondent’s <zanussi-agent.com> resolves to a website mimicking Complainant’s color scheme and ZANUSSI logo, attempting to pass itself off as Complainant by offering unauthorized repair and maintenance services for Complainant’s products. “It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant.” Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Hence, the Panel finds that Respondent’s attempts to pass itself off as Complainant is a blatant unauthorized use of Complainant’s ZANUSSI mark, thereby evincing a lack of rights or legitimate interests in <zanussi-agent.com> under the Policy. See e.g., Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003).
Complainant has proved this element.
Complainant maintains that Respondent registered and is using <zanussi-agent.com> in bad faith. Respondent’s <zanussi-agent.com> attempts to pass itself off as Complainant by mimicking Complainant’s color scheme and logo on the resolving website, offering unauthorized repair and maintenance services for Complainant’s products. Complainant argues that the disputed domain name attracts internet users to Respondent’s website for commercial gain, creating a likelihood of confusion that Respondent is affiliated with Complainant. Panels have found that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business.” Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003). Moreover, the “use of domain names to sell [c]omplainant’s goods and services without [c]omplainant's authority . . . is bad faith use of a confusingly similar domain name.” Therefore, the Panel determines that Respondent registered and is using <zanussi-agent.com> in bad faith pursuant to Policy ¶¶ 4(b)(iv) and 4(a)(iii).
Finally, Complainant asserts that Respondent registered <zanussi-agent.com> with actual knowledge of Complainant and its rights to the ZANUSSI mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” Panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also contends that in light of the fame and long-standing use of Complainant's ZANUSSI mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <zanussi-agent.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <zanussi-agent.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 11, 2017
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