AB Electrolux v. Hassan Nasr
Claim Number: FA1708001744389
Complainant is AB Electrolux (“Complainant”), represented by Cecilia Borgenstam of SILKA Law AB, Sweden. Respondent is Hassan Nasr (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zanussimasr.com>, registered with Network Solutions, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2017; the Forum received payment on August 14, 2017.
On August 14, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <zanussimasr.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@zanussimasr.com. Also on August 15, 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 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
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 <zanussimasr.com> is confusingly similar to Complainant’s ZANUSSI mark because it incorporates the mark in its entirety, adding the generic term “masr” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <zanussimasr.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 <zanussimasr.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 <zanussimasr.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 <zanussimasr.com> with actual knowledge of Complainant and its rights to the ZANUSSI mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns multiple trademark registrations for ZANUSSI.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the ZANUSSI mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the at-issue domain name to address a website which fraudulently gives the impression that visitors are dealing with Complainant and further offers services that compete with those offered by Complainant.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of various trademark registrations for the ZANUSSI mark demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). 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.).
Respondent’s <zanussimasr.com> domain name contains Complainant’s ZANUSSI mark suffixed with the term “masr,” a term meaning Egypt. The top level domain name “.com” is appended thereto completing the domain name. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to differentiate one from the other for the purpose of the Policy. In fact, Respondent’s use of the term “masr” suggests a place where Complainant’s business operates and thus adds to any confusion between the domain name and Complainant’s trademark. Further, the addition of the “.com” top-level domain name is immaterial to the Panel’s analysis. Therefore, the Panel finds that Respondent’s <zanussimasr.com> domain name is confusingly similar to Complainant’s ZANUSSI mark pursuant to Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “hassan nasr.” The record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the <zanussimasr.com> domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the confusingly similar domain name to address a website mimicking Complainant’s color scheme and ZANUSSI logo. Thereby, Respondent attempts to pass itself off as Complainant and offer unauthorized repair and maintenance services for Complainant’s products. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See 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)).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4 (b) circumstance are present as well as other circumstances which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to address a website which pretends to be sponsored by Complainant and offers services that compete with those offered by Complainant. Using the domain name in this manner demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Philip Morris Incorporated v. Alex Tsypkin, D2002-0946, (WIPO Feb. 13, 2003) (finding bad faith pursuant to paragraph 4(b)(iv) when respondent created a false sense of complainant’s sponsorship of respondent’s website which was ultimately used to offer commercial services similar to those offered by complainant); see also, Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003). ( 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.”)
Additionally, Respondent registered <zanussimasr.com> knowing that Complainant had trademark rights in the ZANUSSI trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the ZANUSSI trademark, logo and trade dress on a commercial website addressed by the <zanussimasr.com> domain name. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <zanussimasr.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zanussimasr.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 6, 2017
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