AB Electrolux v. AMR AAMER
Claim Number: FA1708001744407
Complainant is AB Electrolux ("Complainant"), represented by Cecilia Borgenstam of SILKA Law AB, Sweden. Respondent is AMR AAMER ("Respondent"), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zanussiofficialagent.com>, registered with GoDaddy.com, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2017; the Forum received payment on August 14, 2017.
On August 15, 2017, GoDaddy.com, LLC confirmed by email to the Forum that the <zanussiofficialagent.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 16, 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 email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@zanussiofficialagent.com. Also on August 16, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 David E. Sorkin 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 leading producer of appliances and equipment for kitchen and cleaning products and floor care products. In 1984 Complainant acquired the Italian appliance manufacturer Zanussi. Zanussi was founded in 1916, and Complainant has rights in the ZANUSSI mark by virtue of trademark registrations in various jurisdictions including Egypt, where Respondent is located.
Respondent registered the disputed domain name <zanussiofficialagent.com> on April 12, 2016. Complainant states that Respondent is not commonly known by the domain name and is using it for a website that offers repair and maintenance services for Complainant's products. The website contains multiple instances of Complainant's ZANUSSI mark and logo, and refers to Respondent as "Zanussi Approved Maintenance Center." Complainant states that if Respondent were an authorized service provider, it would be subject to Complainant's standard license, which prohibits licensees from registering domain names incorporating the ZANUSSI mark. The website does not include a disclaimer of endorsement or sponsorship by Complainant.
Complainant contends, on the above grounds, that the disputed domain name <zanussiofficialagent.com> is confusingly similar to its ZANUSSI mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 disputed domain name <zanussiofficialagent.com> combines Complainant's registered ZANUSSI mark with the generic term "official agent" (omitting the space) and the ".com" top-level domain. These additions do not diminish the similarity between the domain name and Complainant's mark. See, e.g., Dell Inc. v. Vikas Tiwari, FA 1724159 (Forum Apr. 18, 2017) (finding <dellofficial.com> confusingly similar to DELL); Montblanc-Simplo G.m.b.H v. Lin Mingshun, D2013-0855 (WIPO July 31, 2013) (finding <officialmontblanc.com> confusingly similar to MONTBLANC, and noting that the term "official" may increase the likelihood of confusion); Deutsche Lufthansa AG v. George Aby, D2009-0071 (WIPO Mar. 13, 2009) (finding <lufthansaagent.com> confusingly similar to LUFTHANSA). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name combines Complainant's registered mark with a generic term suggesting that Respondent is authorized to act for Complainant. It was registered without Complainant's authorization, and is being used for a website that falsely represents the services it promotes are authorized by Complainant.
Under the doctrine of nominative fair use, a reseller of genuine trademarked goods or services may use the trademark if (1) the goods or services are not readily identifiable without the use of the mark; (2) the reseller uses no more of the mark than necessary; and (3) the reseller does nothing to suggest sponsorship or endorsement by the trademark owner. See, e.g., Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175-76 (9th Cir. 2010); Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010); F. Hoffmann-La Roche AG v. Alexandr Grog, D2013-0995 (WIPO Sept. 27, 2013). Respondent's website uses Complainant's logo as well as its ZANUSSI mark, and affirmatively suggests sponsorship or endorsement by Complainant. Respondent therefore would likely not prevail on a claim that it is engaged in a nominative fair use of Complainant's mark.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using Complainant's mark to promote services by falsely suggesting an endorsement by or other connection with Complainant. The Panel finds that Respondent's actions are indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zanussiofficialagent.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 12, 2017
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