Westmore · UDRP DecisionZanussi-shop.com
The Panel ordered transfer of <zanussi-shop.com>. It found the Domain Name confusingly similar to the ZANUSSI mark because it incorporated the mark in full and added only the descriptive term “shop.” Respondent lacked rights or legitimate interests because the commercial website suggested that it was an official Zanussi online store, used the distinctive ZANUSSI logo and color scheme, and failed accurately to disclose its relationship with Complainant. The same presentation supported a finding of intentional attraction for commercial gain through confusion under paragraph 4(b)(iv) of the Policy.
The timeline behind zanussi-shop.com
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This decision illustrates that selling or advertising genuine trademarked products does not by itself establish rights or legitimate interests in a trademark-formative domain name. Even where reseller authorization is uncertain, an official-looking site may fail the Oki Data test when it does not accurately disclose its relationship with the trademark owner. The same website presentation can also support bad faith where it is used commercially to create confusion about source, sponsorship, affiliation, or endorsement.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AB Electrolux v. ID Shield Service, Domain ID Shield Service CO., Limited / Maksim, zanussi-shop.com Case No. D2015-2027 1. The Parties Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden. Respondent is ID Shield Service, Domain ID Shield Service CO., Limited of Hong Kong, China / Maksim, zanussi-shop.com of Kiev, Ukraine. 2. The Domain Name and Registrar The disputed domain name <zanussi-shop.com> (the “Domain Name”) 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 November 9, 2015. On November 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 16, 2015. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on November 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 8, 2015. The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on December 11, 2015. 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 Complainant is one of the world’s leading producers of appliances and equipment for kitchens. Its Italian Zanussi brand was founded in 1916. According to the evidence submitted by Complainant, through its wholly owned Italian subsidiary Electrolux Italia S.p.A, Complainant owns a large number of trademark registrations for ZANUSSI, including International trademark registration No. 404462, registered December 12, 1995 (protected in Ukraine). In addition Complainant has registered a large number of domain names containing the ZANUSSI mark, including <zanussi.com> and <zanussi.ua>. The Domain Name <zanussi-shop.com> was registered on September 27, 2013. 5. Parties’ Contentions A. Complainant Complainant submits that the Domain Name is confusingly similar to the ZANUSSI trademark in which Complainant has rights. The dominant part of the Domain Name <zanussi-shop.com> incorporates Complainant’s well-known trademark ZANUSSI. The addition of the descriptive word “shop” is not sufficient to distinguish it from Complainant’s trademark ZANUSSI. According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. In support of its argument Complainant submits the following factual background which is supported by evidence based on multiple screen prints of the website to which the Domain Name resolves. Complainant submits that Respondent is using the Domain Name to attract Internet users to its website where Respondent sells ZANUSSI products (illustrating them with pictures) in the territory of Ukraine. The website states that it is the “corporate online store Zanussi”. The layout of the website includes a stylized ZANUSSI logo with the Italian flag appearing prominently on the top at the center of the page. Complainant has clear agreements with its authorized resellers that they are forbidden to use the trademark name of the products they sell in any domain name. Complainant did not assert that there is a signed agreement in place with Respondent. Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a website strongly suggesting that there is some official or authorized link with Complainant. Further, Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 . Respondent does not adequately disclose the (non-existent) relationship between Respondent and Complainant. Respondent is also depriving Complainant of being able to reflect its own mark in the Domain Name and on the Ukrainian market. Finally, Respondent presents itself as the trademark owner by adopting a website that looks official by using Complainant’s logo and color scheme. Complainant submits that the Domain Name was registered and is being used in bad faith. The trademark ZANUSSI belonging to Complainant significantly predates the registration of the Domain Name. The active business presence of Complainant in Ukraine makes it unlikely that Respondent was not aware of the registration of the Domain Name. In addition Complainant tried to contact Respondent on August 24, 2015 through a cease and desist letter. Complainant advised Respondent that the unauthorized use of the ZANUSSI trademark within the Domain Name violated Complainant’s rights in said trademarks. Complainant requested a voluntary transfer of the Domain Name. Despite a reminder, no reply was received. Since efforts to resolve the matter amicably were unsuccessful, Complainant chose to file a complaint under 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. Finally, Complainant has never granted permission to register the Domain Name using the well-known ZANUSSI mark. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and 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 the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled: (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 has been registered and is being used in bad faith. The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the complainant must first of all establish rights in a trademark or service mark and secondly that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Complainant has established that it is the owner of numerous trademark registrations for ZANUSSI, including in Ukraine, where Respondent is located. The Domain Name <zanussi-shop.com> incorporates the entirety of the widely-known ZANUSSI trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the common, descriptive and non-distinctive element “shop” preceded by a hyphen is insufficient to avoid a finding of confusing similarity. The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s ZANUSSI trademark. B. Rights or Legitimate Interests In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the evidence provided by Complainant, the Domain Name resolves to website where products of Complainant are being advertised. It is unclear to the Panel whether or not Respondent is an authorized reseller of Complainant’s products. A reseller or distributor can be making a bona fide offering of goods or services and thus have a legitimate interest in the domain name at issue if certain requirements are met. The leading case on this point is Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No. D2001-0903 . The Panel notes that the Oki Data criteria and considerations may be equally applicable to circumstances such as those in which a person is offering genuine goods of a trademark owner, or services related to those goods, but is not an authorized reseller or in an authorized relationship with the trademark owner as such. According to the principles as mentioned in Oki Data the following criteria should all be met: a. the respondent must actually be offering the goods or services at issue; b. the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; c. the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and d. the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. In the view of the Panel Respondent fails to meet the Oki Data criteria, in particular criterion “c”. In fact, on the website to which the Domain Name resolves Respondent, by suggesting it is the “corporate online store Zanussi”, does not accurately disclose the relationship with Complainant as the holder of the well-known ZANUSSI trademarks, in particular as there has never been any business relationship between Complainant and Respondent. This is reinforced by the fact that the layout of the website uses the very distinctive ZANUSSI logo and color scheme. The website also contains the words “Internet shop Zanussi”. Such use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, Respondent is also not commonly known by the Domain Name nor has it acquired any trademark rights. No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case. Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith The Panel finds that the Domain Name has been registered and is being used in bad faith. Noting the well-known status of the ZANUSSI marks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew that the Domain Name included Complainant’s well-known ZANUSSI marks. The Panel notes that the website to which the Domain Name resolves incorporates Complainant’s well-known ZANUSSI trademark in its entirety, including the very distinctive logo and color scheme of Complainant, which indicates, in the circumstances of this case, that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Panel finds that Complainant has proven that the Domain Name has been registered and is being used 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 Domain Name <zanussi-shop.com> be transferred to Complainant. Dinant T. L. Oosterbaan Sole Panelist Date: December 21, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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