WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aktiebolaget Electrolux v. Electroluxx, DP Manager, Temporarily assigned to Eurobox Ltd. Case No. D2008-1622 1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB of Stockholm, Sweden.
The Respondent is Electroluxx, DP Manager, Temporarily assigned to Eurobox Ltd. of St. Petersburg, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with NICREG LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2008 electronically and on October 24, 2008 by hardcopy. On October 24, 2008, the Center transmitted by email to NICREG LLC a request for registrar verification in connection with the disputed domain name. On October 29 and 30, 2008, NICREG LLC 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 28, 2008. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a Swedish joint stock company founded in 1901 and registered in Sweden in 1919. The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning, selling more than 40 million products every year to customers in 150 countries. The Complainant's products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers. In 2007, the Complainant had sales of SEK 105 billion and 56,900 employees.
The Complainant owns trademark registrations and applications in respect of ELECTROLUX covering 150 countries, including the Russian Federation application no. 2006717328 ELECTROLUX applied for on June 23, 2006 in intl. classes 03, 07, 09, 11 and 21 (the “ELECTROLUX Marks”). Furthermore, the Complainant has registered the trademark ELECTROLUX as part of a domain name in about 300 gTLDs and ccTLDs worldwide inter alia .
The domain name was first registered on June 1, 2008 and has not yet been used in connection with an active website.
The Complainant sent a cease and desist letter to the Respondent on September 23, 2008 advising the Respondent that the unauthorized use of the trademark ELECTROLUX within the domain name violated the rights in the trademark owned by the Complainant and requesting immediate transfer of the domain name against payment of registration expenses and renewal fees. The Respondent did not reply to this letter. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is confusingly similar to the famous ELECTROLUX Marks as it uses the ELECTROLUX Marks with the single addition of an extra “x” at the end and the gTLD “.com”.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it does not own any trademarks or trade names corresponding to the domain name, as it has not been granted any rights by the Complainant to use the ELECTROLUX Marks, as it is not reasonably possible for the Respondent to demonstrate any bona fide legitimate interest in a domain name that includes the Complainant's trademarks, and as the Respondent has not shown any demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant contends that, given the fame and high reputation of the ELECTROLUX Marks, it is inconceivable that the Respondent was unaware of the Complainant and its well-known ELECTROLUX Marks at the time it registered the disputed domain name. With regard to bad faith use, the Complainant contends that the registration of a famous trademark itself is sufficient to amount to bad faith, that the Respondent Eurobox Ltd. has been involved in at least eight other UDRP proceedings and that the passive holding of the disputed domain name equals active use in bad faith because of the overall circumstances of the case, namely the notoriety of the trademark ELECTROLUX, the lack of any kind of relationship between the Respondent and the Complainant, the Respondent's intentional omission to reply to the Complainant's letters, and the Respondent's earlier involvement in UDRP proceedings. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(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. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's highly distinctive and well known ELECTROLUX Marks in which the Complainant has exclusive rights. The mere addition of the letter “x” at the end does not hinder a finding of confusing similarity. The Panel believes that – even with the letter “x” at the end – the average person will readily identify the term “electrolux” in this domain name which corresponds to the Complainant's ELECTROLUX Marks. Furthermore, the disputed domain name is phonetically identical to the ELECTROLUX Marks.
It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in a domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, it is consensus view among panelists that where the complainant makes a prima facie case to address the requirements of paragraph 4(a)(ii) of the Policy, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will lie with the respondent.
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name, is not using the disputed domain name in connection with a bona fide offering of goods or services and is not commonly known by the domain name, and has therefore fulfilled its obligations under paragraph 4(c) of the Policy. The Respondent has not denied these assertions and therefore failed to prove rights or legitimate interests under paragraph 4(a)(ii) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered and is being used in bad faith.
Given the fact that the Complainant's products sold under the ELECTROLUX Marks have been well-known in many countries worldwide for several decades, it is inconceivable that the Respondent did not know of the Complainant's trademark rights when registering the disputed domain name. Moreover, the practice of typo-squatting, of itself, is evidence of the bad faith registration of a domain name (see Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069; Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039; Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816). The Respondent therefore registered the disputed domain name in bad faith.
As the disputed domain name is not actively used by the Respondent the Panel has to decide whether or not the Respondent's (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.
It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity, and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
In the present case, the Respondent has neither replied to the Complainant's cease and desist letter nor to the Complaint and has therefore not provided any evidence whatsoever of any actual or contemplated good faith use. On the other hand, the Complainant has provided evidence showing that its trademarks are used internationally, inter alia in the country where the Respondent is domiciled, and are well-known. Furthermore, the domain name fully incorporates the Complainant's distinctive mark by merely adding the letter “x”, is phonetically identical and therefore a name Internet users might falsely enter when searching for the Complainant's products or website.
In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent. The Panel is therefore convinced that, even though the disputed domain name has not been actively used yet, the Respondent's non-use of the disputed domain name equals its use in bad faith.
This finding of bad faith use is further supported by the fact that the Respondent was ordered to transfer domain names to the respective complainants in earlier proceedings where registration and use in bad faith were established. The Respondent therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as required under paragraph 4(b)(ii) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: December 12, 2008
Full & Egal Universal Law Academy