WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Aktiebolaget Electrolux v. Domains by Proxy, Inc., DomainsByP, /My Co Dean Case No. D2010-0135 1. The Parties
Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Domains by Proxy, Inc., DomainsByP, /My Co Dean of Scottsdale, Arizona, United States of America and London, United Kingdom of Great Britain and Northern Ireland, respectively. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2010. On January 29, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On February 2, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 2, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an email communication on February 10, 2010 confirming its election not to amend the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 10, 2010. The Center verified that the Complaint, together with the amendment to 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on March 4, 2010.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on March 10, 2010. 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 a Swedish joint stock company founded in 1901. Complainant is a world leading producer of appliances and equipment for kitchen and cleaning selling more than 40 million products to customers in 150 countries each year. Electrolux products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers.
Complainant owns registered trademarks for the ELECTROLUX mark in countries throughout the world, including the United States of America and the United Kingdom of Great Britain and Northern Ireland. Complaint, Annex 6. The mark was registered long before the registration of the disputed domain name, which took place on September 9, 2009. The ELECTROLUX mark has been widely advertised and promoted over the years such that, in the view of Complainant, it has acquired the status of a well-known mark and enjoys the protections provided under the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Complainant also has registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name, , is identical or confusingly similar to the ELECTROLUX mark. It notes that the dominant part of the domain name comprises the term “electrolux,” which is identical to the registered mark ELECTROLUX. Complainant further argues that the addition of the suffix “fridgefreezer” is not relevant and will not have any impact on the overall impression of the dominant part of the name – ELECTROLUX. Complainant further notes that the addition of the top-level domain “.com” does not have any impact on the overall commercial impression of the dominant portion of the domain name and, therefore, is legally irrelevant to determine the confusing similarity of the trademark.
Citing the UDRP decision in Dr. Ing h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, Complainant maintains that it “is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of prefixes and suffixes. Added to this, the Complainant's well-known trademark ELECTROLUX is the first-appearing element in the concerned Domain Name, which furthermore creates a high risk of confusion.” Complainant argues that, given the reputation of its ELECTROLUX mark, “there is a considerable risk that the trade public will perceive the Respondent's Domain Name either as a domain name owned by Complainant or that there is some kind of commercial relation with the Complainant.”
Complainant further maintains that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not found that Respondent has any registered marks or trade names corresponding to the domain name in dispute and indicates that it is also clear that no license or authorization of any kind has been given by Complainant to Respondent to use the ELECTROLUX mark.
Complainant indicates that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. “Instead the Respondent has intentionally chosen a domain name based on registered trademarks in order to generate traffic to a web site and through this procedure generate income through sponsored links, as well as links to the auction site eB. (See Complaint, Annex 10) By doing this, Respondent is misleading Internet users to commercial web sites and consequently, the Respondent is tarnishing the trademark ELECTROLUX.”
With respect to the issue of “bad faith” registration and use, Complainant points out that it first tried to contact Respondent on November 26, 2009 through a “cease and desist” letter. Complaint, Annex 11. No response was received and two reminders were sent, the first on December 8, 2009 and the second on January 22, 2010.
As noted above, Complainant alleges that the disputed domain name currently is connected to a web site containing sponsored links and links to eB. The links connected to eB display ongoing auctions of fridge freezers. “Consequently,” Complainant asserts, “the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the websites.” Complainant argues that it is immaterial whether Respondent influences what links should be included on the sites or obtains revenue from the web sites, and cites the decision in Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, in support. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel determines that the disputed domain name, , is confusingly similar to the mark ELECTROLUX. The domain name incorporates in full the ELECTROLUX mark. The addition of the generic term “fridgefreezer” and of the top-level domain “.com” does not detract from the confusing similarity between the domain name and mark.
It is also clear that Complainant, through its ownership of registrations for, and longstanding use of, the ELECTROLUX mark, has rights in such mark. B. Rights or Legitimate Interests
The Panel rules that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence indicates that Respondent is not using the domain name in connection with a bona fide offering of goods or services and is not commonly known by the domain name. Nor is Respondent making a noncommercial or fair use of the domain name. C. Registered and Used in Bad Faith
The Panel concludes that the disputed domain name was registered and is being used in bad faith. The evidence supports a determination that the disputed domain name is connected to a web site containing sponsored links and links to eB and that the links connected to eB display ongoing auctions of fridge freezers. The evidence further indicates that Complainant uses its ELECTROLUX mark on fridge freezers.
As a result, the Panel finds that Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the web sites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web sites or of the products found on such sites, within the meaning of paragraph 4(b)(iv) 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 Complainant.
Jeffrey M. Samuels
Sole Panelist
Dated: March 17, 2010
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