The Complainant is Aktiebolaget Electrolux of Sweden, represented by Melbourne IT Digital Brand Services of Sweden.
The Respondent is Electrolux International (HK) Co., Ltd. / David of People’s Republic of China. 2. The Domain Nameand Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2010. On the same day the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On August 5, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
On August 11, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant responded to the Center by email, confirming that the Complaint includes a request that English be the language of the proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 15, 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
The Complainant, Aktiebolaget Electrolux, is a Swedish joint stock company founded in 1901. The Complainant engages in household appliances and appliances for professional use.
The Complainant employs over 50,000 employees and has a sale revenue of over than 40 million products each year. These products are sold to various customers, in 150 countries.
The Complainant owns multiple trademark registrations for the mark ELECTROLUX in many countries around the world. For example: United States trademark registration No. 0908002– ELECTROLUX, with the registration date of February 16, 1971; Community Trade Mark registration No. 000077925 – ELECTROLUX, with the registration date of September 16, 1998; Chinese trademark registration No. 862864 – ELECTROLUX, with the registration date of August 14, 2006; and many more.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names, which contain the word "Electrolux". For example: , , , , and many more.
The disputed domain name was registered by the Respondent on April 8, 2010.
The disputed domain name resolves to a commercial website which promotes, among others, the export and sale of electronic products and components.
The Complainant sent a Cease and Desist letter to the Respondent via email on June 16, 2010, stating that the disputed domain name infringes upon the Complainant's rights and demanding the domain name be transferred to the Complainant. The Complainant sent the Respondent a reminder regarding this Cease and Desist letter on June 23, 2010, requested to receive the Respondent's response. The Respondent did not reply to the Cease and Desist letter or to the Complainant's reminder thereof. 5. Parties’ Contentions A. Complainant
The Complainant contends the following:
The Complainant argues that its ELECTROLUX trademark has become a well-known trademark due to the Complainant's extensive and long term use of it for appliances and equipment for kitchen, cleaning and outdoor products. The Complainant indicates that previous UDRP panels have established that the Complainant's trademark is widely known.
The Complainant further argues that the ELECTROLUX trademark is substantially inherent and distinctive.
The Complainant further argues that the disputed domain name fully incorporates and makes use of the Complainant's registered ELECTROLUX trademark.
The Complainant further argues that the addition of the gTLD “.com” in connection with the disputed domain name does not result in avoiding confusing similarity between the domain name and the Complainant's mark.
The Complainant further argues that the Respondent has no relevant trademark or trade name registrations corresponding with the disputed domain name and is not known by the name “Electrolux” and therefore has no legitimate use in the ELECTROLUX trademark.
The Complainant further argues that it is not affiliated with the Respondent and did not license or authorize the Respondent to make any use of Complainant trademark or products.
The Complainant further argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, since the Respondent did not take steps to prevent confusion between the disputed domain name and the Complainant's ELECTROLUX trademark and products.
The Complainant further argues that the Respondent knew or should have known of the Complainant’s ELECTROLUX trademark upon registering the disputed domain name. The Complainant argues that the Respondent’s use of the term “electrolux” with a logo that resembles the Complainant’s logo indicates that the Respondent was aware of the Complainant and the Complainant’s mark upon registering the disputed domain name. The Complainant is of the opinion that this is evidence for the Respondent’s bad faith.
The Complainant further argues that disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant further argues that the Respondent intentionally chose the disputed domain name in order to generate traffic to the Respondent’s website, by misleading consumers to believe that it is affiliated with the Complainant.
The Complainant further argues that Respondent is tarnishing the Complainant’s ELECTROLUX trademark.
The Complainant further argues that the fact that the Respondent did not respond to the Complainant’s Cease and Desist letters is an indication of the Respondent’s bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the registration agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding will be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised [judiciously] in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In the present case, the Respondent did not object to the Complainant’s request that English be the language of proceedings. Also, the fact that the disputed domain name is operating also with an English version, which leads the Panel to believe that the Respondent is sufficiently capable to understand the English language.
Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of the proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark ELECTROLUX. For example: United States trademark registration No. 0908002– ELECTROLUX, with the registration date of February 16, 1971; Community Trade Mark registration No. 000077925 – ELECTROLUX, with the registration date of September 16, 1998; Chinese trademark registration No. 862864 – ELECTROLUX, with the registration date of August 14, 2006; and many more.
The disputed domain name differs from the registered ELECTROLUX trademark by the additional abbreviation “hk” and by the additional gTLD “.com”.
The additional term “hk” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's ELECTROLUX trademark, especially as the term “hk” is ordinarily used as an abbreviation of the words “Hong Kong”, which by itself is not distinctive.
Previous WIPO UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
"The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).
The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLDs “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to show that he has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that Complainant established such a prima facie case inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the ELECTROLUX trademark, or a variation thereof. The Respondent did not submit a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii)).
The Complainant provided evidence to demonstrate the ELECTROLUX trademark has vast goodwill. The Complainant has also indicated that a previous UDRP decision already affirmed that the Complainant’s trademark is widely known (see AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777).
The Complainant submitted further evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its ELECTROLUX trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns registrations for the ELECTROLUX trademark since the year 1971. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name resolves to a commercial website which promotes, among others, the export and sale of electronic products and components, which can easily be mistaken as being affiliated to the Complainant. Furthermore, the website operating under the disputed domain name includes a logo that is similar to the Complainant's logo and is written with a similar font.
The Respondent’s use of the Complainant’s trademarks to promote goods that are similar to the kind of goods that are sold by the Complainant is clear evidence that the Respondent registered the disputed domain name with knowledge of the Complainant’s ELECTROLUX trademark and of the Complainant's commercial use of it, and subsequent intent to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain name for similar goods to the ones that are sold by the Complainant, constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
In addition, previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Panel also notes that the Respondent failed to respond to the Cease and Desist letter and reminder sent by the Complainant. It is well established and accepted that failure to respond to Cease and Desist letters without legitimate reason can be evidence of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
In light of the Complainant’s distinctive registered trademark, the Respondent’s use of a confusingly similar disputed domain name for illegitimate purposes and the Respondent’s lack of response to the Complainant's Cease and Desist letter and reminder, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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.
Jonathan Agmon
Sole Panelist
Dated: September 29, 2010
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