The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Agustin Acosta of Buenos Aires, Argentina. 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 November 17, 2010. On November 17, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 18, 2010, GoD, Inc. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2010.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on December 22, 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, AB Electrolux, is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. AB Electrolux is a world leading producer of kitchen and cleaning appliances and equipment. AB Electrolux is also one of the largest producers in the world of similar equipment for professional users. In addition, they are the market leaders in many of the individual products categories in which they compete.
The Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The trademark ELECTROLUX was registered long before the registration of the disputed domain name, since the early nineteen’s.
The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these: and . The disputed domain name was registered by the Respondent in July, 2010. 5. Parties’ Contentions A. Complainant (1). The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The Complainant has argued that the Respondent registered and used an Internet domain name that includes as a part of it, the word “Electrolux” which is identical to the registered trademark ELECTROLUX.
The Complainant has provided to these proceedings enough evidence to demonstrate the ownership of the trademark ELECTROLUX in numerous countries all over the world. The Complainant has also demonstrated that they have many Internet domain names (also all over the world including many gTLDs and ccTLDs) in which incorporates their trademark ELECTROLUX.
In conclusion, the Complainant has sustained that it is the owner of the world wide use and registered trademark ELECTROLUX, that the Respondent has registered the domain name which is confusingly similar to the trademark owned by the Complainant, because it includes the word “electrolux” with other generic terms, as well as a name of a city - Madrid. Additionally, the Complainant argues that the inclusion of other generic terms and the name of a city - Madrid, does not provide to an Internet domain name any distinctiveness from the original trademark. (2). The Respondent has no rights or legitimate interests in respect of the Domain Name; (Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
The Complainant has sustained that the Respondent has not registered trademarks or trade names corresponding to the domain name, and that the Complainant has not granted license or authorization of any kind to the Respondent in order to use the trademark as a part of a domain name or as a part of the content of its website.
According to the Complainant’s arguments and evidence presented to these proceedings, the Respondent is not making legitimate non-commercial or fair use of the disputed domain name. The Complainant argued that the Respondent has intentionally chosen the disputed domain name based on a registered trademark in order to generate traffic to the Respondent’s own company’s website, by displaying the ELECTROLUX logotype in order to make the visitor to have the impression that the Respondent’s website is an official ELECTROLUX service repair supplier. However, the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant.
In conclusion, the Complainant has sustained that the Respondent has no rights or legitimate interest in respect of the disputed domain name. (3). The Domain Name was registered and is being used in bad faith; (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
The Complainant argued that the disputed domain name was registered and is being used in bad faith, due to the fact that the Respondent must be aware of the importance of the trademark. The Complainant established that the trademark ELECTROLUX has the status of a well-known trademark with a substantial and widespread reputation throughout the whole Community and throughout the world.
Also, the Complainant mentioned that its first intention was to establish direct contact with the Respondent through a cease and desist letter sent by e-mail on September 27, 2010, in which the Complainant advised the Respondent that the unauthorized use of the ELECTROLUX trademark within the disputed domain name violated the Complainant’s rights in said trademark. The Complainant requested a voluntary transfer of the domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). The Respondent did not reply and the Complainant therefore, sent a reminder on October 13, 2010 and a final reminder on October 26, 2010.
Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. Finally, the Complainant sustained that the Respondent’s conduct, as explained in the above paragraph, should be considered as proof of registration and use of the disputed domain name in bad faith.
The Complainant presented at this Proceedings the printouts of the website published at the disputed domain name, which demonstrates that the services are connected to an electronic devices repair center’s website, consequently the Respondent is using the disputed domain name to intentionally attempt to attract, for his own commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
According to the Complainant’s arguments and evidence presented to these Proceedings, the Respondent’s use of the trademark and logotype ELECTROLUX on the website at the disputed domain name indicates that at the time the Respondent made the registration and the publication of the contents on the website, the Respondent was well aware of the trademark ELECTROLUX. From the Complainant’s point of view, the Respondent intentionally chose the disputed domain name, based on a registered and well-known trademark in order to generate more traffic to its own business. Nowhere did the Respondent disclaim on its website the non-existing relationship between itself and the Complainant.
The Complainant sustained that there is no connection between its trademark and the Respondent, that by the registration and use of the disputed domain name, the Respondent is not making a legitimate non-commercial or fair use without intent of commercial gain, but misleadingly diverting consumers for its own commercial gain, and that the Respondent’s conduct should be considered by the Panel as evidence of registration and use of the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions, did not prove anything in these proceedings, and therefore is in default. 6. Discussion and Findings
As a preliminary matter the Respondent has not submitted any response. The essential elements of the present case, including arguments and evidence of the claims, will be reviewed by this Panel to find whether they have been met. Also, Rules paragraph 14 and 15(a) provide that where the Respondent does not respond to the Complaint, the Panel shall decide the Complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable.
In order to prevail, the Complainant must prove the following: (Policy, paragraph 4 (a)):
(i) The disputed domain name is identical or confusingly similar to a trademark of 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 use in bad faith. A. Identical or Confusingly Similar
The Panel found in these Proceedings that the disputed domain name is confusingly similar to the trademark ELECTROLUX. There is no doubt that the trademark ELECTROLUX is part of the disputed domain name and the addition of other Spanish words, such as “servicio”, “técnico”, “madrid” (which in English means: Service, Technical, Madrid), does not provide any distinctiveness to the disputed domain name, because its main word is “Electrolux” which is a world wide known trademark.
The fame of the trademark has been confirmed in previous UDRP decisions, for example: AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777, the panel found that:
“[t]he first domain name in dispute, , adopts two of Complainant's widely known trademarks in their entirety, adding only the generic term ‘servisi’, meaning ‘service’ in Turkish. The Panel finds that Respondent's inclusion of two of Complainant's trademarks in the same domain name increases the likelihood that Internet users would be confused and associate the disputed domain name with Complainant. The Panel further finds that Respondent's addition of the generic term “service” does not reduce that confusion”.
See also, Aktiebolaget Electrolux v. HSD LLC,WIPO Case No. D2008-1746:
“The Panel finds that the disputed domain name is confusingly similar to the Complainant's ELECTROLUX trademarks. The disputed domain name differs from the Complainant's registered ELECTROLUX marks only in the addition of the generic term ‘cleaning’, which is not enough to characterize it as distinct from the Complainant's trademarks.”
In the present case, the Panel found that the addition of the suffix “serviciotecnicomadrid” is not relevant in order to make the disputed domain name distintive from the trademark and will not have any impact on the overall impression of the dominant part of the disputed domain name, ELECTROLUX, recognizable as a world famous trademark.
The inclusion of the generic top-level domain (gTLD) “.info” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine its confusing similarity to the trademark.
Based on the arguments and evidence provided by the Complainant, the Panel finds that the Complainant is the owner of the world wide registered, used and known trademark ELECTROLUX, that the Respondent has registered the disputed domain name which includes the trademark as a part of it, and therefore they are confusingly similar. The addition of Spanish generic words such as “servicio”, “téncico”, as well as a geographical term such as “Madrid” to the disputed domain name does not give it any distinctiveness.
The Panel finds that the Complainant, has met the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
According to the Policy, the Complainant must prove that the Respondent has no rights or legitimate interest in the disputed domain name and the Respondent must forward a response and prove in the case, that he has the legitimate interest or rights of the disputed domain name. In this case, the Panel faces the fact that the Respondent did not answer, did not present any evidence in which the Panel could rely upon, to confirm the existence of the Respondent’s rights or legitimate interest in the disputed domain name. Even if a complainant has made the necessary allegations and has provided evidence, according to the Policy, the Respondent must forward a response with evidence of its rights or legitimate interests, if such evidence exists.
In fact, paragraph 4(c) of the Policy provides the circumstances that can demonstrate the existence of rights or legitimate interests in a domain name by a respondent:
“(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
First the Complainant proves that it is the owner of the trademark ELECTROLUX and that it is a worldwide registered trademark.
The Panel finds that the trademark ELECTROLUX has been completely incorporated as a part of the disputed domain name. Also, the Complainant argues that it has not given the Respondent any license or authorization of any other kind to use the trademark as a part of a domain name or to be used in the Internet in any way, and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because notwithstanding the Respondent does not offer the Complainant’s products on the website, but instead is offering the repair services on ELEXTROLUX and other-branded goods without any authorization by the Complainant. In the absence of a response, the Panel accepts as true the Complainant's allegations that the Respondent has no authorization to use the ELECTROLUX trademark at the disputed domain name and that the Respondent is not commonly known by the disputed domain name.
The Panel finds that the Respondent is seeking to attract Internet users through the Complainant's widely known trademark ELECTROLUX for the Respondent’s own commercial purposes. The Panel therefore concludes that the Respondent's use of the disputed domain name demonstrates the Respondent's lack of a legitimate non-commercial interest in, or fair use of, the disputed domain name. The Respondent has not rebutted the Complainant's prima facie case or arguments, proved or by any means tried to demonstrate any of the circumstances in paragraph 4(c) of the Policy to support the existence of its rights or legitimate interests in the use of the disputed domain name .
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Policy, para 4 (b) Evidence of Registration and Use in Bad Faith: for the purposes of paragraph 4 (a) (iii) the following circumstances, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith:
“(i) Circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) You have 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 you have engaged in a pattern of such conduct; or
(iii) You have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location.”
The Panel finds that the disputed domain name is being used in bad faith because the Respondent’s only reason in registering and using the contested domain name is to benefit from the reputation of the trademark ELECTROLUX and illegitimately trade on its fame for commercial gain and profit and by the fact that the Respondent’s website is using similar makeup, colors and presentation with the Complainant’s website and even includes the Complainant’s duly registered trademark logo and the Complainant’s company name
The Panel finds that the disputed domain name is currently connected to an electronic devices repair center website, consequently, the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. This conduct has being consider as bad faith under the Policy, and other WIPO decicisions have also arrived to the same conclusion, as an example see Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946, in which the panel stated:
“It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”
See also, AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777:
“The Panel finds that Respondent registered the disputed domain names with awareness of Complainant's marks, which had already been registered in many countries including Turkey, and used for several years. The Panel infers that the domain name registrations were made with the intention of trading on the value of Complainant's mark, as demonstrated by the screen shots of Respondent's websites which displayed Complainant's logos. The Panel finds that Respondent deliberately attempted to attract Internet users to its websites for commercial gain, by creating a likelihood of confusion with Complainant's marks. The Panel concludes, therefore, that Respondent registered the domain names in bad faith.”
Under the above mentioned circumstances and according to prior decisions, the Panel finds that the registration and the use of the disputed domain name by the Respondent could not be consider a legitimate non-commercial or fair use without intent of commercial gain but it is misleadingly diverting consumers for his own commercial gain, out of the prestige and fame of the trademark ELECTROLUX and this has been consider by the Panel as an evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii) and paragraph 4(b)(iv) of the Policy.
The Panel finds that the Respondent’s conduct of not replying the cease and desist letter sent by the Complainant, is also considered by this Panel as proof of bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; see also Aktiebolaget Electrolux AB v. Domains by Proxy, Inc. / HSD LLC, Thomas Keith, WIPO Case No. D2010-0561.
Consequently, the Panel concludes that the Respondent has registered and used the domain name in bad faith, according to 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.
Ada L. Redondo
Sole Panelist
Dated: December 26, 2010
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