The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden represented by Melbourne IT Digital Brand Services AB of Stockholm, Sweden.
The Respondent is Maksim, SPD CHervinchuk of Kiev, Ukraine. 2. The Domain Names and Registrar
The disputed domain names and are registered with OnlineNic, Inc. (“Domain Names”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2011. On March 2, 2011, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the Domain Names. On March 5, 2011, OnlineNic, 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 March 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2011. On the same day, the Center received an email communication from the Respondent. The next day the Complainant transmitted to the Center a response to the Respondent’s email.
The Center appointed Olga Zalomiy as the sole panelist in this matter on April 4, 2011. 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 is a Swedish joint stock company registered in 1910. It is a producer of appliances for kitchen and cleaning.
The Complainant is the owner of numerous registrations for the widely-known ELECTROLUX mark and its variations, including the European Union registration No. 000077925 dated September 16, 1998, and the United States registration No. 0908002 dated February 16, 1971. Electrolux Home Products Italy S.P.A., which is a member of the Electrolux group, is the owner of trademark registrations for ZANUSSI and its variations, including United States registration No. 3725880 dated December 15, 2009, and the European Union registration No. 000492447 dated February 8, 1999.
The Complainant is also the registered owner of almost 700 domain names which incorporate the ELECTROLUX and ZANUSSI marks, including: created on April 30, 1996, and created on November 17, 1995. The domain names direct to the Complainant’s official websites. The websites offer information, education and support services for the Electrolux and Zanussi products.
The Respondent registered the disputed domain name on October 8, 2008. The domain name consists of: 1) the word “electrolux”, 2) a hyphen, 3) the country code top level domain (ccTLD) “ua” corresponding to Ukraine, and 4) a qTLD suffix “com.” It directs to a website of a home appliances company that represents to be an official online Electrolux chain store.
The Respondent registered the disputed domain name on September 8, 2008. The domain name consists of: 1) the word “zanussi”, 2) a hyphen, 3) the country code top level domain (ccTLD) “ua” corresponding to Ukraine, and 4) a qTLD suffix “com.” It directs to a website of a home appliances company that represents to be an official online Zanussi chain store. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the Domain Names are identical and confusingly similar to its worldwide registered trademarks ELECTROLUX and ZANUSSI. In the Complainant’s view, the addition of a prefix “ua” that gives reference to Ukraine is equal to the addition of a geographical term to a trade or service mark. The Complainant alleges that it is legally inconsequential and does not prevent a finding of confusing similarity. Similarly, the Complainant alleges that the addition of the top-level domain “.com” has no impact and is irrelevant for the purpose of determining confusing similarity.
The Complainant claims that the Respondent has no rights or legitimate interest in the Domain Names. The Complainant claims that it has not found that the Respondent has registered any trademarks or trade names corresponding to the Domain Names. The Complainant alleges that it has given no license or authorization of any kind to the Respondent to use the trademarks.
The Complainant asserts that the Domain Names were registered and are being used in bad faith. The Complainant claims that its trademarks ELECTROLUX and ZANUSSI are well-known. In the Complainant’s view, there is no doubt that the Respondent was aware of the Complainant’s rights in the trademarks and of the value of the trademarks at the time of the registrations. The Complainant alleges that there is no connection between the Respondent and the Complainant. The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain by using the Domain Names. Instead, in the Complainant’s view, the Respondent is misleadingly diverting consumers for his own commercial gain.
The Complainant requests that the Domain Names be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Supplemental Filings
The Panel allows both parties’ unsolicited correspondence dated March 28 and 29, 2011 as relevant and helpful to making a decision in the present case. “Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality.”1
In this case, the Respondent failed to submit its timely response to the Complaint. After the Center informed the Respondent about its default, the Respondent sent an unsolicited email in English to the Center notifying it that the parties were engaged into negotiations concerning future cooperation. The Respondent also submitted minutes of the meeting between the Complainant’s representatives and the Respondent concerning the negotiations. The Respondent’s email makes it likely, and therefore relevant to this case, that it might have decided that it was unnecessary to respond to the Complaint in light of the negotiations between the parties. Thus, the Panel accepts this email as relevant in this case.
To ensure equal treatment of both of the parties, the Panel accepts the Complainant’s response to the Respondent’s unsolicited March 28, 2011 email. The Complainant’s response shows that while it was considering a possibility of cooperation between the parties, no agreement or permission concerning use of the Domain Names by the Respondent has been reached.
The Panel, therefore, accepts both unsolicited emails from the parties as relevant to the case and finds that no further evidence or information is necessary from the parties. 7. Discussion and Findings
In accordance with the Rules, paragraph 15(a), the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the Rules, and any rules and principles of law that it deems applicable. To ensure fair, effective and predictable operation of the UDRP system, where appropriate, the Panel will make decisions consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”).2
But “the respondent’s default does not automatically result in a decision in favor of the complainant”.3 The complainant must establish “each of the three elements required by paragraph 4(a) of the UDRP”.4 Thus, to succeed on its claim, the Complainant must prove that: 1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) the Respondent has no "rights or legitimate interests in respect of the domain name"; and 3) the domain name "has been registered and is being used in bad faith." Paragraph 4(a) of the UDRP.
“Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”5 A. Identical or Confusingly Similar
The Panel finds that the Complainant proved that it has rights in the ELECTROLUX and ZANUSSI marks. Under paragraph 1.1 of the WIPO Overview, 2.0., if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. “The general standard of proof under the UDRP is “on balance” or “preponderance of evidence” standard.” 6 Under this standard, an asserting party would “need to establish that it is more likely that not that the claimed fact is true.”7
To prove its rights, the Complainant submitted a table referencing to over 590 ELECTROLUX registrations in different countries and copies of trademark registrations in the United States, No. 0908002 dated February 16, 1971, and in the European Union, No. 000077925. Therefore, the Panel finds that the Complainant satisfied its burden of proof under the UDRP and established its rights in the ELECTROLUX mark.
While the Panel would have appreciated more substantive proof of the Complainant’s rights to the ZANUSSI trademark, this information is readily available from public record, which the Panel has a right to examine8. The United Sates and the European Union trademark databases reveal that Electrolux Home Products Italy S.P.A., which is a member of the Electrolux group9, is the owner of trademark registrations for ZANUSSI and its variations, including United States registration No. 3725880 dated December 15, 2009, and the European Union registration No. 000492447 dated February 8, 1999. It is a consensus view that a related company of the registered holder of the mark may be considered to have rights in a trademark under the UDRP.10 Therefore, the Panel finds on the record of this case that it is more likely than not that the Complainant has rights in the ZANUSSI mark.
To satisfy the first UDRP element, a domain name must be “identical or confusingly similar” to a trademark, in which a complainant has rights.11 “The test for confusing similarity “involves a comparison between the mark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant mark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms. Application of the confusing similarity test under the UDRP […] involve[s] a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”.12 Based on the comparison of trademark ELECTROLUX and the Domain Name, the Panel finds them to be confusingly similar for two reasons. First, the Domain Name incorporates the Complainant’s trademark in its entirety. Second, neither the addition of the suffix “ua” nor the inclusion of the generic top level domain suffix “.com” or a hyphen dissipates the confusion.
Each of the Domain Names incorporate either the trademark ELECTROLUX or ZANUSSI, in its entirety, adding only a hyphen and the two letter country code corresponding to Ukraine13, the country of the Respondent’s residence. Prior panels held that ccTLD code or ISO is a non-distinctive element, and its addition does not avoid confusing similarity.14 For example, in Samsung Electronics, Co., Ltd. v. Maksim15, the panel found that “Respondent’s adding the “ua” ccTLD for a website advertising in Ukraine where Samsung itself does business, only aggravates the confusion.” Similarly, in this case, the Respondent’s adding the “ua” ISO code to the Domain Names resolving to a website advertising the Complainant’s goods in Ukraine, does not dissipate the confusion. Moreover, it is well-established that the addition of the top-level domain suffix “.com” or equivalent should be disregarded under the confusing similarity test, as it is a technical requirement of registration.16
Furthermore, it is likely that the addition of the “ua” suffix even exacerbates the confusion, because “given well-known and widely followed naming conventions in forming domain names, Internet users in a given country, or who have interest in that country, and who desire to reach a website of a corporation or other entity operating in that country, would likely think to construct a domain name by simply appending the name of the country to the name or mark associated with that corporation or entity followed by the general commercial gTLD “.com”.”17 Therefore, Internet users who are interested in finding Electrolux or Zanussi products in Ukraine would construct a domain name containing ELECTROLUX or ZANUSSI and possibly adding “ua” followed by “.com” suffix. As a result, they are likely to believe that the Domain Names belong to or are authorized by the Complainant.
Therefore, the Domain Names are confusingly similar to the Complainant’s trademarks, and the first element of paragraph 4(a) of the UDRP has been satisfied. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii) of the UDRP, a complainant must prove that respondent has no rights or legitimate interests in the domain name. “Panels have recognized that this could result in the often impossible task of proving a negative requiring information that is often primarily within the knowledge of the respondent.”18 Therefore, to satisfy this requirement, the complainant must make out a prima facie case, that the respondent lacks rights or legitimate interests in the domain name.19
Paragraph 4(c) of the UDRP provides an open list of circumstances that demonstrate rights or legitimate interests of a respondent in a domain name. The Complainant alleges that none of such circumstances exists here. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks rights or legitimate interest in the Domain Names for three reasons. First, the Respondent did not use the Domain Names in connection with a bona fide offering of goods. Second, the Respondent uses the Domain Names for commercial gain and to misleadingly divert consumers to its websites. Third, the Respondent has not been commonly known by the Domain Names.
The Complainant alleges that the Respondent did not use the Domain Names in connection with a bona fide offering of goods because the Complainant has not licensed or otherwise authorized the Respondent to register or use the ELETROLUX or ZANUSSI trademarks in any manner. The parties’ March 28 and 29, 2011 communications indicating that the Complainant and the Respondent’s company were engaged in discussion of a possible cooperation, confirm this allegation. In previous UDRP cases, it has been held that an unauthorized party cannot claim a legitimate interest in a domain name which intentionally contains, or is confusingly similar with, a complainant’s mark, as the activities of such party cannot be said to constitute a good faith offering of goods or services.20 Since it is undisputed that the Domain Names are confusingly similar to the marks in which the Complainant has rights, the Respondent’s use of the Domain Names without Complainant’s authorization cannot in this Panel’s view constitute a bona fide offering of goods or services in the circumstances of this case.
Further, neither the Respondent, Maksim, SPD CHervinchuk, nor his company “MVK-Trade” are commonly known by either the Electrolux or Zanussi names. The fact that the Respondent is not connected to the Domain Names either through his name or business, indicates lack of legitimate interest.21
In addition, the Respondent does not have rights or legitimate interest in the Domain Names as a reseller. Under the UDRP, a reseller may have a legitimate interest in a domain name, if a respondent’s offering of goods and services meets certain requirements.22 Such requirements include: “the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder.”23
While the printouts from the Respondent’s websites presented by the Complainant show that the Domain Names are used to resolve to the websites offering for sale only Electrolux or Zanussi products, the websites are designed to appear as websites affiliated with or authorized by the Complainant. The design and feel of the website connected to domain name is similar to the Complainant’s official “www.” website home page. In addition, it displays the Complainant’s ELECTROLUX logotype at the top of the page and contains no disclaimers concerning the absence of any relationship between the companies. The “www.” website’s design also recreates the look and feel of the official “www.” website. The “www.” website also contains no disclaimers as to the true nature of the Complainant’s and the Respondent’s relationship. Since the Respondent’s websites lack any disclaimers disclosing its lack of a relationship with the Complainant, it fails in this Panel’s view to meet the requisite requirements.
Therefore, the Respondent does not have any rights or legitimate interests in the Domain Names and the second element of the UDRP has been established. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the UDRP requires “a positive finding that both the registration and use were in bad faith.”24 Paragraph 4(b) of the UDRP provides an open list of the circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The Panel finds the Complainant has shown that the Respondent registered and used the Domain names in bad faith, and in particular, that the Respondent’s conduct puts the case squarely within paragraph 4(b)(iv) of the Policy, which states the following:
(iv) “by using the domain name, [a respondent] intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”25 (i) Registration in bad faith Electrolux mark
The Panel finds it more likely than not that the Respondent knew about the Complainant’s widely-known ELECTROLUX mark and registered the domain name in bad faith.
First, the ELECTROLUX mark has been found to be a widely-known mark on numerous occasions.26 The Panel also finds that existence of multiple attempts by third parties to trade on the Complainant’s goodwill is an indication of its fame. The Panel shares the view that “opportunistic bad faith” is shown when a domain name incorporating a well-known mark is registered by someone with no legitimate connection to the product.27 Since the Respondent registered the Domain Name which incorporates the Complainant’s widely-known mark, opportunistic bad faith may be inferred in the circumstances of this case.
Second, the Complainant’s trademark has been used and its domain name was registered long before the Respondent registered its domain name. The Complainant provided a copy of the printout from a search of the WhoIs database of the Registrar conducted on February 24, 2011, and an extract from the United States Patent and Trademark Office database. The evidence shows that the Complainant registered its ELECTROLUX mark in the United States on February 16, 1971, thirty seven years prior to registration of the , and the Complainant’s domain name twelve years prior to the Respondent’s registration of its domain name. Therefore, this Panel finds that the Respondent knew about the existence of the Complainant’s marks prior to registration of the Domain Name.
Moreover, there is ample evidence before this Panel that the Respondent intended to trade on the Complainants’ reputation. The creation of a Domain Name confusingly similar to the ELECTROLUX trademark; the use of the ELECTROLUX logotype; the re-creation of the look and feel of the Complainant’s official website on the Respondent’s “www.” website; and the absence of disclaimers disclosing the real relationship between the parties (or more specifically, the lack of any relationship) indicates to this Panel that the Respondent knew about the Complainant’s trademark and reputation, and used them to his advantage in bad faith. Zanussi
The Panel finds it more likely than not that the Respondent knew about the Complainant’s ZANUSSI mark and registered also the domain name in bad faith.
First, the ZANUSSI trademark and the domain name were registered long before the Respondent registered the domain name. The ZANUSSI mark was registered in the European Union by Electrolux Home Products Italy S.P.A., as early as February 8, 1999, registration No. 000492447, i.e. nine years prior to the registration of the domain name. The domain name was created on November 17, 1995, i.e. thirteen years prior to the Respondent’s registration of the domain name.
Second, the creation of the Domain Name confusingly similar to the ZANUSSI trademark; the re-creation of the look and feel of the Complainant’s official website “www.”; and the absence of disclaimers disclosing real relationship between the parties (or more specifically, the lack of any relationship) indicates to this Panel that the Respondent knew about the Complainant’s trademark and reputation, and used them to his advantage in bad faith. (ii) Use in bad faith
The Respondent’s bad faith can further be inferred from the statements made in correspondence between the parties. It is a consensus view between the panelists that “evidence of offers to sell the domain name are generally admissible under the UDRP, and it is often used to show bad faith.”28 Here, the Respondent’s communication of March 28, 2011 alleges that the parties were involved in a negotiation to establish an official relationship whereby the Respondent would become an official representative. The Complainant’s emails and the Respondent’s response of the same date show that while the parties were indeed engaged in some negotiations, the Complainant had not permitted or approved the Respondent’s use of the Domain Names. Moreover, the Panel finds that in the circumstances of this case, the Respondent’s refusal to transfer the Domain Names to the Complainant during these proceedings further suggests the Respondent’s bad faith.
Accordingly, the Panel finds on the current record that the Domain Names were registered and used in bad faith, and thus, the third element of the UDRP has been established.
For the purposes of completeness, the Panel notes an almost 3-year delay in brining a Complaint under the UDRP. However, since the Respondent chose not to address this issue and because “the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, good or services,”29 the Panel finds that the delay does not prevent the Complainant from being able to prevail under the UDRP. 8. 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 names and be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: April 17, 2011
1 See paragraph 4.3. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0. “)
2 See paragraph 4.1. of the WIPO Overview, 2.0.
3 See paragraph 4.6. of the WIPO Overview , 2.0.
4 Id.
5 Paragraph 4.6. of the WIPO Overview, 2.0.
6 Paragraph 4.7. of the WIPO Overview, 2.0.
7 Id.
8 Paragraph 4.5. of the WIPO Overview, 2.0.
9
10 Paragraph 1.8. of the WIPO Overview, 2.0.
11 See paragraph 4(a) of the UDRP.
12 Paragraph 1.2. of the WIPO Overview, 2.0.
13
14 See, e.g., eBay Inc. v. David Sach,WIPO Case No. D2009-1083 (finding that the addition an ISO country code to EBAY in the domain name is not enough to avoid confusing arising from the use of EBAY); See also Paragraph 1.9. of the WIPO Overview, 2.0.
15 See Samsung Electronics, Co., Ltd. v. Maksim,WIPO Case No. D2010-1274.
16 See Paragraph 1.2. of the WIPO Overview, 2.0.
17 PepsiCo, Inc.v. QWO,WIPO Case No. D2004-0865
18 Paragraph 2.1. of the WIPO Overview, 2.0.
19 See paragraph 2. 1 of the WIPO Overview, 2.0.
20 Dr.Ing.h.c.F.Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.
21 See “Chinatrust Commercial Bank, Ltd. and Chinatrust Bank (U.S.A.) v. China Holding Company, WIPO Case No. D2001-0826.
22 See paragraph 2. 3 of the WIPO Overview, 2.0.
23 Id.
24 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
25 Paragraph 4(b)(iv) of the UDRP.
26 Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277;
Aktiebolaget Electrolux v. Nomad Marketing, Ltd., WIPO Case No. D2010-1205; Aktiebolaget Electrolux v. Michael Dieckmann, WIPO Case No. D2010-1203; AB Electrolux v. Kelli Cristina Coco Petrucci, WIPO Case No. D2010-0836; Aktiebolaget Electrolux AB v. Sun Qifeng, WIPO Case No. D2010-063; Aktiebolaget Electrolux v. Domains by Proxy, Inc., DomainsByP, /My Co Dean, WIPO Case No. D2010-0135; Aktiebolaget Electrolux v. DomainsByP / My Co Doa,WIPO Case No. D2010-0134.
27 Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. See also, General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation,WIPO Case No. D2000-1568.
28 See paragraph 3. 6 of the WIPO Overview, 2.0.
29 See paragraph 4. 10 of the WIPO Overview, 2.0.
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