The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Pablo Rodriguez Guirao of Palma de Mallorca, Spain. 2. The Domain Name and Registrar
The disputed domain names and are registered with 1 & 1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2011. On April 27, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain names. On April 29, 2011, 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 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 the Respondent of the Complaint, and the proceedings commenced on May 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2011.
The Center appointed Christian Schalk as the sole panelist in this matter on June 8, 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.
The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules. The language of the proceedings is English.
The Respondent filed his two-line response only on June 8, 2011, which was more than two weeks after the Response due date. In accordance with the Rules it is in the discretion of the Panel whether to accept such a late filing. Depending on the circumstances of the individual case even a late Response imay be acceptable if there are very serious and convincing reasons on why it was not possible to file the Response in due time. The Respondent, however, has not presented any reasons at all. Therefore, the Panel decides not to take the Respondent’s late Response into consideration. Nevertheless, in order to complete the picture, the Response will be briefly summarized in section 5 (B) below. 4. Factual Background
The Complainant, founded in 1901, is a leading producer of appliances and equipment for kitchen and cleaning. The Complainant informs that it is selling more than 140 products to customers in 150 countries every year. In 2009, the Complainant had sales of 109 billion Swedish Crowns (SEK) and it has 51.000 employees worldwide. Its products are refrigerators, dishwashers, washing machines, vacuum cleaners and cookers, which are sold under brands such as ELECTROLUX, AEG ELECTROLUX and several other brands.
The Complainant has registered the trademark ELECTROLUX as a word mark and as a device mark in several classes in more than 150 countries. The Complainant owns among others the following trademark registrations:
U.S. Trademark Registration No. 0908002 ELECTROLUX, filing date of November 10, 1969, covering goods and services in Int. Class 21
European Community Trademark No. 000077925 ELECTROLUX, filing date of April 1, 1996, covering goods and services in Int. Classes 3, 7, 8, 9, 11, 16, 20, 21, 35 and 37.
The Complainant owns also several hundreds of ELECTROLUX - Domain Names such as , , , and .
The Respondent registered the disputed domain names on October 28, 2010 and November 5, 2011. The disputed domain name resolves to a parking website. This site contains several links in apparently Swedish language where the word ELECTROLUX is written in a prominent way. It appears that the links will guide the Internet user to websites of stores offering among others Electrolux products.
The other disputed domain name, , resolves to a website where the ELECTROLUX logo has been displayed in a prominent way as well as pictures of two of the Complainant’s products. In Spanish language it is written that the website owner is a non - official technical support service provider for Electrolux products in Mallorca, Spain (“Servicio Técnico extra Oficial de Fabricante Electrolux en Mallorca”) which, however, does not offer services for areas and problems covered by the Complainant product warranty policy. Furthermore, it is written on the website that the owner of this website is a serious company which employees have a qualification to repair the Complainant’s products and that such services have satisfied customers for many years.
The Complainant sent a cease and desist letter to the Respondent on February 24, 2011. The Respondent was asked for a voluntary transfer of the disputed domain names in exchange of a compensation for the expenses for registration and transfer of these domain names. The Respondent replied with the words “veta a la mierda” (which means “fuck” in English). The Complainant sent a second cease and desist letter on March 1, 2011 to which the Respondent did not make any reply. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant argues in this context that the dominant part of the disputed domain names, the word “Electrolux”, is identical to the registered ELECTROLUX trademarks in which the Complainant has rights. It is the Complainant opinion that the addition of the prefixes “servicio-tecnico-“ and “ servicotecnico-” which translates into English as “technical service” are not relevant and will have no impact on the overall impression of the dominant part of the name ELECTROLUX. In this context, the Complainant cites Dr. Ing. H.c.F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488, where the Panel found that it is a long established precedent that confusingly similarity is generally recognized when well-known trademarks are paired up with different kind of prefixes and suffixes. Therefore, the Complainant believes that since its ELECTROLUX trademark is widely known for conducting business or services with home appliances, said preferences are rather fitted to strengthen the impression that the disputed domain names either belong to the Complainant or to an entity which is affiliated with the Complainant. The Complainant cites Aktiebolag Electrolux v. Domain ID Shield Service Co., LTD / Dorian Consentino, Planeta Servidor,WIPO Case No. D2010-1277 and AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777 to support its arguments. The Complainant argues further that anyone who sees the disputed domain names is bound to mistake them for names related to the Complainant and that the likelihood of confusion includes an obvious association with the trademark of the Complainant. Therefore, the Complainant fears that given the reputation of the ELECTROLUX trademark, there is a considerable risk that the trade public will perceive the disputed domain names either as domain names owned by the Complainant or that there is some kind of commercial relation between the Complainant and the Respondent.
The Complainant alleges also that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant argues that neither a license nor any other authorization has been granted to the Respondent on the use of its ELECTROLUX marks as domain names and that the Respondent has not any trademark rights in such marks. The Complainant believes further that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. The Complainant explains in this context that the fact that one of the disputed domain names, , is linked with a website displaying sponsored links misleads Internet users and therefore, the Respondent tries to sponge off the Complainant’s famous trademarks. To support its arguments, the Complainant cites Drexel University v. David Brouda,WIPO Case No. D2001-0067.
As far as the other disputed domain name, , is concerned, the Complainant is convinced that the Respondent has intentionally chosen this specific domain name in order to generate traffic to a web site where the Respondent offers services of the Complainant’s goods. Although there is a disclaimer on this website stating that the Electrolux logo belongs to the rightful holder and is shown for information only, this disclaimer does not explain the non-existing relationship with the Complainant. Therefore, the Complainant believes that the Respondent tries to tarnish and to sponge off the Complainant’s ELECTROLUX trademark. To support its arguments, the Complainant cites Drexel University v. David Brouda,WIPO Case No. D2001-0067, where the Panel found that rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.
Furthermore, the Complainant alleges that the disputed domain names were registered and are being used in bad faith. The Complainant argues that its trademark ELECTROLUX has the status of a well-known and reputed trademark with a substantial and widespread reputation in many countries and that its considerably value and goodwill is most likely the reason why the Respondent registered the domain names at issue. In the Complainant’s view this explains also the fact that its ELECTROLUX trademark has been subject of 10 UDRP cases only in the years 2009 / 2010.
The Complainant believes also that that the failure of the Respondent to respond to the Complainant’s cease and desist letters constitutes bad faith as it has been stated in previous WIPO Cases such as News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
The Complainant alleges also that the Respondent is using the disputed domain names also to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its websites because they are connected to website offering services of the Complainant’s goods and to a website containing sponsored links. In this context, the Complainant argues that it is irrelevant whether the Respondent gets revenues from the sponsored links and cites Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, to support its arguments. The Complainant believes further that the circumstances of Aktiebolag Electrolux v. Agustin Acosta,WIPO Case No. D2010-1968, on the domain name apply also to this present case. B. Respondent
The Respondent did not reply to the Complainant’s contentions. Only on June 8, 2011, and therewith after the Response due date, the Respondent wrote that he has withdrawn the logos from its website which could cause confusion with the trademark Electrolux and his websites only offer repair services of electronic household equipment but that they have never sold any products of the Complainant. 6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the term ELECTROLUX. Therefore, it is clear that the disputed domain names are not identical to the Complainant’s trademarks.
However, the Panel finds the disputed domain names to be confusingly similar with the Complainant’s trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith,WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002.)
In this case, the terms “servicio”, “tecnico” and “serviciotecnico” which mean “technical services” in English are obviously generic terms. Given the fact that the products of the Complainant are well known even to the Panel it is likely that the disputed domain names could be understood by Internet users finding and on search engines or elsewhere as providing a link to a website belonging to the Complainant or being sponsored by the Complainant and thereby increases the likelihood of confusion (see also Hoffmann-La Roche AG v. Anna Valdieri,WIPO Case No. D2007-0956; Koninklijke Philips Electronics N.V. v. Anpol,WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti,WIPO Case No. D2001-0231).
The “com” suffix in the disputed domain names does not affect the determination that the disputed domain name is confusingly similar with the term ELECTROLUX in which the Complainant has trademark rights (see also: Compagnie Générale des Etablissements Michelin v. Trending,WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936 and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan,WIPO Case No. D2001-0615 and cases cited therein). B. Rights or Legitimate Interests
According to the material brought before the Panel, and in the absence of a compelling of timely Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain names for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. Especially, there is no evidence that the Respondent is commonly known by the disputed domain names. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.
The Respondent has also not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the domain names. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g. E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc.,WIPO Case No. D2000-0554) by directing one of the disputed domain names to its own website where he offers repair- and other technical services and linking the other disputed domain name to a parking website and continuing this behaviour even after the Complainant had sent two cease and desist letters to it.
The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the disputed domain name, and finds that the requirement of paragraph 4(a)(ii) of the Policy is also met . C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances which are evidence of bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) 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
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location of a product.
According to the material brought before the Panel, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party.
Given the fact that one of the disputed domain names has been directed apparently to the Respondent’s website where the Complainant’s company logo had been displayed in a prominent manner, the Panel finds that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain names (see, Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain names in bad faith.
The Panel finds further, that the Respondent is also using both disputed domain names in bad faith.
The Respondent has apparently linked the disputed domain name to a website where its repair services are offered for products manufactured by the Complainant. The Panel believes that the only reason why the Respondent registered this domain name is, to make consumers aware of its services when they are searching for repair services for the Complainant’s products. Therefore, the Panel finds that 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 considered by Panelists in similar cases as bad faith under the Policy (see e.g. Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946 and AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777).
In this context, it does not make a difference whether there is a disclaimer on the Respondent’s website stating the Respondent is not authorized by the Complainant to repair products covered by the Complainant’s product warranty policy. As it has been stated by the Panel in Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920, such a disclaimer does not offset the obvious risk of “initial interest confusion”. Many of those encountering the Domain Names through a search engine will believe that the landing pages belong either to Complainant or a licensee or authorized distributor. Furthermore, the Respondent has stated on its website, that its repair services are available for all other products of the Complainant. This concerns especially products, which are not covered any more by the Complainant’s warranty policy. There is at least an increased chance that such older products have a higher need for maintenance and repair services than younger products.
As far as the disputed domain name is concerned, the Panel finds that the only reasons why it has been linked to a parking site is that the Respondent expects either to share revenue resulting from the pay-per-click or click-through activities of users who follow the links provided by the registrar (paragraph 4(b)(iv) of the Policy), or to attract buyers who might pay a profitable price for the domain names (paragraph 4(b)(i) of the Policy), or both. The Panel does not need to know which activity is the Respondent’s uppermost intention as paragraphs 4(b)(i) to 4(b)(iv) of the Policy are illustrative and without limitation (see e.g. Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610).
Moreover, the fact that the Respondent replied to the first cease and desist letter sent by the Complainant in an offensive way, did not react to the Complainant’s second cease and desist letter but continued instead its bad faith use of the disputed domain names is considered by this Panel as another proof of bad faith (see in this context also 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).
Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain names have been registered and are being used in bad faith. 7. Decision
For 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 to be transferred to the Complainant.
Christian Schalk
Sole Panelist
Dated: June 22, 2011
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