Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Jorgeariel Figueroa Rodriguez of Madrid, Spain. 2. The Domain Name And Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On August 1, 2011, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On August 2, 2011, 1&1 Internet AG transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center noted that the Complaint had been filed in English whilst the language of the agreement for the disputed domain name is Spanish. Accordingly, the Center notified said issue to the parties on August 4, 2011. On August 5, 2011, Complainant filed a language request for English to be the language of the proceeding together with supporting evidence. Respondent did not submit any argument with regard to the language issue.
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 (in English and Spanish) Respondent of the Complaint, and the proceedings commenced on August 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2011. Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on September 2, 2011.
The Center appointed Fernando Triana as the sole panelist in this matter on September 21, 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. Language Of The Proceedings
Paragraph 11 of the Rules states as follows:
“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.”
Pursuant to the above cited paragraph 11 of the Rules, the language of the proceeding must be the language of the Registration Agreement, that is, Spanish. However, Complainant filed a language request for English to be the language of the proceeding. It is within the discretion of the Panel to decide the language of the proceeding, considering the special circumstances of the case.
As mentioned in the procedural history, after the Center notified Respondent of the Complaint both in English and Spanish, Respondent failed to submit a response to the Complaint. There is evidence in this administrative proceeding that Respondent received on August 12, 2011, Written Notice of the Complaint, which was sent to its attention by courier, in addition to the Complaint and to the Notification of the Complaint by e-mail.
The Panel deems Respondent’s default as evidence of his lack of interest in this administrative proceeding and its outcome. Considering, Complainant’s clear interest in the proceeding and its language request, this Panel hereby decides that, in accordance with paragraph 11 of the Rules, English is necessarily the language of the present administrative proceeding and thus the decision will be rendered in English. 5. Factual Background
Complainant owns the mark ELECTROLUX and marks comprising the word “Electrolux” in Sweden, the United States of America, Spain, Italy, United Kingdom of Great Britain and Northern Ireland, Colombia and many other countries.
Complainant submitted as Annex 6 to the Complaint a listing of worldwide registrations of the ELECTROLUX marks as an attempt to prove its ownership over them. However, the Panel did not find this listing as per se satisfactory evidence of such assertion. Therefore, the Panel conducted a search ex officio on the online databases of the Trademark Offices of the United States of America, Sweden, the Office of Harmonization of the Internal Market (OHIM) of the European Union, Brazil, Canada and Colombia to confirm the Complainant’s contention.
The results of this search confirmed that the Complainant owns not only the registrations listed in the evidence submitted, but also several registrations and common law rights over the ELECTROLUX marks in international classes 3, 7, 9, 11 and 37, among others. The oldest found dates back to 1928.
Complainant owns over one hundred (100) domain name registrations comprising the mark ELECTROLUX.
Likewise, Complainant simply submitted as Annex 7 to the Complaint a listing of domain names claiming ownership over them. The Panel conducted a search ex officio at the WhoIs service and confirmed this contention.
Complainant is a Swedish company and a world leader producer of home appliances and appliances for professional use. ELECTROLUX products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed marks such as ELECTROLUX, AEG, AEGELECTROLUX, etc.
The ELECTROLUX mark is a well-known mark, whose awareness among consumers around the world is significant.
Complainant contends the mark ELECTROLUX is a well-known one which deserves the protection granted by Article 6 of the Paris Convention and Articles 16.2 and 16.3 of the TRIPS Agreement. So as to prove this contention, Complainant limited its evidentiary efforts to just mention a UDRP case, AB Electrolux v. Ilgaz Fatih MicikWIPO Case No. D2009-0777).
The Panel wishes to highlight that a mark’s alleged well-know character must be proven by the interested party and cannot simply be taken for granted. The Panel cannot accept the evidence of the ELECTROLUX mark’s well-known character in 2009 as evidence of its fame in 2011. The famous or well-known character of a mark must be analyzed within a specific time and territory. Thus the analysis conducted in 2009 will not necessarily lead to the same conclusion in 2011. However, after i) checking the online databases of the above mentioned Trademark Offices, ii) conducting searches on the GOOGLE search engine of the Complainant and its mark ELECTROLUX, ii) conducting a search of the Complainant and its mark ELECTROLUX in Wikipedia, iv) visiting a number of the Complainant’s websites, some of them shown in Annex 9 to the Complaint, and v) visiting online appliances stores, the Panel acknowledges that the well-known character of the ELECTROLUX mark can be extended until 2011. 6. Parties’ Contentions A. Complainant
Complainant has registered the mark ELECTROLUX as a word and figure mark in several classes in more than 150 countries including Spain.
The ELECTROLUX mark is a well-known mark.
The disputed domain name comprises the ELECTROLUX mark. The suffix “Madrid” is: “completely insufficient to dispel user confusion from inevitably occurring. In fact, doing so very likely exacerbates than ameliorates the confusion”, as held in PepsiCo, Inc. v. QWO,WIPO Case No. D2004-0865. The addition of the top level domain “.info” does not have any impact on the overall impression of the domain name and is irrelevant to assess its degree of similarity to the ELECTROLUX mark. Therefore, consumers may perceive the disputed domain name as owned by Complainant, or may infer a relationship between Complainant and Respondent.
Respondent does not own a trademark or trade name corresponding to the disputed domain name . Complainant has not authorized Respondent to use its mark ELECTROLUX.
Respondent has intentionally chosen a domain name comprising a registered mark to generate traffic to a web site displaying sponsored links.
Complainant tried to contact Respondent by means of a Cease & Desist letter dated May 25, 2011. Two additional reminders were sent on June 16, and June 21, 2011, and Respondent did not respond to any of them. B. Respondent
No Response was filed to the Complaint. 7. Discussion And Findings A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Likewise, paragraph 10(d) of the Rules, provides that: “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
The Panel wants to make special emphasis to the evidence filed by the parties to prove their assertions, which has been thoroughly studied in order to determine its relevance and weight in arriving to a decision. The statements that have been accompanied by evidence have been given more importance than the mere statements made by the parties without further demonstration to its existence. The Panel is empowered to confirm this evidence ex officio as in the present case, the Panel considered it necessary to exercise his power so as to confirm the evidence submitted by Complainant.
In addition, the Panel will analyze the Respondent’s default within this Administrative Proceeding in accordance with Paragraph 14 of the Rules, which states as follows:
14 “Default.
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. (Bold and underlining added).
Hence, the Panel will deem Respondent’s failure to respond to the Complaint as a presumption against him, and will accept as sufficient the evidence filed by Complainant, and confirmed ex officio, to prove its claims, since it has not been contested by the Respondent.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that a domain name should be cancelled or transferred (even in the case of Respondent’s default):
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
However, UDRP Panels have unanimously consented that requiring Complainant to prove the lack of rights or legitimate interests of Respondent in the disputed domain name is often an impossible task: It is not only a negative but also demands access to information that is mostly within the knowledge of Respondent.
In Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121, the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head.”
Therefore, a complainant is required to make a prima facie case that the respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of proof shifts to the respondent, who must prove those rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have met the second element of paragraph 4(a) of the policy. B. Identical or Confusingly Similar
Policy paragraph 4(a) requires Complainant to prove rights in a trademark or a service mark. The relevant intellectual property rights are only acquired by registration before the competent office in many jurisdictions of the world.
Complainant alleges that it owns rights in the ELECTROLUX mark in countries such as Spain, Brazil, Canada, Colombia, Sweden, Canada, etc., according to the listing submitted as Annex 6 to the Complaint. The Panel confirmed this allegation.
Complainant also contends that the disputed domain name is confusingly similar to its well-known mark ELECTROLUX.
The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive1.
The listing of certificates of registration of the mark ELECTROLUX (Annex 6 to the Complaint) plus the results of the searches conducted ex officio by the Panelist in the online databases of the Trademark Office of the United States of America, the Office of Harmonization of the Internal Market (OHIM) of the European Union , Brazil, Canada, Colombia and Sweden appear to be incontestable and conclusive evidence of its ownership of the mark and the exclusive right to use it in connection with home appliances and appliances for professional use.
Respondent has failed to respond to the Complainant’s contentions2.
Therefore, the Pane finds that it is proven in this proceeding that Complainant owns rights in the ELECTROLUX mark for the purposes of Policy 4(a)(1).
Before establishing whether or not the disputed domain name is identical to the Complainant’s ELECTROLUX marks, the Panel points out that the addition of generic top-level domains (gTLD), i.e., “.com”, “.info”, “.edu”, “.org”, ”.co” are not to be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark. Neither the addition of country code top-level domains (ccTLD), nor the insertion of a gTLD has a distinctive function.
UDRP panels have typically accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks WIPO Case No.D2000-0477, the Panel stated that: “the addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.” This same conclusion applies to the “.info” gTLD.
Complainant asserts that the inclusion of the suffix “Madrid” in the disputed domain name : “is not relevant and will not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, instantly recognizable as a world famous trademark”. The Panel concurs with the Complainant. As prior panels have said, referring to the addition of a geographic term to a registered mark: “none of these additions, either alone or in conjunction with one another, are able to overcome a finding of confusing similarity between the disputed domain names and Complainant’s mark.”3
The Panel adds that including a geographic term to a registered mark is a trend in the construction of domain names. Trademark owners around the world do so, especially when their business is global, or at least is not limited to a specific country. This is the case here, therefore the Panel also concurs with the conclusion that consumers may easily perceive the disputed domain name as owned by Complainant.
Therefore, in the present case, the disputed domain does reproduce entirely Complainant’s ELECTROLUX well-known mark along with a generic geographic descriptor, which makes them confusingly similar.
This Panel concludes that the disputed domain name confusingly similar to the Complainant’s trademark pursuant to Policy 4(a)(1). C. Rights or Legitimate Interests
Policy paragraph 4(c) states that the following circumstances in particular but without limitation, if found by the sole Panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the Domain Name:
(1) 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
(2) 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
(3) you are making a legitimate noncommercial 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.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name and actually proves its rights and legitimate interest in it. The sole Panelist accepts this assertion as a prima facie case made by Complainant that shifts the burden of proof to Respondent.
Respondent did not contest the Complainant’s contentions and did not submit any evidence of the circumstances pursuant Policy, paragraph 4(c) or any others to demonstrate his rights or legitimate interests in the disputed domain name, despite of the fact that he timely received Notification of the Complaint. This Panel concludes that Respondent did not contest Complainant’s contentions either because it did not want to, or it did not care about this proceeding or simply because he did not have any arguments against those of Complainant.
Thus this Panel finds that Respondent lacks of rights or legitimate interest in the disputed domain name . D. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, 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:
(1) 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
(2) 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
(3) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.
Complainant alleges that the considerable value and goodwill of the trademark ELECTROLUX is the reason why Respondent registered the domain name . Complainant also cites prior UDRP cases proving that this is not the first time that the ELECTROLUX mark has been appropriated by unauthorized third parties to construct and register domain names.
The Panel also believes that Respondent would not have constructed the disputed domain name with the inclusion of the ELECTROLUX word, if he lacked of prior knowledge of the ELECTROLUX mark. Therefore, he must have had actual knowledge of the ELECTROLUX mark before March 9, 2011, which is the registration date of the domain name .
The word “electrolux” has neither meaning in the Spanish nor in the English languages. The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion.
In addition, if Respondent knew the mark, it also must have known its owner, or at least it must had been clear that it was not his but someone else’s mark. Registering a domain name while being aware that it comprises someone else’s mark, is also deemed as registration in bad faith.
Complainant claims that the disputed domain name currently reverts to a website displaying sponsored links.
This Panel visited the website to confirm that the language and the location of the sponsored links change depending on the location of the user. For instance, when viewed from Geneva the website at the disputed domain name displays a listing of sponsored links regarding hotels and flats in Madrid, branding and graphic solutions in Barcelona, dating sites in German language, etc. Yet, the website visited by the Panelist (who is located in Colombia) shows mostly links related to technical service for Whirpool refrigerators and LG, Challenge and Whirpool washing machines in Colombia.
In addition, according to the Complaint the website displays the following message on its top: “. This domain name has just been registered. Why is this page displayed?” The Panelist confirmed that the website visited displays an equivalent message in Spanish.
After clicking on this message, a popup window appears explaining that the temporary website displayed when acquiring the Hosting Pack service of the registrar 1&1 Internet AG has not yet been replaced by a website created by the domain name’s owner.
This explains why Complainant also says that it is irrelevant whether or not Respondent has influenced which links to include in the website, as it is irrelevant whether or not Respondent is actually getting revenue from the page himself.
This Panel strongly believes that Respondent, as the registrant of a domain name, is the only person responsible for the content of his website. If the “temporary website of the registrar” is still being displayed, that is only the registrant’s responsibility, since he is the only entitled to replace it for a website of its own.
In addition, whether or not Respondent is getting the revenue of the pay-per-click advertising displayed on this “temporary website” is irrelevant for this case. The Panelist wishes to highlight that the links displayed in this “temporary website” were related to technical services of competing goods of those of Complainant’s. This does not mean that Complainant’s competitors are behind these links, it only means that whoever is choosing the content of the “temporary website” is taking advantage of the consumers’ awareness of the ELECTROLUX mark to lead them to websites offering complementary services of Complainant’s goods. Again, only the Respondent can be held liable for this.
Therefore, this Panel finds that Complainant satisfied the elements Policy, paragraph 4(a)(3). 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 disputed domain name be transferred to the Complainant.
Fernando Triana
Sole Panelist
Dated: September 27, 2011
1 The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it. However, the UDRP does not discriminate between registered and unregistered trademarks (see MatchNet PLC. V. MAC Trading,WIPO Case No. D2000-0205) and thus, it is well established that a complainant needs not to own a registered mark to invoke the Policy. It is sufficient in certain common law jurisdictions that a complainant has rights in an unregistered mark as to deserve legal protection.
Thus the Panel finds that Complainant established rights in the ELECTROLUX mark based on its use in commerce, and also through registrations in several countries.
2 See EAuto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises Inc., WIPO Case No. D2000-0047.
3 See Digi-Key Corporation v. Paul Potts / Peter A. Paulsen / David Craig / Henry Cavill / David Bowie, NAF Claim No. FA1101001370361.
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