The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is tanhuajiang of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2012. On April 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On April 11, 2012, the Center transmitted an email to the parties in both the Chinese and English language regarding the language of proceedings. On April 12, 2012, the Complainant confirmed their request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2012.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on June 19, 2012. 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
4.1. The Complainant has provided evidence to substantiate its claim that it is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. Evidence was adduced to show that AB Electrolux is a world leading producer of appliances and equipment for kitchen and cleaning. The Complainant has shown evidence that purportedly shows it to be the market leader in many of the individual product categories in which they compete.
4.2. The Complainant has sold more than 40 million products to customers in 150 countries every year including in China. Such products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under brands such as ELECTROLUX, AEG, AEG-ELECTROLUX.
4.3. The Complainant also produced evidence to show that in 2010, it had accomplished sales of SEK 109 billion and had employed 55,150 employees.
4.4. 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, including in China.
4.5. The Complainant has not stated when the first ELECTROLUX trademark was registered but it does allege that this was done long before the registration of the disputed domain name. The Complainant has shown evidence that it has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these: , .
4.6. Finally, the Complainant states that the awareness of the trademark ELECTROLUX is considered significant in the whole Community to be significant and that the registrant could not have been unaware of the trademark at the time of registration or thereafter because Electrolux is a global company and runs its business all over the world, including in China.
4.7. The Complainant submits that the awareness of the trademark ELECTROLUX is considered in the whole Community to be significant and it relies upon the provisions of Article 6bis of the Paris Convention for protection of Industrial Property and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights that provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that the disputed domain name is confusingly similar to its own trademark ELECTROLUX for several reasons:
(i) The dominant part of the disputed domain name comprises the word “electrolux”, which is identical to the registered trademark ELECTROLUX.
(ii) The addition of a hyphen and the suffix “weixiu” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, “electrolux”. It was submitted that the term “weixiu” is rather fitted to enhance the confusingly similar element, since the word “weixiu” is “service” (repair) in Chinese, as the Complainant is widely known for conducting business with home appliances and service and repair of the same.
(iii) The Complainant referred to Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031 allegedly dealing with the domain name . Unfortunately, there was no annexure on this decision. In any event, the Panel has located the decision and has noted the Complainant’s submission that the other panel held that “In the present case, the disputed domain name incorporates the Complainant’s well-known and widely-registered trademark ELECTROLUX. The addition of the word ‘grupo’ is purely descriptive and does not serve to distinguish, for Policy purposes, the disputed domain name from the Complainant’s registered trademark ELECTROLUX.” The same discussion could be applied in this case as well.
(iv) The Complainant submits that the addition of the genetic top-level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determining the confusing similarity of the trademark.
(v) It then submitted that anyone who sees the disputed domain name is bound to mistake it for a domain name related to the Complainant. The confusing similarity includes an obvious association with the trademark of the Complainant and that there is a considerable risk that the public will perceive the Respondent’s disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. By using “electrolux” as a dominant part of the disputed domain name, the Respondent has exploited the goodwill and the image of the trademark, which may result in dilution and other damage for the Complainant’s trademark.
(vi) The Complainant summed up this part of its case by submitting that it is the owner of the world wide registered trademark ELECTROLUX and that the Respondent registered the disputed domain name which is confusingly similar to the trademark owned by the Complainant. The Complainant summed up by suggesting that the addition of a suffix to a trade or service mark is legally inconsequential and does not prevent a finding of confusing similarity.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
(i) The Respondent has not been authorized or approved by the trademark owner to use the trademark ELECTROLUX.
(ii) The Respondent registered the disputed domain name December 6, 2011. The mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name.
(iii) The Complainant has also not found anything that would suggest that the Respondent has been using “electrolux” in any other way that would give him any rights or legitimate rights in the disputed domain name and consequently cannot claim any rights established by common usage.
(iv) The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. By intentionally choosing a domain name based on a registered trademark, this disputed domain name appears to be an official service website endorsed or sponsored by the Complainant.
(v) By using the disputed domain name, the Respondent is likely to mislead and deceive consumers into believing that he has an affiliation or approval with the original trademark owner when this is not the case. The Respondent has so far not demonstrated its rights or legitimate interests in the disputed domain name in order to refute the prima facie case made out by the Complainant. The owner of the disputed domain name does not reflect the disputed domain name. The disputed domain name is registered in the name of tanhuajiang, which has no relationship with the Complainant.
5.3 The Complainant, lastly, contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
(i) The Complainant alleged that the Respondent has registered the disputed domain name in bad faith because the trademark ELECTROLUX has the status of a well-known and reputed trademark with a substantial and widespread reputation “throughout the whole Community and throughout the world” and that “The awareness of the trademark is to be considered, in the whole Community in general, to be significant and substantial.” It submitted that the number of third party domain name registrations, comprising the trademark in combination with other words, has skyrocketed over the last years. The considerable value and goodwill of the mark ELECTROLUX is most likely a large contribution to this and also what made the Respondent register the disputed domain name.
(ii) The Complainant provided evidence that it had tried to contact the Respondent on January 31, 2012 through a cease and desist letter. The Complainant did not receive a reply and sent a reminder on March 3, 2012 and a final reminder on March 9, 2012 without any reply. The Complainant relies upon these letters as well as a few prior UDRP decisions which suggest that a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith.
(iii) The disputed domain name is used to attract visitors by including the trademark ELECTROLUX. The Complainant alleged that the Respondent promotes its business and the term “weixiu” within the disputed domain name means “service” (repair) which is a business in which the Complainant trades.
(iv) Since the Respondent must have knowledge of the Complainant’s rights in the ELECTROLUX trademark at the moment it registered the disputed domain name, and the Respondent has no rights or legitimate interests in the disputed domain name, the disputed domain name was registered and is being used in bad faith.
(v) Finally, the Complainant submits that the disputed domain name is designed to attract Internet users who are looking for Complainant’s services and that this causes confusion with the Complainant’s marks and websites and also disrupts the Complainant’s business by diverting consumers away from Complainant’s official website in China. As a result thereof, the Respondent is using the disputed 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 mark as to the source, sponsorship, affiliation or endorsement of the website.
The Complainant requests a decision that the disputed domain name be transferred to the Complainant. B. Respondent
5.4 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 The Complaint was filed in the English language. On April 8, 2012, the Center transmitted an email to the parties in both Chinese and English regarding the language of proceedings. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or as specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the concerned registrar that the language of the registration agreement for the disputed domain name is Chinese. Although the Chinese language is the language of the registration agreement for the disputed domain name, the Complainant asserted its request that English should be the language of proceedings. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
6.2 The Complainant has submitted that it had sent the cease and desist letter to the Respondent in the English language. The Complainant submits that the Respondent had never replied to the letter, nor stated that he does not understand the content. It then submitted that “[i]f he had not understood the content of the cease and desist letter, the natural thing would have been to send a short email stating that he did not understand the content of the letter.” The Complainant also complained that it would be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint into Chinese.
6.3 Unfortunately, these are not persuasive arguments, let alone properly constructed legal submissions with valid reasoning backed by jurisprudence. The Panel is unable to accept such illogical submissions. The inability of the Complainant to communicate in the Chinese language or its preference to communicate in English by itself is not and cannot be a proper legal basis for not adopting the proper language of proceedings as set out in paragraph 11 of the Rules. This has been ruled in previous UDRP decisions including in the case of Compagnie Gervais Danone v. yunengdonglishangmao(beijing)youxiangongsi,WIPO Case No. D2007-1918. It would be in fact a very poor argument for the Complainant to submit that because it has no knowledge of the Chinese language.
6.4 The fact that a complainant may have to retain specialized translation services at a cost that is likely to be higher than the overall cost for the present proceeding is not a legal reason at all that can be accepted by this Panel. At the end of the day, it is up to any complainant to secure the services of legal counsel that can communicate in the language in which the language of the registration agreement is to be based.
6.5 What is deemed to be fair to one party may be deemed to be unfair to the other party. It is a fundamental rule of the UDRP administrative proceedings that a party should be allowed to present his case. In the event that the language of the administrative proceeding has to be held in a particular language for the “costs convenience” of one party, thereby depriving the other party of being entitled to communicate in the language set down by the Rules, this is unfair and inequitable.
6.6 Looking at the submissions that have been made by the Complainant, it is self-evident that the Complainant does not indeed understand the Chinese language. It has submitted that “the term ‘weixiu’ is rather fitted to enhance the confusingly similar element, since the Chinese word ‘weixiu’ translates into the word ‘service’ in English” (which should be “repair” in fact), therefore the Complainant has apparently relied on Google Translate to discover this).
6.7 In the circumstances, had this been a truly contested matter, the Respondent may have been likely to have been entitled to expect a Panel to rule that the language of the proceedings should take place in Chinese, in strict adherence to paragraph 11 of the Rules. There is also no legal basis or logic to suggest that if a Respondent chooses not to respond to a “cease and desist letter” written in the English language, then the conclusion is such that the Respondent understands the language in which that “cease and desist letter is written in. The Complainant has to discharge its burden of proof and cannot simply rely upon a failure to reply to a “cease and desist letter” as conclusive proof that the other party will be deemed to understand the language of such a letter.
6.8 However, in the present case, considering the composition of the domain name and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11(a) of the Rules, and bearing in mind the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case. The Panel notes however that had the Respondent objected to the Complainant’s request the Panel would have had little hesitation in requiring a translation of the Complaint.
6.9 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether Respondent has received notice of this proceeding. However, having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.10 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove his case in accordance with the UDRP rules. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with his case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif,WIPO Case No. D2006-0700).
6.11 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, supra). Namely, the complainant must prove that:
(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
6.8. Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107). The Complainant has appended to the Complaint a list of registered trademarks and it is quite clear that the Complainant is the legitimate owner of these trademarks.
6.9 The Complainant’s reference to Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031 that dealt with the domain name was unhelpful to the present case. This is because the case was decided on factual grounds that was unique to that case and was not decided on a point of law. Regardless of the fact that this panel may have come to a different conclusion on the case cited by the Complainant, this panel respects the decision of the other panel but respectfully disagrees to adopt the conclusion taken by the earlier panel.
6.10 This Panel wholeheartedly agrees with the Complainant’s other submission that the addition of the genetic top-level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity of the trademark. The Respondent’s registration consists of the use of the Complainant’s trademark ELECTROLUX which causes confusing similarity. Previous decisions pronounced under the UDRP in similar situations such as F. Hoffmann-La Roche AG v. Drug Sale,WIPO Case No. D2006-0066 had correctly decided that such additions of generic words were not enough to distinguish capacity in the context of the domain name and they do not alter the value of the trademarks represented in the domain name. Given this, the Panel has little difficulty in concluding that the disputed domain name is confusingly similar to a number of trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
6.11 The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademark for ELEXTROLUX has been registered as a word and figure mark in several classes in more than 150 countries all over the world, including in China, where the Respondent is located. At the heart of the Complaint is the Complainant’s contention that the Respondent has taken the trademark of the Complainant with a view to attracting Internet users to its website to intentionally link its domain name with ELECTROLUX trademark. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the disputed domain name.
6.12 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.
6.13 As previously held by other UDRP panels, “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”. (See eBay Inc. v. Akram Mehmood,WIPO Case No. DAE2007-0001). As another panel held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by ,WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).
6.14 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain name, or that Respondent has made noncommercial or fair use of the name. The Respondent has also not used the disputed domain name in connection with a bona fide offering of goods or services.
6.15 In addition, the Panel has noted that the owner of the disputed domain name “tanhuajiang” does not reflect the disputed domain name, which has no relationship with the Complainant. The Panel thus finds that Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is confusingly similar to the Complainant’s mark. Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
6.16. The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademark for ELEXTROLUX has been registered as a word and figure mark in several classes in more than 150 countries all over the world, including in China, where the Respondent is located.
6.17. The Complainant then submitted that the selection of the disputed domain name, which wholly incorporates the ELECTROLUX trademark was done in bad faith. The Panel accepts this line of submission and accepts the contention that the Respondent registered the disputed domain name in the knowledge of the Complainant’s business and its use of the ELECTROLUX trademark. The Panel accepts the Complainant’s submission that the Respondent is using the disputed domain name to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark.
6.18. Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) of the Policy refers to use of a domain name 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 of a website.
6.19. Given that the Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it was using the disputed domain name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel accepts the submission that the Respondent is intentionally attempting for a commercial purpose to attract internet users to the Respondent’s website. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.20. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. However, the Panel would also add a further point before drawing this decision to a close.
6.21. In coming to its decision the Panel has given very little weight to the Complainant's contention that the failure on the part of the Respondent to respond to its “cease and desist letter” is also evidence of bad faith. Whilst previous UDRP panels have indeed suggested that this was one factor that could be taken into account on the issue of bad faith registration and use, this Panel would suggest that this is a tempting conclusion that a panel should reach with great care. There may, indeed, be occasions where a failure to respond to a factual allegation in such a letter may tell against a respondent. However, that will depend upon the exact nature of the allegation and all the circumstances of the case. See Deutsche Post AG v. Yonghua Zhang,WIPO Case No. D2008-0326.
6.22. Further, if a complainant wants a panel to draw an adverse inference from a failure on the part of a respondent to respond to a “cease and desist letter” or any other “letter before action”, it is essential that the complainant puts that letter before the panel so that it can properly consider the same. The complainant has to discharge its burden of proof and cannot simply rely upon a failure to reply to a “cease and desist letter” as conclusive proof that there has been bad faith. Regardless of the fact that the Rules have provided that the language of proceedings is to be in the language of the registration agreement, i.e. Chinese in the current case, any “cease and desist letter” even if written in the Chinese language can only amount to no more than an adverse inference. Although this has been done by the Complainant, the failure to respond to the cease and desist letter is not by itself conclusive of bad faith registration and use of the domain name for the reasons give earlier above. Nevertheless, the Panel has been able to conclude that the Respondent registered and used the disputed domain name in bad faith for other reasons. 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 name be transferred to the Complainant.
Dr Colin Yee Cheng Ong
Sole Panelist
Dated: July 30, 2012
Full & Egal Universal Law Academy