The Complainant is AB Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Nguyen van su Ong of Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with LiquidNet Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 17, 2012. On September 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and disclosing registrant and contact information for the disputed domain name.
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 September 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2012.
The Center appointed Timothy D. Casey as the sole panelist in this matter on November 8, 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. On November 21, 2012, the Panel extended the decision due date to November 29, 2012. On December 10, 2012, the Panel issued Order No. 1, in both English and Vietnamese, giving Respondent a further opportunity to submit a response to the Complaint and to provide an explanation as to why Respondent believes it has any rights or legitimate interests to use the disputed domain name, which includes the ELECTROLUX trademark, to offer repair services for ELECTROLUX products and other companies’ products. Respondent was given until December 17, 2012 to respond. Respondent did not reply to the Panel’s Order No. 1. 4. Factual Background
The Domain Name was registered by Respondent on March 20, 2012. Complainant has numerous registered trademarks in many countries (see, Annex 6 to the Complaint), including in Viet Nam where Respondent resides, prior to registration of the Domain Name. In addition, Complainant was founded in 1901 and registered as a Swedish company in 1919 as AB Electrolux. 5. Parties’ Contentions A. Complainant
Complainant contends it is a global leader in home appliances and appliances for professional use, selling more than 40 million products, including refrigerators, dishwashers and washing machines, to customers in 150 countries every year. Complainant had sales of SEK 109 billion and 55,150 employees in 2010 and has used the Trademark ELECTROLUX extensively in more than 150 countries on its products and services for many years, allegedly acquiring the status of a well-known trademark in the areas of appliances and equipment for kitchen, cleaning and outdoor products. Complainant also has almost 700 gTLDs and ccTLDs worldwide. Although Annex 6 includes a long list of apparent word marks for the Trademark ELECTROLUX, Complainant contends that ELECTROLUX is also registered as a figure or logo mark, and that such registrations also predate Respondent’s registration of the Domain Name.
Complainant contends that the dominant part of the Domain Name comprises the word “Electrolux”, which is identical to the Trademark, and that the Domain Name is confusingly similar to the Trademark. Complainant relies at least upon a prior UDRP decision to support the position that the Trademark is famous. Complainant also contends, on the one hand, that the prefix “chuyensuachuamaygiate” is not relevant and has no impact on the overall impression on the dominant part of the Domain Name, while, on the other hand, stating that the prefix means “washing machine repair” in Vietnamese. Complainant contends that the combination of the prefix with the Trademark strengthens the impression that the Domain Name belongs to, or is affiliated with Complainant. Complainant contends that the long length of the Domain Name does not detract from the potential for affiliation between the two parties. Complainant likewise contends that the top-level domain has no impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant. In summary, Complainant contends that “anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant,” which leads to the exploitation of the goodwill and image of the Trademark, and which may result in dilution and other damages to the Trademark.
Complainant contends that Respondent has not registered the Domain Name as a trademark and is not licensed or otherwise authorized by Complainant to use the Trademark, and the lack of such license or authorization may be evidence of no actual or contemplated bona fide or legitimate use of the Domain Name. Complainant contends that Respondent’s mere registration does not give rise to any right or legitimate interest in the Domain Name and has found no evidence to suggest that Respondent has been using the Trademark in any other way that would give Respondent any legitimate right in the name, such as a common usage.
Complainant notes that the Domain Name is connected to the homepage of a repair center called “TRUNG
TÂM BẢO HÀNH SỬA CHỮA MÁY GIẶT ELECTROLUX TẠI HÀ NỘI.” Complainant provides no translation of this name, but according to Google Translate, the name roughly translates to “MIDDLE CENTER OF WARRANTY REPAIR WASHING MACHINE ELECTROLUX IN HANOI”. Complainant states that the use of this name shows that Respondent intentionally chose a domain name based on a registered trademark which connects to a website appearing to be an official service center endorsed or sponsored by Complainant. Complainant contends that this misleads Internet users and is not a bona fide offering of goods or services. Further, Complainant contends that Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 because Respondent does not adequately disclose the relationship with Complainant, or lack thereof, and therefore conveys the false impression of being an authorized service center for Complainant’s products. Complainant also contends that Respondent’s website offers services and goods from Complainant’s competitors.
Complainant contends that the Trademark ELECTROLUX is well known with a substantial and widespread reputation throughout the world and that the value and goodwill of the Trademark was likely a large contributor to Respondent’s registration of the Domain Name.
Complainant states that it contacted Respondent through a cease and desist letter, to which there was no reply, noting a trademark violation and requesting a voluntary transfer of the Domain Name to Complainant. Complainant sent two reminders. Complainant notes “The Respondent finally replied in Vietnamese and asked how to transfer the Domain Name”, to which Complainant sent instruction in English and Vietnamese. There was no further reply from Respondent.
Complainant contends that Respondent knew of the Trademark prior to registering the Domain Name, so therefore the Domain Name was registered in bad faith. Complainant also contends that Respondent’s use of the Domain Name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Trademark and Complainant’s sponsorship, affiliation or endorsement of the website. Complainant notes that there is no disclaimer or other information stating the non-relationship between the Domain Name and Complainant on the website, which further demonstrates Respondents bad faith, as do links at the bottom of the website to third party websites not associated with Complainant.
Complainant requests the Domain Name be transferred to Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Given Complainant’s long use of the ELECTROLUX Trademark, the Panel finds that Complainant has trademark rights in the ELECTROLUX trademark.
Complainant contends that the Domain Name is confusingly similar to the Trademark. The threshold test for confusing similarity under the Policy involves a comparison between the Trademark and the Domain Name to determine the likelihood of confusion between the Domain Name and the Trademark. In order to satisfy this test, the Trademark must usually be recognizable as such within the domain name. Here, the ELECTROLUX Trademark is included in the Domain Name after a prefix comprising a long string of Vietnamese words meaning, according to Complainant, “washing machine repair.” Hence, the Domain Name in English appears to be ”.
Complainant contends that the dominant part of the Domain Name is the word “Electrolux” and the prefix “chuyensuachuamaygiate” is not relevant and has no impact on the overall impression on the dominant part of the Domain Name. Complainant also contends that the combination of the prefix with the Trademark strengthens the impression that the Domain Name belongs to, or is affiliated with Complainant. Complainant contends that the long length of the Domain Name does not detract from the potential for affiliation between the two parties.
While the Panel agrees with Complainant that the top-level domain has no impact on the overall impression of the dominant portion of the Domain Name and is therefore irrelevant, the Panel is not as convinced by Complainant’s arguments with respect to the rest of the Domain Name. Complainant’s contention that “anyone who sees the Domain Name is bound to mistake it for a name related to the Complainant,” is not convincing. The Panel reads the Domain Name as expressing the performance of washing machine repair on Electrolux products. Such a use appears to be descriptive and as such is not as likely to be bound to being mistaken as a name related to Complainant.
Although the addition of words such as “washing machine repair” could in some circumstances be consistent with a bona fide use, UDRP panelists have consistently held that the addition of descriptive wording to well-known marks does not avert a finding that a domain name is confusingly similar to a trademark. The Panel does not dispute Complainant’s contention that the Trademark is well known, so despite Complainant’s otherwise unconvincing arguments, Complainant gets the benefit of the doubt in this regard. Accordingly, it would appear that the descriptive prefix in this case does not prevent Complainant from satisfying the confusing similarity element in the context of a UDRP proceeding. While the test may be different under more traditional trademark law, the Panel is not required to consider a full set of traditional likelihood of confusion factors in making this determination. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Section 1.1.
The Panel finds the Domain Name to be confusingly similar to the Trademark, and that the first element of the Policy has been met by Complainant. B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in Domain Name, Respondent must show:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate 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 contends that Respondent is not commonly known by the Domain Name and otherwise has no rights or legitimate interests in the Domain Name, and that it did not in any way authorize Respondent’s use of the Trademark. Respondent did not reply to Complainant’s contentions.
Complainant contends that Respondent’s use of the Domain Name is not in connection with a bona fide offering of goods or services because Respondent is not an authorized or licensed repair service, and, therefore, that Respondent’s offering cannot be bona fide. The Panel notes that Respondent’s website is entitled “TRUNG TÂM BẢO HÀNH SỬA CHỮA MÁY GIẶT ELECTROLUX TẠI HÀ NỘI,” apparently translating to “MIDDLE CENTER OF WARRANTY REPAIR WASHING MACHINE ELECTROLUX IN HANOI.” Complainant further states that the use of this title shows that Respondent intentionally chose a domain name based on a registered trademark which connects to a website appearing to be an official service center endorsed or sponsored by Complainant. Complainant contends that this misleads Internet users and is not a bona fide offering of goods or services. Complainant also relies upon the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, for supporting its position that because Respondent does not adequately disclose a lack of relationship with Complainant, Respondent falsely creates the impression of being an authorized service center for Complainant’s products. Complainant also contends that Respondent’s website offers services and goods from Complainant’s competitors.
Again, the Panel does not find many of Complainant’s arguments convincing or well-articulated. The Policy requires Respondent’s services to be bona fide, but that does not mean that such services must be authorized, licensed or official. The services of unauthorized or unofficial service providers may be considered bona fide for purposes of the Policy. See WIPO Overview 2.0, Section 2.3 citing, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524. Repair services are often legitimately provided by independent entities that are not contractually affiliated with the companies whose products they service. There is no reason to inhibit the ability of such entities to identify their services to consumers. To the extent Respondent provides the services of repairing Electrolux washing machines, Respondent can certainly advertise this fact, and the mere act of doing so does not make Respondent’s services not bona fide. Evidence of Respondent’s unauthorized repair services is not sufficient to establish a prima facie case and shift the burden to Respondent.
Complainant’s allegation that Respondent’s website creates the false impression of being endorsed or sponsored by Complainant, which misleads users and therefore cannot be a bona fide offering of goods or services, is also not well supported by the facts. A Google Translate translation of the wording on the main portion of Respondent’s website reads as follows:
CENTER OF WARRANTY REPAIR WASHING MACHINE ELECTROLUX IN HANOI
Reliable address for all the family
We are committed to make you happy!
Professional repair - fast service - do not be afraid too far
Quick fix repair center incidents WASHER (ELECTROLUX) professional at home and work.
Serve quickly all over Hanoi and neighboring provinces
WASHING MACHINE:
Quick fix the washing machine incident (ELECTROLUX) professional.
Damage the circuit - that - but do not run - do not squeeze - squeeze off - spills - not water - list keys, cage running but not recording, the camera flashed up and interrupt, do not press the start button. ...!
All equipment after repair are warranted.
If families with washing machine. Firm (ELECTROLUX) have problems please pick up our call center immediately.
Service 24/24h all time (for holidays holidays).
There is a warranty repair center washer (ELECTROLUX) Hanoi's most prestigious customers are the washing machine brand products (ELECTROLUX) is broken for you, please contact us.
With a team of skilled technicians in charge, we believe will satisfy our customers.
Please call us when you need to be attentive service dedicated
Along with the extensive network of repair Hanoi and neighboring provinces will serve you goods in the fastest time!
The Panel made no attempt to translate Respondent’s entire website, but the language in this main portion does not support Complainant’s contention. Respondent appears to merely be offering to quickly and professionally repair Electrolux washers experiencing a variety of different problems. Respondent states that after repair, the equipment will be warranted, which appears to indicate that Respondent is warranting its repair work, rather than attempting to falsely establish itself as a warranty repair center for Complainant. Although Respondent later states “There is a warranty repair center washer (ELECTROLUX),” it is not clear whether this statement refers to Respondent’s warranted repair services or is an attempt to mislead consumers into thinking that Respondent’s business is a warranted repair center for Complainant’s products.
As Complainant made no clear arguments in this regard, the Panel will assume that Respondent was merely indicating, as noted above, that it would warranty the work it performs on Complainant’s products.
Nothing else in this language appears to indicate that Respondent is holding itself out as being “official.” In fact, the low quality of Respondent’s website appears to create the opposite impression. While, Respondent uses the Trademark in numerous places, and also uses what appears to be an ELECTROLUX logo in numerous places, that logo appears to be cut and pasted from Complainant’s own website, as do many of the images of washers and other products displayed on Respondent’s website. If Respondent were an official repair center for Complainant’s products, it is doubtful that Respondent would have to resort to cutting and pasting images from Complainant’s own website in order to create its own, nor is it likely that an official website would be organized in the same manner or make such extensive use of the Trademark.
Nevertheless, other factors are important to consider in this instance.
In citing the standards articulated in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, Complainant states “All criteria needs to be uphold to fall within the safe harbours of paragraphs 4(c)(i) and 4(c)(ii). If the Respondent was to be treated as an authorized reseller, the Panel would probably apply the Oki Data Test. However, it is important to point out that in the current case, the Respondent isn’t an authorized reseller, never the less, the Oki Data test has been widely adopted by Panels and cited even if it refers to a non-authorized reseller.” Complainant then adds “the Respondent does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant and does therefore conveying the false impression that the Respondent is an authorized service center for the Complainant’s products. Also as earlier stated, the website offers services and goods from the Complainant’s competitors.”
The test set forth in Oki Data is more detailed than Complainant contends and if it is going to be relied upon by Complainant, Complainant should have fully set forth the test and more carefully applied that test to the facts. According to Oki Data, in order to be considered bona fide:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the website only to sell the trademarked goods (otherwise its activities could be viewed as a ‘bait and switch’ operation);
(iii) the respondent’s website should accurately disclose the respondent’s relationship with the trademark owner; it should not falsely suggest that it is that of the trademark owner, or that it is the official site;
(iv) the respondent must not try to corner the market in domain names pertaining to the trademark. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
As previously noted by the Panel, Respondent does appear to actually be offering the services at issues, so the requirements set out for Respondent under this first element of the test are met.
With respect to the second test, Respondent does not appear to sell Complainant’s products through the website, but rather offers repair services for such goods. However, since Complainant is also in the business of offering repair services for its products, the Panel sees no difference between selling products or offering repair services for such products as far as this second element is concerned.
Complainant unfortunately does not offer any argument as to how Respondent’s repair services for a variety of competitive goods constitutes a “bait and switch” operation as precluded by Oki Data, but in the absence of any further explanation from Respondent, the Panel concludes that the facts in this case support a finding that the second element of the test is not met by Respondent. If Respondent only provided repair services for ELECTROLUX products, Respondent’s use of descriptive wording in combination with the ELECTROLUX Trademark as part of the disputed domain name might have been acceptable as a purely descriptive use of the Trademark, were it not for the fact that Respondent also provided repair services for competitive products through the same website. Because services for competitive products are offered, the use of the website was not exclusive and therefore may be viewed as a “bait and switch” operation.
As for the third element of Oki Data, Complainant alleges that Respondent does not disclose that it is not related to Complainant, such as through the use of a disclaimer on the website, and therefore conveys the false impression of being an authorized service center. While Oki Data does require the accused website to accurately disclose its relationship to Complainant, and many cases have found the absence of a disclaimer to be virtually dispositive against bona fide use, the Panel agrees with AB Electrolux v. Ong Bui Trung Kien,WIPO Case No. D2012-1091, that “it is not clear why this should be so.”
The Panel concludes that this element of the Oki Data test should be considered in two stages: (1) prior to; and (2) after any notice to Respondent by Complainant that such use is unauthorized. In the first stage, the mere failure to disclose a lack of a relationship between the parties should not be sufficient to raise the presumption that Respondent’s website falsely suggests that it is an official website; other facts may lead to such a conclusion, but failure to disclose at this stage on its own should not be dispositive.
After notice to Respondent by Complainant, however, the presumption should shift to Respondent and thereby either require Respondent to take some action to clarify its unofficial status on its website or otherwise explain its use. As previously noted by the Panel, Respondent’s crude website hardly creates the impression of being an official website, but as noted by Complainant, the website makes no attempt to clarify its unofficial status. Had Complainant not attempted to notify Respondent of its unauthorized use of the Trademark, different conclusions could be drawn from these facts, but Complainant did contact Respondent and attempt to stop its further use of the Trademark in the Domain Name.
After providing Respondent with a second reminder of its cease and desist letter and requesting a voluntary transfer of the Domain Name, Respondent replied in Vietnamese as follows:
hãy hướng dẫn tôi cụ thể hơn để được chấp nhận tên miền này
2012/6/16 sự nguyễn
Tôi phải làm gi để được sử dụng tên miền .Tôi đă đăng ký với mục
đích phục vụ khách hàng một cách chuyên nghiệp hơn với sản phẩm electrolux
A Google Translate translation of the same is as follows:
Please guide me in more detail in order to be accepted this domain name
16/06/2012 the Nguyen
What must I do to be used domain name . I've registered with the
serve more customers in a professional manner with Electrolux products
While Complainant characterized Respondent’s response as asking for directions on how to transfer the Domain Name, Respondent’s reply appears to be asking how it should go about getting the right to use the Domain Name so it can continue to provide services to customers of Electrolux products.
In an effort to try to resolve Respondent’s intent in responding in this manner, and Complainant’s characterization of Respondent’s response, the Panel issued Order No. 1 requesting additional information from Respondent, but Respondent chose not to reply by the ordered deadline. While the Panel still disagrees with Complainant’s characterization of Respondent’s response, at this point, Respondent is clearly on notice of its unauthorized use of the Trademark and should have, by now, taken some effort to indicate on its website that it is not authorized. A further review of Respondent’s website indicates that no such effort has been made by Respondent. Accordingly, the Panel finds the third element of Oki Data to not have been met by Repsondent.
The fourth element of Oki Data has to do with Respondent attempting to corner the market on Domain Names including the Trademark. As there is no evidence that Respondent has attempted to register or obtain any other domain names containing the Trademark, this element has been met.
Although not recited by Complainant, UDRP Panel decisions subsequent to Oki Data have suggested that additional factors may in some circumstances also be relevant, including:
(v) the domain name does not consist of the ‘unadorned’ trademark alone; and
(vi) the registrant is not otherwise taking unfair advantage of the trademark.
See, in this regard, EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Intexnauca S.A.,WIPO Case No. DMD2010-0002, Ensto Oy v. Melinte Razvan, SC Bartec RO SRL,WIPO Case No. DRO2011-0008, Mangusta S.r.l. v. Conforzi Design & Consulting Di Conforzi,WIPO Case No. D2011-1336 and Iberostar Hoteles Y Apartamentos, S.L. v. N/A, Yuri Smolyansky, Registrant Organization: N/A Registrant / Contact Privacy Inc.,WIPO Case No. D2011-0952. As noted above, the Domain Name consists of a long prefix followed by the Trademark, which is hardly unadorned. However, Respondent does appear to be offering independent repair services for Complainant’s products as well as the products of others which may constitute taking unfair advantage of the Trademark.
In view of the above, the Panel finds that Respondent had no rights or legitimate interest in the Domain Name. Accordingly, the Panel finds that the second element of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
Complainant has provided ample evidence to support the contention that Respondent must have been aware of the Trademark prior to registering the Domain Name and that the Domain Name was registered to create an association with the Trademark and Complainant, which may constitute bad faith. Complainant’s almost 700 domain names must have created some difficulty for Respondent in selecting a domain name that was not already registered by Complainant, which likely explains the addition of the prefix to the Trademark in order to form the Domain Name.
The Panel must look to the cumulative weight of the evidence to determine if a Domain Name has been registered and used in bad faith. Awareness of a Complainant’s Trademark prior to registration is one factor of many to be considered, although in this case such awareness goes against Respondent. Viewed in the light most favorable to Respondent, awareness of the marks shows that Respondent had notice that the Domain Name might be confusingly similar to the Trademark, but nevertheless chose to register and use the Domain Name. Complainant’s bad faith arguments largely restate its relatively weak arguments regarding rights or legitimate interests. Nevertheless, since the Panel found that Respondent’s use of the Domain Name constitutes a “bait and switch” operation, or at least created the false impression of its office status as a repair center for Complainant’s products, the Panel finds that such use also constitutes bad faith. Accordingly, the Panel finds that the third element of the UDRP has been met by Complainant. 7. Decision
For the foregoing reasons, the Panel orders the Domain Name to be transferred to Complaint.
Timothy D. Casey
Sole Panelist
Date: December 18, 2012
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