The Complainant is Aktiebolaget Electrolux (“AB Electrolux”), Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Maksim, SPD CHervinchuk, Kiev, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2012. On September 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 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. In response to an email from the Center regarding a clerical error, the Complainant filed an amendment to the Complaint on September 24, 2012.
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 September 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2012.
The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on November 5, 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, AB Electrolux, is a Swedish joint stock company founded in 1901and registered as a Swedish company in 1919.
4.2 The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning.
4.3 The Complainant is also one of the largest producers in the world of similar equipment for professional users.
4.4 The Complainant is a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year including in Ukraine.
4.5 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 (see annex 6 of the Complaint; ELECTROLUX trademark list).
4.6 The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these; , (see annex 7 of the Complaint; domain name list).
4.7 The Respondent registered the disputed domain name on April 9, 2012.
4.8 The Complainant first tried to contact the Respondent on May 25, 2012 through a cease and desist letter. The Complainant sent a reminder on June 7, 2012 and a final reminder on June 14, 2012, however without any reply (annex 11 of the Complaint). 5. Parties’ Contentions A. Complainant
5.1 The Complainant states that it has exclusive rights in the trademark ELECTROLUX, granted by its registration in many countries worldwide.
5.2 The Complainant contends that the owner of the trademark ELECTROLUX is AB Electrolux.
5.3 The Complainant contends that it is also the proprietor of several Ukrainian trademark registrations for ELECTROLUX, e.g. with registration number 2655.
5.4 The Complainant contends that the trademark ELECTROLUX has due to extensive and long term use on products and services of the Complainant and, in connection therewith, by tremendous costs incurred by the Complainant in connection with the production, distribution and advertising with respect to the products and services that are marked by the trademarks acquired the status, as well-known trademark, within the areas for appliances and equipment for kitchen, cleaning and outdoor products.
5.5 The Complainant contends that the awareness of the trademark ELECTROLUX is considered in the whole Community to be significant.
5.6 The Complainant contends that the registrant cannot have been unaware of the trademark at the time of registration or thereafter.
5.7 The Complainant contends that according to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property (“PC”) confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark 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 (i.e. regardless of the list of the products and services for which the trademark is registered.
5.8 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, adding that no license, permission or authorization consent was granted by the Complainant to use ELECTROLUX into any domain name.
5.9 The Complainant contends that the Respondent has not used the disputed domain name in good faith offering of goods and services; instead the Respondent has used the Complainant’s mark incorporated into the disputed domain name to attract Internet users.
5.10 The Complainant contends that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name.
5.11 The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent seeks to capitalize on the reputation of the Complainant’s mark.
5.12 The Complainant requests that the disputed domain name should be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 The Policy, as affected by the Rules and the Supplemental Rules, provides specified remedies to trademark owners against registrants of domain names where the owner of the mark (Complainant) proves each of the following elements:
(a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The registrant (the Respondent) has no rights or legitimate interests in respect of the domain name; and
(c) The domain name has been registered and is being used in bad faith.
6.2 The Complainant has the burden of proof, by a preponderance of the evidence, respecting each element in Paragraph 6.1.
6.3 The Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy; “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;”
6.4 The Complainant has exclusive rights in the mark ELECTROLUX and has provided evidence of this fact.
6.5 The Complainant’s mark has received worldwide recognition. The disputed domain name incorporates the entirety of the mark adding the suffix “ua” and a hyphen and the gTLD suffix “.net”. These additions do nothing to distinguish the disputed domain name from the Complainant’s well known trademark. This Panel accepts the decisions in AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777 and Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031, which establish that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s well-known and widely-registered trademark ELECTROLUX, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years. The first element of the Policy, therefore, has been met. B. Rights or Legitimate Interests
6.6 According to paragraph 4(c) of the Policy, the burden of demonstrating a respondent’s lack of rights or legitimate interests rests with a complainant.
6.7 In this case, the Complainant has offered meaningful explanations and has provided enough evidence of its exclusive rights and legitimate interests concerning the mark ELECTROLUX, therefore the Respondent should bring forward evidence of its rights or legitimate interests, if such evidence exists.
6.8 However, the Respondent has failed to counter reasoning the Complainant’s arguments and to provide any evidence of its rights or legitimate interests in the disputed domain name, as demonstrated by the notification of the Respondent’s default in these proceedings.
6.9 Such failure by the Respondent contributes to admitting the truth of the Complainant’s version, according to AB Electrolux v. Ilgaz Fatih Micik, supra and cases mentioned therein.
6.10 The Complainant states that the Respondent has no license, authorization or granted permission to use the ELECTROLUX mark, and there is no evidence to the contrary. Considering that the Complainant’s mark has achieved worldwide fame, it is highly unlikely that the Respondent chose the disputed domain name just by chance.
6.11 The Respondent’s use of the disputed domain name is neither fair use nor noncommercial use. Rather the Respondent’s uses intentionally chosen a domain name based on a registered trademark which connects to a website appearing to be an official site endorsed or sponsored by the Complainant (Annex 10 of the Complaint). Also, the Respondent displays the Complainant’s trademark protected logotype at the top of the website, without any authorization.
6.12 Claim for good faith usually cannot be made when a respondent uses a disputed domain name confusingly similar to a well known mark in which a complainant has rights and uses that disputed domain name to offer Internet users the very same product identified by the mark. To do otherwise would allow respondents to trade off the goodwill of trademark owners with impunity. This Panel is aware of the decisions and reasoning in AB Electrolux v. Ilgaz Fatih Micik, supra and PepsiCo, Inc. v. QWO,WIPO Case No. D2004-0865, and cases cited therein, and the reasoning in those cases is equally applicable to the facts of this case.
6.13 Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
(Paragraph 4(a)(iii) of the Policy)
6.14 Paragraph 4(b) of the Policy indicates several, non-exclusive methods for showing bad faith registration and use of a disputed domain name. This Panel considers the discussions and findings of AB Electrolux v. Ilgaz Fatih Micik, supra fully applicable to this case:
“Respondent is using the two Domain Names, each of which is confusingly similar to Complainant’s trademarks, to attract Internet users to two commercial websites where he features Complainant’s trademarks, logos and products to promote his repair service business. All of this creates the strong impression that Respondent is authorized by Complainant as a repair service for Complainant’s products, which is not in fact the case. Respondent has no authority from or business relationship with Complainant. Respondent’s website does not describe the nature of his relationship with Complainant and does nothing to disclaim the relationship falsely suggested by the prominent use of Complainant’s trademarks.”
6.15 Evidence of the Respondent’s bad faith use of the disputed domain name can be found from an examination of the website contents (annex 10 of the Complaint) to which the disputed domain name resolves. The Respondent has placed the Complainant’s ELECTROLUX mark and logo on the website. Thus, the Respondent is misleading Internet users by suggesting relationship with the Complainant that actually does not exist.
6.16 The Respondent’s failure to respond to the Complainant’s cease and desist letter and, subsequently, to the Complaint further support the inference of bad faith.
6.17 Regarding the use of the disputed domain name, paragraph 4(b)(iv) of the Policy is instructive. This Panel believes that the disputed domain name was intentionally registered and used to attract customers for commercial gain to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of a website or a product on that website. Thus, this Panel finds that the disputed domain name was also used in bad faith. 7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
José Pio Tamassia Santos
Sole Panelist
Dated: November 12, 2012
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