The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Ngoc Tien Nguyen of Ha Noi, 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 November 23, 2012. On November 23, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 26, 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 November 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2012.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on December 21, 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
The Complainant, Aktiebolaget Electrolux, is a Swedish joint stock company founded in 1901 and incorporated as a Swedish company in 1919 which has registered numerous trademarks comprising the company's name ELECTROLUX, many of which before the registration of the disputed domain name on May 24, 2012. The Complainant has also registered almost 700 gTLDs and ccTLDs worldwide, among which , and .
The Complainant is one of the world's largest producers of kitchen and cleaning appliances and equipment. It distributes and sells products in 150 countries, including Vietnam. 5. Parties’ Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
The Complainant contends the disputed domain name is confusingly similar to the Complainant’s trademarks because it incorporates the Complainant's registered mark ELECTROLUX. The Vietnamese terms “may giat” and “tainha” are generally translated into “air conditioner” and “at home”. The suffixes “suamaygiat” and “tainha” are thus generic terms. The addition of a generic term to a trade or service mark is legally inconsequential and does not prevent a finding of confusing similarity.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name because (1) there exists no trademarks or trade names belonging to the Respondent and corresponding to the disputed domain name; (2) the Respondent is not a licensee of the Complainant’s trademarks and has not otherwise obtained authorization to use the Complainant’s marks; (3) the mere registration of a domain name does not give the owner a right or a legitimate interest with respect to the disputed domain name; (4) the Respondent is not using the disputed domain name in connection with bona fide offering of goods or services since the website connected with the disputed domain name is offering services for Electrolux products and, thus, the Respondent is misleading Internet users; and (5) the homepage of the Respondent's website displays the Complainant's trademark ELECTROLUX, thus violating the Complainant's rights and further misleading Internet users and tarnishing the trademark ELECTROLUX.
Last, the Complainant contends the Respondent registered and is using the disputed domain name in bad faith because the disputed domain name is currently connected to a website offering services for Electrolux products. The Respondent is therefore using the disputed domain name incorporating the Complainant’s widely-known and widely-registered trademark ELECTROLUX, the effect being to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. Further evidence of bad faith use of the disputed domain name should also be inferred from the absence of response to the Complainant's October 4, 2012 cease and desist letter sent by email to the Respondent.
For these reasons, the Complainant requests the Panel to transfer the disputed domain name to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Complainant has rights in ELECTROLUX marks. Under the UDRP, the test for confusing similarity typically involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other generic terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark (LEGO Juris A/S v. Richard Larkins Sets&Reps,WIPO Case No. D2012-1024).
In this case, the disputed domain name incorporates the Complainant’s mark ELECTROLUX in its entirety and is clearly its dominant element. The addition of the generic words "may giat" and "tainha", generally translated into "air conditioner" and "at home", in the disputed domain name does not alleviate any confusion especially when the website enables consumers to shop.
Given the distinctive nature of the ELECTROLUX marks which are readily recognisable within the disputed domain name, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademarks and thus this element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name. Once a complainant establishes a prima facie case showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this element shifts to the Respondent. The burden of proof, however, remains with the Complainant to prove each of the three elements of paragraph 4(a). (Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270; LEGO Juris A/S v. Richard Larkins Sets&Reps,WIPO Case No. D2012-1024).
The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the case file provided by the Center to this Panel gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name, given the Respondent uses the disputed domain name in association with a commercial website utilizing the Complainant’s marks and which does not accurately and prominently disclose the Respondent’s relationships with the Complainant.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” (M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
In this case, the Complainant has proved beyond any reasonable doubt that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to the Complainant’s trademarks, and intentionally diverted Internet users to websites offering the same or similar products as those offered by the Complainant. This stems from the presence of references to the ELECTROLUX mark on the homepage of the Respondent's website. Such registration and use are clearly motivated by commercial gain.
The Panel therefore considers that the Respondent’s conduct in this case constitutes evident bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant has satisfied all three elements of paragraph 4(a) of the Policy. 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.
Michel N. Bertschy
Sole Panelist
Date: January 4, 2013
Full & Egal Universal Law Academy