The Complainant is Aktiebolaget Electrolux (AB Electrolux) of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Andre Felippe Andrade de Souza of São Paulo, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Universo Online S/A (UOL) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2013 in English. On March 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2013, 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 2, 2013, the Center informed the Parties that the language of the registration agreement for the disputed domain name is Portuguese, and invited the Complainant to either (i) provide evidence of an agreement between the parties that the proceedings should be conducted in English, (ii) to submit the Complaint translated into Portuguese; or (iii) to submit a request for English to be the language of the proceedings, and invited the Respondent to comment thereon. On April 4, 2013, the Complainant sent an email communication referring to the language request inserted in the Complaint. On the same date, the Center acknowledged receipt of the Complainant’s email communication. The Respondent neither filed language submissions nor formally responded to the Complainant’s request.
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 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2013.
On April 12, April 17 and April 19, 2013, the Center received email communications from the Respondent, in which it made some statements and expressed its intention to explore an amicable settlement of the case. Upon the Complainant’s request, the proceedings were suspended on April 22, 2013. Further to the Complainant’s request, the proceedings were reinstituted on May 23, 2013 and the new response due date was June 3, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified to the parties the commencement of panel appointment process on June 5, 2013.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 20, 2013. 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.
The Panel subsequently extended the decision due date to the date indicated under section 7. 4. Factual Background
The Complainant, AB Electrolux, is a Swedish joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen and cleaning.
The Complainant has registered the trademark ELECTROLUX in several classes in dozens of countries all over the world, including in Brazil.
The disputed domain name was registered on December 08, 2012.
The Panel accessed the disputed domain name on July 3, 2013, when it was linked to a webpage offering technical assistance for Electrolux products. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the trademark ELECTROLUX. The dominant part of the disputed domain name comprises the word “electrolux", which is identical to its registered trademark ELECTROLUX. The addition of the prefix “assistencia” is not relevant and will not have any impact on the overall impression of the dominant part of the disputed domain name, “electrolux”, instantly recognizable as a world famous trademark. The term “assistencia” is the Portuguese word for “assistance”. Considering that the Complainant’s products on occasion will require technical assistance, the addition of said prefix is rather fitted to strengthen the impression the domain name is owned, or is affiliated with the Complainant;
(ii) The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. No license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark ELECTROLUX. 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 legitimate rights. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name is currently connected to a website offering services for ELECTROLUX products. The Respondent is misleading Internet users to a commercial website and consequently, the Respondent is tarnishing the trademark ELECTROLUX. The Respondent is trying to sponge off the Complainant’s world famous trademark. The Respondent does not qualify under the criteria laid down in the Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and
(iii) The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark ELECTROLUX has the status of a well known. The Complainant chose to file a complaint according to the UDRP process since the efforts of trying to solve the matter amicably were unsuccessful. The Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. The Respondent was aware of the Complainant’s rights in the trademark ELECTROLUX and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the Domain Name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for his own commercial gain. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions, but only informed that:
- He doesn’t want to cause any harm to the Complainant;
- He didn’t register the disputed domain name in bad faith;
- He never tried to cause confusion with the Complainant;
- He operates a small business for technical assistance of home appliances; and
- Since he is especially focused in repairing the Complainant’s products, he decided to register the disputed domain name in order to better communicate his activities in this business. 6. Discussion and Findings 6.1. Language of the Proceeding
Pursuant the Paragraph 11 of the Rules, and unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement, the language of the administrative proceedings is the language of the Registration Agreement, which is Portuguese in the present case.
However, also pursuant to Paragraph 11 of the Rules, the Panel is granted power to determine the language of the proceedings having regard to the circumstances of the case. In the Panel’s view, consideration must be given to procedural fairness, by allowing both parties to prepare the necessary documents to confront the opponent’s case and protect their own interests.
In light of the Complainant's submissions regarding the language of the proceedings and the Respondent's lack of objection or reply thereto, the Center has determined to proceed on the following basis, to:
1) accept the Complaint as filed in English;
2) accept a Response in either Portuguese or English;
3) appoint a Panel familiar with both languages.
The Center thereafter proceeded to issue its case-related communications to the parties in both English and Portuguese.
The Panel understands that this was a proper approach to the present case. Both Parties have been given a fair opportunity to present their case – the Complainant in English and the Respondent in Portuguese – and the Respondent’s informal communications with the Center demonstrated that he was able to understand the contents of the Complaint, despite not being familiar with UDRP disputes. Therefore, it would appear that the Respondent has had no difficulty in understanding the Complainant’s contentions.
Accordingly, the Panel accepts the Complaint in English and decides to render the Decision in English, which shall be notified to the parties both in English and in Portuguese. 6.2. Substantive Elements of the Policy
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel has no doubt that “electrolux” is a term directly connected with the Complainant’s activities.
Annexes 6 to 7 to the Complaint show dozens of registrations and applications for ELECTROLUX trademarks submitted by the Complainant in several countries, including in Brazil.
The trademark ELECTROLUX is wholly encompassed within the disputed domain name.
The addition of a generic term such as “assistencia” (which means “assistance” in Portuguese) does not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, mainly considering that the Complainant’s products on occasion will require technical assistance.
It is also already well established that the mere addition of a generic Top-Level Domain (gTLD) extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
The Respondent has not been commonly known by the disputed domain name, nor is making a noncommercial use.
This case raises the question of whether an unauthorized service agent of trademarked products may use the trademark at issue in its domain name.
However, according to previous WIPO decisions (mainly Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903), a bona fide offering of goods or services shall meet several requirements, including:
- The respondent must actually be offering the goods or services at issue (World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306). In the present case, and according to the website at the disputed domain name, the Respondent is a Brazilian company established in 1995 with the specific scope of offering technical assistance to home appliances, including ELECTROLUX products;
- The respondent shall use the website to sell only the trademarked goods; otherwise, it would be using the trademark to bait Internet users and then switch them to other goods (Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774; Kanao v. J.W. Roberts Co., CPR Case No. 0109). In the present case, the only brand that is reproduced on the website at the disputed domain name is ELECTROLUX;
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name (Magnum Piering, Inc. v. Mudjackers,WIPO Case No. D2000-1525). There is no indication that this situation has happened in the present case;
- The website must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents (Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211; R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201; Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344). This is the key aspect in the present case, which is analyzed below.
It is true that the website at the disputed domain name displays a link called “ELECTROLUX” that directs Internet users to the official Electrolux page in Brazil (at ).
However, the adoption of the trademark ELECTROLUX together with a general term that means “assistance” clearly suggests it is the official channel for technical assistance to the Complainants products, or at least an official and authorized Electrolux agent. And definitely this is not the condition of the Respondent, who does not represent the Complainant, nor is an authorized repair center.
Therefore, the use of the Complainant’s trademark in this context cannot be qualified as a bona fide offering of services, as it creates a likelihood of confusion as to the source of the Respondent’s website.
Moreover, the content on the Respondent’s website emphasizes this likelihood of confusion, as it includes many reproductions of the Complainant’s trademark and logo, together with a general offering of Electrolux technical assistance services.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Finally, Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) 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) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location.
As already stated above, the registration and use of the Complainant’s trademark ELECTROLUX together with the term “assistencia”, with reproductions of the Complainant’s trademark and logo, and with a general offering of technical assistance services, indicate that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. This is being done by an unauthorized agent and for commercial gain.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element 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.
Rodrigo Azevedo
Sole Panelist
Date: July 15, 2013
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