The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is nan jing jia dian wei xiu zhong xin of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Foshan YiDong Network Co., LTD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 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 September 16, 2013, the Center sent an email communication to the Parties in both English and Chinese regarding the language of the proceeding. On the same day, the Complainant confirmed its request for English to be the language of the proceeding. The Respondent didn’t submit its comment 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 in both English and Chinese, and the proceedings commenced on September 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2013.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 21, 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. 4. Factual Background
The Complainant is a Swedish joint stock company founded in 1901.
The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning. The Complainant is also one of the largest producers in the world of kitchen equipment for professional users. The Complainant is selling more than 40 million products to consumers in 150 countries every year.
The Complainant’s products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under esteemed brands such as ELECTROLUX, AEG, AEG-ELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE.
In 2009 the Complainant had sales of SEK 109 billion and 51,000 employees.
The trademark ELECTROLUX has acquired the status as well-known trademark due to extensive and long term use on products and services of the Complainant.
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.
The Complainant has also registered the trademark ELECTROLUX as a domain name under 700 generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”) worldwide, among these: , and .
The disputed domain name was registered on May 13, 2013, long after the Complainant has registered the trademark ELECTROLUX worldwide (earliest Community trademark registration no. 000077925 is dated September 16, 1998).
The Complainant sent a cease and desist letter to the Respondent via email on July 6, 2013, stating that the disputed domain name infringes upon the Complainant’s rights and demanding the disputed domain name be transferred to the Complainant.
From the evidence provided by the Complainant, it appears that the disputed domain name used to resolve to a website in Chinese offering repair services for Electrolux products. However, as of the date of this Decision, the Panel notes that the disputed domain name does not resolve to any content. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s well-known trademark ELECTROLUX, seeing that the dominant part of the disputed domain name comprises the Complainant’s trademark ELECTROLUX, which has been registered as a trademark and domain name in numerous countries all over the world.
The Complainant further argues that the addition of the suffix “nj” is not relevant and will not have any impact on the overall impression of the dominant part of the domain name, ELECTROLUX, the Complainant’s famous mark.
The Complainant further argues that anyone who sees the disputed domain name is bound to mistake it for a name related to the Complainant.
The Complainant further argues that with reference to the reputation of the ELECTROLUX trademark there is a considerable risk that the public will perceive the disputed domain name as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant.
The Complainant further argues that the Respondent has no rights or legitimate interests with respect to the ELECTROLUX mark or the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant further argues that the Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name has been connected to a website in Chinese offering repair services for Electrolux products. By doing this, 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 Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin. The Complainant further contends that the Respondent intentionally chose the disputed domain name in order to generate traffic to the Respondent’s website, by misleading consumers to believe that it is affiliated with the Complainant.
The Complainant further argues that the considerable value and goodwill of the mark ELECTROLUX is most likely what made the Respondent registered the disputed domain name.
The Complainant further argues that it tried to contact the Respondent on July 6, 2013, by sending a cease and desist letter, to which the Respondent did not respond. The Complainant further argues that the fact that the Respondent did not respond to the Complainant’s cease and desist letter is an indication of the Respondent’s bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name is comprised of Latin characters;
b) The disputed domain name does not carry any specific meaning in the Chinese language; and
c) The Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings even though communicated in Chinese and in English.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its Decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant owns numerous trademark registrations for the mark ELECTROLUX. For example: United States trademark registration No. 0933368 of May 2, 1972; United Kingdom trademark registration No. 469786 of May 14, 1926; Chinese trademark registration No. 862864 of August 14,1996, and many more.
The Complainant also owns numerous domain names with the trademark ELECTROLUX, among these , and .
Also, the Complainant’s rights in the ELECTROLUX mark have been established in previous UDRP decisions, AB Electrolux v. Ilgaz Fatin Micik,WIPO Case No. D2009-0777.
The disputed domain name differs from the ELECTROLUX trademark by the addition of the two letters “nj” and the additional gTLD “.com”. The disputed domain name integrates the Complainant’s ELECTROLUX trademark in its entirety, as a dominant element.
The addition of the letters “nj” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s ELECTROLUX trademark. Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505 and Aktiebolaget Electrolux v. cai qing,WIPO Case No. D2012-2319).
Furthermore, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the ELECTROLUX trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the ELECTROLUX trademark, or a variation thereof.
The Respondent had not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
In the present case, the Respondent was providing repair services for ELECTROLUX products. This activity does not constitute a bona fide offering of goods and services as there was no disclaimer of the relationship between the Respondent and the Complainant on the website at the disputed domain name (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark ELECTROLUX (since the year 1919) and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the ELECTROLUX trademark since the year 1926. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolved to.
The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Incv. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
From the evidence provided by the Complainant, the disputed domain name used to resolve to an active website in Chinese offering mostly repair services for ELECTROLUX products. The Respondent used the disputed domain name to promote the repair services of the Complainant’s products, while using the Complainant’s name and mark on the website. Using the disputed domain name to promote similar or identical services to the services being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of its trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off on the value of the Complainant’s trademark. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel therefore finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its website with the intent to creating a likelihood of confusion with the Complainant’s trademark falls under paragraph 4(b) of the Policy.
Another indication of the Respondent’s bad faith use is the fact that, at the time of this Decision, it appears that the disputed domain name does not resolve to an active website. The Respondent’s passive use of the disputed domain name also indicates bad faith registration and use of the disputed domain name: “The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept” (See Cho Yong Pil v. Kee Dooseok,WIPO Case No. D2000-0754) “The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith” (Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003).
Another indication for the Respondent’s bad faith is raised from the incorporation of the Complainant well-known trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273).
The Panel also notes that the Respondent failed to respond to the cease and desist letter and reminder sent by the Complainant. It is well established and accepted that failure to respond to a cease and desist letter without legitimate reason may be evidence of bad faith registration and use (Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the Respondent’s registration and use of the disputed domain name, with no conceivable explanation for doing so, the Respondent’s passive use of the disputed domain name, the Respondent’s use of the ELECTROLUX trademark in the website under the disputed domain name and the Respondent’s failure to reply to the Complainant’s cease and desist letter, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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.
Jonathan Agmon
Sole Panelist
Date: November 6, 2013
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