The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Contact Privacy Inc. of Toronto, Ontario, Canada / The Trading Force d.o.o of Novi Sad, Serbia. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Complainant filed an amendment to the Complaint.
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 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2013. The Respondent did not submit any formal response within the Response due date. Accordingly, the Center notified the Respondent’s default on October 9, 2013. On October 10, 2013, the Center received an email communication from the Respondent stating that: “we have issued the order that our domain has to be changed to immediately. We are authorized Electrolux representative for kitchen and laundry in Serbia. We also sell household products to retail business in Serbia under the brand name Electrolux”.
The Center appointed Mihaela Maravela as the sole panelist in this matter on October 22, 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 following facts has been asserted by the Complainant and not refuted by the Respondent: The Complainant is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning. In addition, the Complainant is the market leader in many of the individual product categories in which they compete. It sells more than 40 million products to customers in 150 countries every year. The products of the Complainant include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers. The Complainant owns the trademark ELECTROLUX, registered in several countries, at least, as early as 1930.
The disputed domain name was registered on June 10, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the dominant part of the disputed domain name comprises the word “electrolux” which has been registered by the Complainant as a trademark and domain names in numerous countries all over the word. The disputed domain name is confusingly similar to the famous trademark ELECTROLUX and the addition of the suffix “tradingforce” in combination with a hyphen will not have any impact on the overall impression of the dominant part of the disputed domain name, “electrolux”, instantly recognizable as the Complainant’s world famous trademark.
Also, the Complainant alleges that no license or authorization of any other kind has been given by the Complainant to the Respondent to use the trademark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. The Complainant also states that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name is currently connected to a website offering several of the Complainant’s products for sale. Moreover, the Respondent also creates the false impression that it is an authorized reseller for the Complainant’s products which the Complainant denies to be true.
In addition, the Complainant argues that the disputed domain name is currently connected to a website offering several Electrolux products for sale. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract for commercial gain Internet users to the websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website at the disputed domain name. As further indicia of bad faith the Complainant refers also to the famous status of the ELECTROLUX trademark, to the absence of disclaimers disclosing the lack of any relationship between the parties, to the absence of any response from the Respondent on the cease and desist letter delivered by the Complainant. B. Respondent
The Respondent sent an email communication on October 10, 2013 (after the Center’s notification of Respondent Default) stating that: “We have issued the order that our domain has to be changed to immediately. We are authorized Electrolux representative for kitchen and laundry in Serbia. We also sell household products to retail business in Serbia under the brand name Electrolux”. 6. Discussion and Findings A. Procedural aspects: Respondent’s communication
The first issue is whether the Panel will consider the email communication received by the Respondent on October 10, 2013.
In the event the Panel considers this communication as a late Response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to issue a decision based only on the Complaint. The Panel may, in its discretion, consider the response if “exceptional circumstances” exist. In this case, the Panel finds that there are no exceptional circumstances to justify submitting a late response.
There is no provision regulating the consequences for responses that do not meet the formal requirements comparable to paragraph 4(b) of the Rules. Whether and under what conditions responses are to be taken into account if they do not satisfy the formal requirements of paragraph 5 of the Rules has been determined differently by different UDRP panels. The majority of the UDRP panelists finds that they are entitled at their discretion to determine whether to consider responses that are not formally compliant (see Young Genius Software AB .v. MWD, James Vargas,WIPO Case No. D2000-0591, ).
In previous URDP decisions, a response has been taken into account inter alia if:
- the respondent wrongly submitted the response to the complainant and ICANN but not to the dispute resolution provider (see Oberoi Hotels Pvt. Ltd. v. Arun Jose,WIPO Case No. D2000-0263, )
- the response was filed on time but submitted in handwriting (see Cable News Network LP, LLLP v. Manchester Trading, NAF Claim No. FA 93634 );
- the response exceeded the limit on the number of words imposed by the Supplemental Rules (see Süd-Chemie AG v. ,WIPO Case No. D2000-0376, );
- the response was submitted by fax (see Veritas DGC Inc. v. The Collectors Source and Edward T. Arrich, Jr., NAF Claim No. FA 94425, ).
This Panel agrees with William Hill Organisation Limited v Seven Oaks Motoring Centre,WIPO Case No. D2000-0824 (). Hence it shall not consider the Response filed in the present proceedings.
In any event, the Decision in this case would have been the same had the Panel considered the Response when making its decision. B. Respondent’s Identity
According to initial WhoIs domain name search enquiries, submitted by the Complainant in its evidence, the Respondent had used the privacy service offered by the Registrar and was known as “Contact Privacy Inc.”. During the course of the verification process, the Registrar, in response to the Center’s verification request, subsequently provided the registrant name of “The Trading Force”, with the contact details as set out above.
This suggests that a privacy service was in use, to shield the identity of the registrant of the disputed domain name from the general public. In general, there may be wholly legitimate reasons for a person wishing to protect privacy by means of a proxy service. As has been noted by previous UDRP panels, the use of privacy services is becoming an increasingly common occurrence, and is a trend which is likely to continue. Under such arrangements the name of the “true” underlying or beneficial registrant is typically not displayed in the Registrar’s publicly accessible WhoIs database, and is instead disclosed (if at all) only after the Complaint has been filed.
Further, where information is available to the Center through either a change in the registration information or through a communication from the Registrar to the provider, the Center generally invites the Complainant to amend its Complaint. Consequently, the Complainant amended its Complaint and named “The Trading Force” as the Respondent.
Paragraph 1 of the Rules defines Respondent as the “holder of a domain-name registration against which a complaint is initiated”. The Panel must therefore identify the appropriate Respondent/s in this case. This leads to the question, addressed by previous UDRP panels as well, whether a privacy service provider should be considered as the Respondent or one of the Respondents in the administrative procedure, should the identity of the real registrant be disclosed before the UDRP proceedings start. In such previous cases, UDRP panels either (1) treated both the initially listed registrant (privacy service provider) and the subsequently disclosed registrant as the Respondent (see Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum,WIPO Case No. D2006-0881; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642; TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services,WIPO Case No. D2006-1620); or (2) elected to disregard the privacy service provider entirely and to analyze only the acts of the underlying registrant (see Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438; Xtraplus Corporation v. Flawless Computers,WIPO Case No. D2007-0070).
Seeing that the Registrar disclosed the information regarding the disputed domain name registrant before the proceedings were formally initiated (see Hoffmann-La Roche Inc. v. Aditya Roshni, Web Services Pty,WIPO Case No. D2008-1086), that “The Trading Force” is the confirmed disputed domain name holder and that the Complainant named “The Trading Force” as the Respondent, the Panel elects to treat The Trading Force as the Respondent in this case.
Because the Respondent has defaulted in providing a formal Response to the allegations of the Complainant (and since the email communication received from the Respondent is not taken into account by the Panel for the purposes of the current proceeding), the Panel is directed to decide this administrative proceeding on the basis of the Complaint (paragraph 14(a) of the Rules), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” (paragraph 15(a) of the Rules).
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership in the registered trademark ELECTROLUX at Canadian, international and community level, among others (i.e., Canadian trademark No. 0140794, registered on August 9, 1930, International trademark No. 836605 registered on March 17, 2004 and Community trademark No. 1206339 registered on June 6, 1982). All these trademarks were registered prior to the registration of the disputed domain name.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademark rights which have been proved by the Complainant. In view of the evidence submitted by the Complainant, the Panel agrees with the Complainant that the trademark ELECTROLUX is a well-known trademark (see also Aktiebolaget Electrolux v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.comand Kriengsak Vadpanich, WIPO Case No. D2012-1132). The Complainant’s trademark has been registered and used in more than 150 countries for appliances and equipment for kitchen, cleaning and outdoor use for a long time.
Further, the Panel agrees with the Complainant that the addition of the prefix “tradingforce-” 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. As such, the addition of the generic dictionary English words “trading” and “force” as prefix (with a hyphen) is not sufficient to distinguish the disputed domain name from the Complainant’s trademark ELECTROLUX (see inter alia Merck KGaA v. yan xiansheng, WIPO Case No. D2011-2161).
Many UDRP panels have established that the addition of generic or common words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. The addition of a generic word to a trademark will normally not avoid a determination that the disputed domain name is confusingly similar. See Hoffmann-La Roche Inc. v. Lindy Shaw,WIPO Case No. D2008-0985. The fact that a domain name wholly incorporates a complainant’s trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903. The addition of a generic term may reinforce the association of a complainant’s trademark with a domain name. See Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd.,WIPO Case No. D2000-0275; Société Air France v. RBlue,WIPO Case No. D2005-0290.
It is also established practice among UDRP panels that the generic Top-Level Domain (“gTLD”) “.com” of a domain name may be disregarded when assessing identity or confusingly similarity of a domain name with a trademark.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the disputed domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent (see 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 established prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Namely, the Panel notes that the Respondent is not commonly known by the disputed domain name and there is no evidence that the Respondent has any connection with the trademarks of the Complainant and the Complainant has not given the Respondent any permission to use such trademarks. Also, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name.
It is well established by previous UDRP decisions that once a complainant makes a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. (See paragraph 2.1 of the WIPO Overview 2.0).
By not submitting a formal response, the Respondent has failed to overturn such prima facie case. The only evidence in this connection is the evidence provided in the Complaint, and which is self-evident from the website to which the disputed domain name resolves.
As such, the Complainant has adduced evidence that the disputed domain name is used in connection to a website offering several of the Complainant’s products for sale. However, when the Panel tried to access the website at the disputed domain name prior to drafting this Decision, it discovered that the content of the website (for which the Complainant provided evidence of use) has changed in the sense that an error occurred when trying to enter the website and the requested page could not be found. The Respondent has not demonstrated any reason as to why the content of the website appears to have been changed following the filing of the Complaint.
Irrespective of such change, as other UDRP panels have held, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the disputed domain name, that the Respondent possesses any trademark or service mark rights in the disputed domain name, or that the Respondent has other authority or permission to use the Complainant’s marks. Indeed, the Complainant states expressly that the latter is not the case. See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti,WIPO Case No. D2001-1158 (finding no legitimate interest because, inter alia, the complainant had not licensed mark to the respondent). The Panel also notes that according to the evidence, the website at the disputed domain name did not accurately and prominently disclose the Respondent’s relationship with the Complainant.
Furthermore, by not submitting a formal Response to the Complaint, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some rights or legitimate interests in the disputed domain name. See Ahead Software AG. v. Leduc Jean,WIPO Case No. D2004-0323; see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis,WIPO Case No. D2000-1563 (respondent’s default alone is sufficient to conclude that it had no rights or legitimate interests in the domain name). See V&V Supremo Foods, Inc. v. pxlchk1@,WIPO Case No. D2006-1373.
The failure of the Respondent to formally reply to the Complainant’s contentions and the evidence adduced by the Complainant lead the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name. See in this respect Hermes International v. Yang Fen,WIPO Case No. D2010-2272.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and, therefore, that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the disputed domain name in bad faith, paragraph 4(b) of the Policy provides examples constituting evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris,WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.”
The print screen of the website at the disputed domain name submitted by the Complainant as evidence of the use of the disputed domain name by the Respondent includes the ELECTROLUX trademark and logo, which is in itself, in this Panel’s view, an indication of in bad faith, with the intention of creating confusion with the Complainant’s genuine services and products for commercial gain. Moreover, noting also the Panel’s findings under the second element, the Panel finds that the disputed domain name was used to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s mark.
As noted above, the trademark ELECTROLUX is well-known. Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name. Also, the Respondent registered the disputed domain name more than 30 years after the Complainant registered its trademarks.
As regards the use of the disputed domain name at the time of the filing the Complaint, the mere fact that the content had been taken down and the website rendered inactive, while the disputed domain name continues to be held by the Respondent, cannot lead the Panel to dismissing the Complaint for failure to satisfy the requirement under paragraph 4(a)(iii) of the Policy.
The passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of the respondent’s behavior are indicative of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent’s failure to formally respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210);
- the Respondent’s failure to respond to, or act upon the Complainant’s cease and desist letter, requesting voluntary transfer;
- the Respondent’s choice to register the disputed domain name using a privacy service (see paragraph 3.9 of the WIPO Overview 2.0),
- the apparent change of the content of the website after the Notification of Complaint. The change on the website at the disputed domain name further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon,WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) or V&V Supremo Foods, Inc. v. pxlchk1@, Supra.
In light of the above, the Panel finds that the Respondent registered and is using the disputed domain in bad faith, as stated in 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.
Mihaela Maravela
Sole Panelist
Date: November 5, 2013
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