The Complainant is AB Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Bui Van Quynh of Hai Duong, Viet Nam. 2. The Disputed Domain Name and Registrar
The Disputed Domain Name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2013. On November 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 22, 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 that the language of registrar agreement was made in Vietnamese. Accordingly, the Center sent an e-mail communication on December 13, 2013, concerning the Language of Proceedings in English and in Vietnamese to the Complainant, copied to the Respondent. On the same day, December 13, 2013, the Complainant sent a request for English to be the language of proceedings in this case, indicating the reasons for it. The Center sent an email communication to the Complainant on December 20, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on the same date of December 20, 2013.
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Disputed Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Disputed Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Disputed 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 Vietnamese, and the proceedings commenced on December 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2014. On January 15, 2014, the Center received an e-mail communication from the address associated with the Registrant of the disputed domain name, which stated that it designs and develops websites for clients and provided a physical address and phone number to contact.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on January 22, 2014. 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.
In accordance with the Rules, Paragraph 15, the Panel is required to forward its decision to the Center by February 5, 2014. The due date for the Panel to forward its decision to the Center was extended to February 12, 2014. 4. Factual Background
The Complainant, AB Electrolux, 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, who are selling more than 40 million products to customers in 150 countries every year, including Viet Nam.
The Complainant is the owner of a number of international, European, United States and national trademarks on the sign ELECTROLUX, both in word and figurative forms, alone or in combination with other elements, in more than 150 countries all over the world. The Complainant further evidenced that it holds trademark rights in Viet Nam, where the Respondent is established, and in particular the trademarks registered under Registrations numbers 4616, 13319, 62578, 63104, 62249, 72328, 99175, which have been granted since as early as 1992. These Vietnamese trademarks are registered for goods in Classes 7, 9 and 11.
The Complainant has also registered the sign ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these, and .
Finally, through its extensive use, the Complainant has gained over the years substantial reputation internationally for its ELECTROLUX products, and the trademark ELECTROLUX may be considered as a worldwide well-known trademark for appliances and equipment for kitchen, cleaning and outdoor use.
The Respondent registered the Disputed Domain Name on August 5, 2013. The website under the Disputed Domain Name is being under operation for promotion of the Respondent’s services in repairing washing machines of all types, including those under the ELECTROLUX brand, as well as others. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is and has been for many years the right holder of the Trademark ELECTROLUX (the “Trademark”) in numerous countries worldwide, including in Viet Nam. The Trademark is used in the sector of appliances and equipment for kitchen, cleaning and outdoor use products and services. The Trademark predates the Respondent’s registration of the Disputed Domain Name.
The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s Trademark, as it comprises the word “electrolux”, which is identical to the Trademark, and the addition of the prefix “suachuamaygiat”, which is written as “sửa chữa máy giặt” in Vietnamese and means “Washing machine repair” in English, is not relevant and will not have any impact on the overall impression of the dominant part of the name ELECTROLUX.
Finally, the Complainant submits that the top-level suffix “.net” in the Disputed Domain Name only serves to indicate the type and code level of the domain name and cannot be taken into consideration when determining the confusing similarity.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant contends that that the Respondent has no registered trademark or trade name corresponding to the Disputed Domain Name. It is also clear that no license or authorization of any other kind to use the Trademark has been given by the Complainant to the Respondent.
The Complainant further contends that the mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. The Respondent has not been using ELECTROLUX in any way that would give him any legitimate rights in the name. Consequently the Respondent may not claim any rights established by common usage.
The Complainant also argues that the Respondent has intentionally chosen a domain name based on a registered trademark which connects to a website which is currently connected to a commercial website maintained in Vietnamese. This is not a bona fide offering of goods or services.
Finally, the Complainant contends that the Respondent does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant and does therefore conveying the false impression that the Respondent is an authorized service center for the Complainant’s products. Also, the website under the domain name at issue offers services and goods from the Complainant’s competitors.
(iii) The Disputed Domain Name was registered and is being used in bad faith
The Complainant contends that the Complainant first tried to contact the Respondent on September 13, 2013 through a cease and desist letter, in which the Complainant requested a voluntary transfer of the domain name and offered compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Despite the Complainant’s reminders on October 15, 2013, and November 4, 2013, the Respondent has not yet replied so far.
The Complainant further argues that with the worldwide well-known status of the Trademark, it is obvious that the Respondent knew of the Trademark at the time of registration and therefore the Respondent has entered the registration agreement knowing that they registered a domain name infringing on a third-party right. The Disputed Domain Name is designed to attract Internet users who are looking for Complainant’s services and cause confusion with the Complainant’s marks and websites when not landing on an official “Electrolux” website. Consequently, the Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
Finally, the Complainant contends that the protected logotype of the Trademark is displayed on the website under the Disputed Domain Name. By doing this, the Respondent is using this logotyped Trademark to further mislead Internet users and is tarnishing the Trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Consequently, the Panel shall further analyze the eventual concurrence of these three grounds in the present case. A. Notification of the Proceedings to the Respondent
On January 16, 2014 (after the due date for Response), the Center received a communication from the email address listed in the WhoIs as that of the registrant of the disputed domain name, stating that he designs and develops websites for clients, and inviting the Center to contact an individual (at a physical address and phone number) for further information.
The Panel notes that the Center correctly employed the means identified at paragraph 2(a) of the Rules to provide notice to the Respondent. The Panel, in accordance with usual practice, finds that it is appropriate to continue in this proceeding against the named Respondent, as the Center proceeded pursuant to its obligations under the Policy, and in any event, it is the obligation of registrants to maintain correct contact details in the WhoIs (see in the same way AB Kvällstidningen Expressen v. MegaW Inc. – Hostmaster Hostmaster,WIPO Case No. D2013-2151).
The Panel will now turn to its substantive analysis under the Policy. B. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
First of all, the Panel finds that the Complainant has clearly evidenced that it had registered trademark rights to ELECTROLUX well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer appliances and equipment for kitchen, cleaning and outdoor use worldwide.
Secondly, the Disputed Domain Name comprises the Complainant’s distinctive and widely-known ELECTROLUX mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the prefix “suachuamaygiat”, which is written with accent marks as “sửa chữa máy giặt” in Vietnamese and means “washing machine repair” in English. Despite the fact that “suachuamaygiat” itself has no meaning in English, Vietnamese customers are likely to perceive it as “sửa chữa máy giặt” (“washing machine repair” in English). Thus, this prefix should be considered as a descriptive term. The Panel finds that ELECTROLUX remains the dominant element in the Disputed Domain Name. It is well established that the addition of descriptive terms (such as “washing machine” or “repair”) to a trade mark does not prevent confusing similarity, thus, in the Panel’s view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the Trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see e.g. AB Electrolux v. Ilgaz Fatih Micik,WIPO Case No. D2009-0777; Aktiebolaget Electrolux v. ibp,WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui TrungKien,WIPO Case No. D2012-2320).
Thirdly, the Panel finds, similarly to other UDRP panels, that the addition of the generic top-level domain (gTLD) “.net” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for trademark purposes (see e.g. Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds and concludes that the Disputed Domain Name is confusingly similar to the Complainant’s ELECTROLUX trademark. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue”.
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no own rights in the Trademark ELECTROLUX.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,.WIPO Case No. D2001-0903 (Oki Data):
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see e.g. National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524). However, in this particular case, the Panel finds that it does not fulfill the Oki Data criteria. Indeed, the Respondent is offering the repair services for all types of washing machines, including those that are not associated with the Complainant. Moreover, in the website under the Disputed Domain Name, the Respondent lacks of any statement disclosing the actual relationship with the Complainant. Further, the use of the logotyped Trademark in the website may be a further evidence on the Respondent’s intention to create a false relationship with the Complainant. For all the foregoing reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services.
Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.
The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name and the Panel’s independent researches, the Respondent had full knowledge of the Trademark and had an intention to gain profit by riding on the good reputation of the Complainant.
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
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this respect, the Panel believes that the Respondent must have known and be aware of the rights in the prior well-known trademark ELECTROLUX and the associated products at the time of the registration of the Disputed Domain Name.
Also, the Panel finds that given the fact that the Trademark is not descriptive of anything and devoid of meaning other than the products of the Complainant, it is very unlikely that the Respondent would have registered a Disputed Domain Name incorporating the Trademark without knowledge of the Trademark (see in the same way Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534) and that it defies common sense to believe that Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its Trademark (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534).
In addition, with the Respondent’s use of the logotyped Trademark in the website and the non-disclosure of the actual relationship with the Complainant, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behaviour is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
As a result, the Panel infers from such behaviour that the Respondent’s purpose in registering the Disputed Domain Name appears to have been to capitalize on the reputation and goodwill of the Complainant’s trademark, and thus generate unjustified revenues.
In light of the foregoing, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: February 10, 2014
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