The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Cao Minh Tuy of Ha Noi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2014. On September 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2014, 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.
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 September 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2014.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 14, 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.
On October 27, 2014, the Center, on behalf of the Panel, sent an email communication to the parties which noted that due to an administrative oversight, the notification of the Complaint was not transmitted to one of the email addresses indicated on the website at the disputed domain name, and transmitted the notification of the Complaint to this email address. The email communication allowed the Respondent a period of three days to indicate whether it wished to submit a response, and if it did, twenty days to do so. The Center received no correspondence from the Respondent in regard to the email communication. 4. Factual Background
The Complainant is AB Electrolux, a Swedish joint stock company founded in 1901. The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning, as well as one of the largest producers in the world of similar equipment for professional users. In addition, it is the market leader in many of the individual product categories in which it competes.
The Complainant, which trades under the brand ELECTROLUX, in addition to other brands, sells more than 40 million products to customers in 150 countries every year.
The Complainant's products include refrigerators, dishwashers, washing machines, vacuum cleaners and cookers sold under brands such as ELECTROLUX, AEG, AEGELECTROLUX, ZANUSSI, EUREKA and FRIGIDAIRE.
The Complainant further submitted evidence that it is the owner of numerous national (including Vietnamese), European and international Trademarks for the ELECTROLUX brand, both in words and figurative forms, in connection with a range of goods and services.
The Complainant has also registered the Trademark ELECTROLUX as domain names under almost 700 gTLDs and ccTLDs worldwide, including, amongst others, .
The disputed domain name was registered on April 11, 2014. 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:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name comprises the word ELECTROLUX, which is identical to the mark ELECTROLUX (the “Trademark”) of which the Complainant is and has been for many years the right holder in numerous countries worldwide, including in Vietnam.
The Complainant asserts that the Trademark ELECTROLUX has acquired the status of well-known Trademark within the areas for appliances and equipment for kitchen, cleaning and outdoor products due to extensive and long-term use on products and services as well as investments in production, distribution and advertising with respect to the products and services that are marked by ELECTROLUX. The Complainant further argues that the fame of the Trademark has been confirmed in previous UDRP decisions.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s Trademark ELECTROLUX as it incorporates the term “Electrolux” in its entirety.
The Complainant further argues that the addition of the prefix “baohanh” (the Vietnamese term for “guarantee”) and the suffix “24h” will not have any impact on the overall impression of the dominant part of the disputed domain name, i.e., ELECTROLUX, instantly recognizable as a world famous Trademark. Further, the addition of descriptive terms to a trade mark does not prevent confusingly similarity.
The Complainant argues that, considering that the Respondent is not an authorized service provider, the additional descriptive words to the ELECTROLUX Trademark will only enhance the general public’s assumption that the disputed domain name is operated with the Complainant's approval. Further, according to the Complainant, by using the ELECTROLUX Trademark as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of the Trademark.
Finally, the Complainant submits that the generic Top-Level Domain (gTLD) “.com” in the disputed domain name has no impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant when determining the confusing similarity.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no Trademark rights or trade names corresponding to the disputed domain name and that it is not using ELECTROLUX in any way that would give it any legitimate rights.
The Complainant asserts that it has Trademark rights for ELECTROLUX and no license or authorization was granted to the Respondent to use the Trademark in the disputed domain name or in any other manner.
The Complainant further argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, as it is currently connected to a web site offering repair services for the Complainant's products as well as offering several of the Complainant's products for sale. Accordingly, the Complainant contends that the Respondent is misleading Internet users to a commercial web site and is tarnishing the Trademark.
In substance, the Complainant contends that the Respondent is unable to rely on any of the circumstances set out in the Policy, paragraph 4(c) in order to demonstrate rights or legitimate interests in the disputed domain name. More particularly, the Complainant submits that the Respondent (i) is not commonly known by the disputed domain name; (ii) cannot assert that it has made or is currently making any legitimate noncommercial or fair use of the disputed domain name, and (iii) cannot assert that its use of the disputed domain name is in connection with a bona fide offering of goods and services.
(c) The disputed domain name was registered and is being used in bad faith
The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.
The Complainant submits that registration in bad faith is established on the basis of the fact that the Complainant’s Trademark, registered long before the registration of the disputed domain name, has acquired considerable goodwill and renown throughout the world. The Complainant therefore contends that it is inconceivable that the Respondent was not aware of the Complainant’s rights in the name ELECTROLUX when registering the disputed domain name. The Complainant further contends that the Respondent registered the disputed domain name with the intention of taking advantage of the strength of the Trademark and to create a false association with the Complainant.
Furthermore, the Complainant argues that the lack of responses from the Respondent to the cease and desist letter, and to any reminders, supports an inference of bad faith.
The Complainant further submits that the Respondent was using the disputed domain name to intentionally attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of its web site. Such assertion is supported by the fact that disputed domain name is connected to a web site offering repair and maintenance services for the Complainant's products, as well as offering some of them for sale.
The Complainant submits that the Respondent is not using the dispute domain name in connection with a bona fide offering of goods and services and that the disputed domain name was registered and used in order to create the false impression that the Respondent is an authorized repair and service provider for the Complainant's products and to mislead Internet users and thus generate traffic from Internet users who are looking for the Complainant's products.
The Complainant further puts forward several elements showing use in bad faith of the disputed domain name by the Respondent, and in particular the fact that (i) the Respondent is using the ELECTROLUX logotype, (ii) the lack of a disclaimer on the web site to which the disputed domain name directs as to a lack of relationship between the Complainant and the Respondent; and (iii) the fame and the distinctiveness of the ELECTROLUX Trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview 2.0”, paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
As a result, asserted facts that are not unreasonable will be taken as true by this Panel.
Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this 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, this Panel shall further analyse the eventual concurrence of these three grounds in the present case. A. 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(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to ELECTROLUX since well before the disputed domain name was registered.
Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy use of its Trademark for its commercial activities, and in particular in relation to goods and services in the areas for appliances and equipment for kitchen and cleaning.
Secondly, the disputed domain name fully incorporates the Complainant’s distinctive and well-known ELECTROLUX Trademark in which the Complainant has exclusive rights. This Panel finds, similarly to other UDRP panels, that it is established that where the domain name incorporates a complainant’s registered Trademark, as the dominant element, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Aktiebolaget Electrolux v. Diana Virginina Rodríguez Cazorla, Govone Develops, S.L.,WIPO Case No. D2014-0940; Nokia Corporation v. Jameela Seif,WIPO Case No. D2009-1665; Société Nationale des Chemins de Fer Français SNCF contre Assane Amadoun, WIPO Case No. D2012-0714).
Thirdly, this Panel finds on the basis of previous UDRP decisions that the mere addition of generic terms is, in general, insufficient to make a disputed domain name distinctive such that it is not confusingly similar to the complainant’s registered Trademark. (See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488; Moncler S.r.l. v. xie guoren, WIPO Case No. D2010-2161; Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694; Sanofi-Aventis, Aventis Inc., Aventisub II Inc. v. Yur Bar, WIPO Case No. D2010-0663). Consequently, this Panel finds that the mere addition of the prefix “baohanh” (which means “guarantee” in Vietnamese) and the suffix “24h”, which are descriptive or generic terms, does not distinguish the disputed domain name from the Trademark, nor dispel the risk of confusing similarity.
Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s ELECTROLUX Trademark. B. 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”.
This Panel finds in light of the Complainant’s asserted facts, that the Respondent has no Trademark rights in the term ELECTROLUX. Furthermore, the Respondent has no license, permission or authorization of any kind to use the Trademark has been granted to the Respondent by the Complainant. Thus, the Respondent has no own rights in ELECTROLUX.
Normally, a reseller or distributor can make a bona fide offering of goods and services and thus have a right or legitimate interest 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:
- 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.
This Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorised reseller, such as it is the case in this proceeding (LEGO Juris A/S v. Daniel Aziz,WIPO Case No. D2011-1829; National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524).
Examination of the web site operating under the disputed domain name, as properly evidenced by the Complainant, shows that it does not fulfil the Oki Data criteria, and in particular the third criterion.
Indeed, the Respondent does not disclose a relationship it would have with the Complainant. More particularly, this Panel finds that the Respondent has never included a disclaimer or any other indication on the web site to which the disputed domain name points indicating that the Respondent is not affiliated to or sponsored by the Complainant. In addition, this Panel finds that the web site at the disputed domain name, as clearly evidenced by the Complainant, reproduces the Complainant’s products and logotypes.
Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has any registered Trademark or trade name corresponding to the disputed domain name, nor has it been commonly known by the disputed domain name.
This 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, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and finds after reviewing the web site as evidenced by the Complainant, that the Respondent had or should have had full knowledge of the Trademark and that its only intention was to deprive the Complainant from a strategic domain name, create an impression of association with the Complainant, mislead Internet users to one or more other commercial site and thus generate traffic and income by free riding on the good reputation of the Complainant and its Trademark.
For all the foregoing reasons, this Panel finds the Respondent’s use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this 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”.
This Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the web site and its content as evidenced by the Complainant, that the Respondent must have known and was aware of the rights in the prior well-known Trademark ELECTROLUX and the associated products and services at the time of the registration of the disputed domain name.
This Panel further finds that the Respondent registered the disputed domain name with the intention of creating a false association with the Complainant, with the intention of profiting from the Complainant’s goodwill and reputation attached to the Trademark.
Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name.
In this respect, this Panel believes after reviewing the site at the disputed domain name and its content as evidenced by the Complainant that the Respondent registered and is using the disputed domain name to offer repair and maintenance services for the Complainant's products as well as offering some of them for sale, and thus to attract, for commercial gain, Internet users to the site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its site (see Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031).
This Panel finds indeed that the Respondent was using the disputed domain to confuse Internet users searching for the Complainant by incorporating the Trademark in its entirety in conjunction with the generic and descriptive terms “baohanh” and “24h”. This Panel therefore concludes that the Respondent registered and uses the disputed domain name to create the false impression that the Respondent is an authorized repair and service provider for the Complainant's products and services in order to generate traffic and to attract, for commercial gain, Internet users to the site, by creating a likelihood of confusion with the Complainant’s well-known Trademark. Such conclusion is further evidenced by the fact that the Respondent is using the ELECTROLUX logotype.
Furthermore, this Panel finds that the web site at the disputed domain name did not include any disclaimers or other indication that the Respondent intended to distinguish or separate its services from those of the Complainant (LEGO Juris A/S v. Simonovi Eood,WIPO Case No. D2012-0863).
Finally, this Panel has considered the Complainant’s arguments in relation to the lack of response by the Respondent to the cease and desist letter sent by the Complainant prior initiating the present UDRP proceedings. This Panel finds, similarly to other UDRP panels, that the Complainant cannot simply rely upon a failure to reply to a cease and desist letter as conclusive proof of bad faith registration and use of the disputed within the meaning of paragraph 4(b) of the Policy (see AB Electrolux v. tanhuajiang,WIPO Case No. D2012-0685).
In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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.
Benoit Van Asbroeck
Sole Panelist
Date: October 31, 2014
Full & Egal Universal Law Academy