The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Hoang Dinh Cuong of Thanh Hoa, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2015. On March 2, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 3, 2015, 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 in English and in Vietnamese, and the proceedings commenced on March 18, 2015. The Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in English and Vietnamese on April 8, 2015.
The Center appointed Ellen B Shankman as the sole panelist in this matter on April 16, 2015. 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 date of the Domain Name registration was confirmed by the Registrar to be May 23, 2014. The Complainant provided evidence of multiple trademark registrations for the mark ELECTROLUX, together with the ELECTROLUX logo, including, inter alia, in Viet Nam (registered on November 26, 1993) and the CTM (registered on March 17, 2004), that predate the date of the Domain Name registration.
The Panel also conducted an independent search to determine that the Domain Name is currently active.
The Domain Name resolves to a website in Vietnamese offering repair services for the Complainant’s washing machine products.
Because there is no response, the facts regarding the use and fame of the mark, as well as the non-response from the Respondent to the cease & desist letter and subsequent communications sent, are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant
To summarize the Complaint, the Complainant is the owner of the world wide registered trademarks ELECTROLUX and the ELECTROLUX logo. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the generic words in Vietnamese that translate to “washing machine repair” and “24hr” does not prevent a finding of confusing similarity. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of Proceedings
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the panel determines otherwise. In the present case, although the language of the Registration Agreement for the Domain Name is in Vietnamese, the Respondent did not raise any objection to the Complaint filed in English and subsequently chose not to file a Response, despite receiving specific notification of the Complaint in Vietnamese. The Panel finds that the Center has so communicated to the Respondent as required, and the Respondent has not replied to the language request. In light of the non-response by the Respondent, despite having received specific notification of the proceedings in Vietnamese as well as in English, the Panel determines that it would be unnecessarily burdensome for these proceedings to continue in Vietnamese and fair within the Rules of paragraph 11(a) of the Rules to allow the Complainant to proceed in English and to let these proceedings continue in English. In consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11(a) of the Rules, that English shall be the language of the proceeding. A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for ELECTROLUX, and these rights precede the date of the Respondent’s obtaining the Domain Name.
The Domain Name string contains the identical string for “electrolux” in its entirely, and the Domain Name string contains the trademark of the Complainant. The addition of the Vietnamese terms for “washing machine repair” and “24hr” does not materially change this finding. If anything, the additional generic terms added underscore an attempted connection by the Respondent to the trademark of the Complainant.
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the Domain Name.” See: paragraph1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant's trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark ELECTROLUX, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270”.
The Complainant asserts that the Respondent is not affiliated with Complainant in any way nor has he been authorised by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating said mark.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
For the sake of completeness, the Panel finds that, in the circumstances of this case, use of the of the Domain Name to advertise repair services for the Complainant’s products does not give rise to a right or legitimate interest in the Domain Name. This finding is consistent with UDRP precedent regarding disputed domain names used to offer repair services for the Complainant’s products: “The Panel is of the opinion that, without express authority of the relevant trademark holder, to be an authorized technical service of that trademark holder’s products does not create a right to use a domain name that is identical, or otherwise wholly incorporates the relevant trademark.” Aktiebolaget Electrolux v. PrivacyP / Gokhan KAZAK,WIPO Case No. D2012-0987. C. Registered and Used in Bad Faith
The Complainant claims that it has used the mark in commerce and that the mark has become well-known. The Complainant provided evidence of use, as well as evidence of fame, of the marks ELECTROLUX and the ELECTROLUX logo, inter alia “ELECTROLUX is included in the ‘Superbrands 2014’ list and the Complainant was placed as number 46 on the RepTrak™ 100: The World’s Most Reputable Companies’ list for 2013” . The Complainant also provided evidence of (mis)use of the Complainant’s mark on the Respondent’s website.
The Panel finds compelling factual and circumstantial evidence in the record that the Respondent likely knew of the Complainant’s mark when it registered the Domain Name.
It has been held in previous cases that knowledge of a corresponding mark at the time of the domain name’s registration suggests bad faith (LEGO Juris A/S v. Reiner Stotte,WIPO Case No. D2010-0494; Caixa D’Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464).
The Panel finds that the Respondent used the Domain Name in bad faith. It is well-established that using a domain name which incorporates the Complainant’s trademark to offer repair services constitutes bad faith use: “by registering and using the disputed domain name incorporating the Complainant’s widely-known and widely-registered trademark ELECTROLUX, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.” Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031.
Given the evidence of the Complainant’s prior rights in the mark, the timing of the registration of the Domain Name, together with evidence of the use of the mark both in the Domain Name as well as in the website by the Respondent, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, 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 Domain Name be transferred to the Complainant.
Ellen B Shankman
Sole Panelist
Date: April 21, 2015
Full & Egal Universal Law Academy