Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
Respondent is OOO “Innovative technology” of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with RU-CENTER-MSK (Regional Network Information Center, JSC dba RU-CENTER) (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2015. On June 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details, and indicating that Russian is the language of the Registration Agreement for the disputed domain name.
On June 19, 2015, the Center sent a notification to the Parties, inviting Complainant to provide satisfactory evidence of an agreement between the Parties that the proceedings should be conducted in English, to submit the Complaint translated into Russian, or to submit a request that Russian be the language of proceedings, as well as inviting Respondent to make submissions in this regard. Complainant filed a request that English be the language of proceedings on June 22, 2015. The Center received an informal communication from Respondent on June 23, 2015.
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 Respondent of the Complaint in both English and Russian, and the proceedings commenced on June 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 20, 2015.
The Center appointed Clark W. Lackert as the sole panelist in this matter on July 29, 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
Complainant is a Swedish company which was founded in 1901 and specializes in home and professional appliances. Complainant conducts business under its ELECTROLUX mark and sells a broad range of products under this mark. The record confirms that Complainant’s ELECTROLUX mark is registered in multiple countries throughout the world for appliances and retail services including countries in Europe, Asia, Africa, North America, and Oceania. In this regard, Complainant is the owner of, inter alia, International Trademark ELECTROLUX, registered March 17, 2004. The record also indicates that Complainant owns multiple domain names incorporating its ELECTROLUX mark and that Complainant sells its products in more than 150 countries.
The disputed domain name was registered on January 13, 2015 and displays content in the Russian language including promotion for the design, sale, installation, and service of appliances alongside a slideshow of images featuring appliances which are branded with the ELECTROLUX trademark. Complainant’s ELECTROLUX design mark is prominently featured on the home page associated with the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is identical to its ELECTROLUX mark on the basis that the incorporation of the generic Top-Level Domain (“gTLD”) “.center” does not add distinction or distinguish the disputed domain name from its ELECTROLUX trademark. Complainant contends that Respondent cannot have any rights or legitimate interests in the disputed domain name because the disputed domain name promotes Respondent as a federal distributor of Electrolux products in the Russian Federation when in fact Respondent is not an authorized distributor of Complainant. Complainant has also provided copies of its form license and distributorship agreements which state that its partners are not authorized to register domain names incorporating its ELECTROLUX trademark.
Complainant acknowledges that third parties may be permitted to offer services for its ELECTROLUX products on their websites but emphasizes that the use of its mark in this case suggests that Respondent maintains an official or authorized link with Complainant and/or that Respondent is an approved provider of repairs and service of Complainant’s products in the Russian Federation. Complainant cites the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 regarding the permissive use of a complainant’s trademark for the bona fide offering of goods and services, noting that certain conditions must be present in order to support a finding for a respondent. In this case, Complainant maintains that Respondent cannot be a bona fide user of its mark because Respondent is not accurately disclosing its relationship with Complainant, is presenting itself as a trademark owner by utilizing Complainant’s ELECTROLUX mark on webpages, and is adversely affecting Complainant’s ability to secure registration of its ELECTROLUX mark as a domain name in a generic Top-Level Domain (“.center”). In sum, it is Complainant’s position that Respondent’s use of its domain name without an accurate disclaimer outlining Respondent’s relationship with Complainant constitutes bad faith registration and use of the disputed domain name.
Regarding bad faith, Complainant emphasizes that Respondent ignored a cease-and-desist letter concerning the disputed domain name and carried on using the disputed domain name for its own benefit. Complainant also alleges that Respondent’s use of the disputed domain name and Complainant’s ELECTROLUX mark is an intentional attempt to attract visitors to the website associated with the disputed domain name for commercial gain, and that this use is in bad faith because there is no connection or affiliation between Complainant and Respondent and Complainant has not sponsored or endorsed Respondent’s website or the associated content. Complainant also notes that Respondent should have been aware of Complainant’s trademark rights because Complainant registered its ELECTROLUX mark with the Trademark Clearinghouse for the “.center” gTLD registry, and that this registration would have triggered a warning notice from the registry to Respondent which would have outlined Complainant’s rights in its ELECTROLUX mark. B. Respondent
Respondent did not submit a formal response to the Complaint. Respondent’s only communication was an email dated June 23, 2015 in response to the notification from the Center regarding the language of the proceeding. The email was written in English and stated that Respondent registered the disputed domain name without intending any harm, that the disputed domain name was available for registration by anyone in the world, and that Respondent had a right to consider itself an authorized dealer of climate equipment branded with the ELECTROLUX trademark based upon acquisition of a “technique” granted to it by a third party distributor. 6. Discussion and Findings A. Language of the Proceedings
The Complaint was submitted in the English language. The language of the Registration Agreement is Russian. The Center acknowledged this discrepancy and advised Respondent that a response could be submitted in either language and that it would appoint a Panel familiar with both languages.
Complainant has argued that English should be recognized as the language of the proceeding, taking the position that Respondent did not reply to the cease-and-desist letter with any indication that it did not understand the content and noting the disputed domain name is composed with Latin script characters rather than Russian characters. Respondent has not challenged Complainant’s position; in fact, Respondent replied to the Center’s notification concerning the language of the proceeding with an email written in the English language which did not contest the proceeding’s language.
The Panel is familiar with both languages and has reviewed the case file and all supporting materials. The Panel notes that Respondent has communicated with the Center in English, and that Respondent demonstrated in its email that it is capable of communicating in English. Further, Respondent did not challenge the conduction of the proceedings in English even though it had ample opportunity to do so. Since all communications from the parties have been submitted in English and the Panel is familiar with both the English and Russian languages and is able to comprehend all materials in the case file, the Panel has decided to continue with this proceeding in English. Translation of the materials into Russian at this stage would result in unnecessary expense and delay. B. Identical or Confusingly Similar
The record confirms that Complainant has rights in the ELECTROLUX mark which can be traced for many decades. Specifically, Complainant’s business registration certificate confirms that it has been trading since 1910 and has been operating under the name “Aktiebolaget Electrolux” since at least as early as 1957. Further, Complainant has provided evidence of WIPO trademark registrations for ELECTROLUX in composite design form which cover countries throughout the world and document trademark rights which precede the registration of the disputed domain name. In addition to being registered as a trademark throughout the world, Complainant’s ELECTROLUX mark has been acknowledged as a well-known mark by prior UDRP panels (see, e.g., AB Electrolux v. Ugur,WIPO Case No. D2015-1021, which stated that ELECTROLUX “is a very well known mark” and AB Electrolux v. Maksim,WIPO Case No. D2012-1859, which noted that the ELECTROLUX mark “has received worldwide recognition”).
The use of the gTLD “.center” in the disputed domain name does not add distinction. Parties which have registered domain names by combining an exact literal representation of a trademark and a gTLD have been found to have registered a domain name which is identical to the trademark at issue for purposes of the Policy. This has also been the case with domain names registered utilizing the gTLD “.center” (See CLARINS v. Jayson Jones,WIPO Case No. D2014-1138 which observed that the gTLD “.center” “may be discarded in considering the similarity between a domain name and a mark” when finding that the disputed domain name was identical to the complainant’s CLARINS mark; and Petroleo Brasileiro S.A-Petrobras v. Benoit Menetrieux,WIPO Case No. D2014-1673 which came to a similar conclusion that the gTLD “.center” should be disregarded for the purposes of comparison of a domain name and a complainant’s trademark under the first element).
Complainant owns trademark rights which precede the registration of the disputed domain name, and the disputed domain name is identical to Complainant’s trademark for the purposes of the Policy. Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests
There is no evidence in the record which indicates that Respondent is associated or affiliated with Complainant. There is also no evidence in the record that Respondent has any rights or legitimate interests in the term “Electrolux”.
Complainant has made out its prima facie case that Respondent lacks rights or legitimate interests, which Respondent has not rebutted. Respondent has admitted to registering the disputed domain name, but has not presented any evidence of rights or legitimate interests in the term “Electrolux”.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. D. Registered and Used in Bad Faith
The record shows that Complainant has established rights in its ELECTROLUX name and mark which precede the registration of the disputed domain name. Respondent’s use of “Electrolux” in the disputed domain name indicates that it was aware of Complainant’s trade name and mark when registering the disputed domain name. Any doubts in favor of Respondent are minimized upon consideration that a search query for “Electrolux” in Internet search engines displays thousands of links which are directly related to Complainant.
The content of the website at the disputed domain name indicates that Respondent is clearly aware of Complainant and Complainant’s business. Specifically, the content features a large depiction of Complainant’s ELECTROLUX composite design mark and images of appliances and equipment featuring Complainant’s ELECTROLUX mark which may actually be images of products sold by Complainant. The webpage associated with the disputed domain name also displays the language “Federal distributor in Russia” (in Russian) in close proximity to Complainant’s ELECTROLUX composite design mark (thereby suggesting an authorized relationship or other affiliation) and also includes a copyright notice which reads “© 2014-2015 Electrolux Center, All Rights Reserved” (in Russian). This content is indicative of efforts by Respondent to trade off the goodwill of Complainant’s trade name and mark and divert Internet traffic. Registration of a domain name incorporating another party’s mark and use of the domain name to display content related to goods and services provided under that mark has been held to be an indication of a respondent’s knowledge of the goods or services provided under the trademark. See Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517.
By registering the disputed domain name and displaying content related to the goods and services provided by Complainant under its ELECTROLUX mark, Respondent is diverting Internet traffic in violation of paragraph 4(b)(iv) of the Policy. There is no evidence in the record to refute this conclusion. Registration of the disputed domain name which is identical or confusingly similar to Complainant’s trademark for the purpose of displaying content related to products or services offered under that mark is in the circumstances of the present case indicative of bad faith in violation of paragraph 4(b)(iv) 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 Complainant.
Clark W. Lackert
Sole Panelist
Date: August 17, 2015
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