Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
Respondent is Grupo Servi-Tec, Armando Perez of Ecatepec, Mexico. 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, 2015. On September 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 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.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 2, 2015.
The Center appointed Richard Hill as the sole panelist in this matter on October 21, 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 has rights in the registered trademark FRIGIDAIRE. This mark is registered in many countries around the world and it is well known, including in Mexico.
The disputed domain name was registered on June 20, 2014, well after Complainant registered its mark.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to market repair services. The website at the disputed domain name creates an impression of being an official site endorsed by Complainant. It displays Complainant’s trademark. 5. Parties’ Contentions A. Complainant
Complainant states that it is a Swedish joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products. It has a brand heritage second to none in the world, with a long list of “firsts” and boasts a customer base that is the envy of the industry. It employs about 60,000 people around the world.
Complainant alleges that it holds several trademarks for FRIGIDAIRE including in Mexico where the mark was registered in 2005. The registration of the trademark predates the registration of the disputed domain name. Due to extensive use, advertising, and revenue associated with its FRIGIDAIRE mark worldwide, Complainant enjoys a high degree of renown around the world, including in Mexico. The mark is used to market refrigerators and related products.
According to Complainant, the disputed domain name, which was registered on June 20, 2014, is confusingly similar to its mark because it directly incorporates Complainant’s well-known registered trademark FRIGIDAIRE, and merely adds the descriptive words “servicio” and “mexico”. The additional non-distinctive elements within the disputed domain name are not sufficient to distinguish it from Complainant’s trademark; on the contrary, their presence is likely to increase the risk that Internet users will be confused into associating the disputed domain name with Complainant and its FRIGIDAIRE brand. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent is using the disputed domain name to attract Internet users to its website where it offers repair and installation services. The website is construed in a way that it creates an impression of being an official site endorsed by Complainant. This is supported by the lack of a distinctive disclaimer explaining that the site is not endorsed nor sponsored by Complainant. Moreover, Respondent is using Complainant’s logotype on the website without authorization. Respondent’s layout includes a stylized FRIGIDAIRE logo that appears prominently on the top left of the website. The prominent use of Complainant’s trademark on Respondent’s website strongly suggests that there is a connection with Complainant. At the bottom of the site there is a text that only states that “the respective marks belong to the respective trademark owner”. It doesn’t state that the trademark FRIGIDAIRE is the property of Complainant. Respondent’s activities overall suggest a desire to create the impression that it is associated with Complainant with a view to attracting customers for its repair services. Respondent is not known by the disputed domain name, nor does Respondent claim to have made legitimate, noncommercial use of the disputed domain name. This behavior coupled with the use of the disputed domain name cannot be considered as legitimate use of the disputed domain name. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent’s use of the trademark FRIGIDAIRE and Complainant’s logotype on the website which indicates that at the time Respondent made the registration and the publication of the contents on the website, Respondent was well aware of Complainant and its trademark. Respondent intentionally chose the disputed domain name based on a registered and well-known trademark in order to generate more traffic to its own business. Nowhere does Respondent disclaim on its website the non-existing relationship between itself and Complainant. The disputed domain name is currently connected to a repair center website, consequently, Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. This conduct has been considered as bad faith under the Policy. Complainant cites UDRP precedents to support its position. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is clear that the disputed domain name is confusingly similar (in the sense of the Policy) to Complainant’s mark, because it contains the mark and merely adds the common word “servicio” and the geographical description “mexico” to form the disputed domain name. See PACCAR, Inc. v. Enyart Associates and T, LLC,WIPO Case No. D2000-0289; see also Quixtar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253; Shenzhen Mindray Bio-Medical Electronics Co., Ltd. v. Laura E Torres,WIPO Case No. D2015-0771; Aktiebolaget Electrolux v. Paulo Henrique Petrucci, WIPO Case No. D2013-1587.
The Panel holds that Complainant has satisfied its burden of proof for this first element of the Policy. B. Rights or Legitimate Interests
Respondent does not have any license or other authorization to use Complainant’s mark or to sell its products or services. Respondent is using the disputed domain name to resolve to a web page that creates an impression of being an official site endorsed by Complainant, in particular by displaying Complainant’s trademark without accurately and prominently disclosing the lack of Respondent’s relationship with Complainant. Thus Respondent’s use of Complainant’s mark in the disputed domain name appears to be an attempt to trade off of Complainant’s reputation and goodwill by taking advantage of the confusing similarity between the disputed domain name and Complainant’s trademark.
Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services for purposes of the Policy. Where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937).
The Panel holds that Complainant has satisfied its burden of proof for the second element of the Policy. C. Registered and Used in Bad Faith
Respondent (who did not reply to the Complainant’s contentions) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As noted above, Respondent is using the disputed domain name to resolve to a web page that creates an impression of being an official site endorsed by Complainant. Respondent likely obtains revenue from that web page. Thus the Panel finds that Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946; see also AB Electrolux v. Pablo Rodriguez,WIPO Case No. D2011-0729.
The Panel holds that Complainant has satisfied its burden of proof for the third element 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.
Richard Hill
Sole Panelist
Date: October 22, 2015
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