The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondents are Contact Privacy Inc., Customer 0137675148 and 0141384525 of Toronto, Canada / TMS and ICS Inc., of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Names and Registrar
The disputed domain names and (individually and collectively the "Domain Names") are registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 18, 2016 listing Contact Privacy Inc. Customer 0137675148 and 0141384525 of Toronto, Canada, as the Respondent. On January 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 18, 2016, the Registrar transmitted by email to the Center its verification response disclosing the actual registrants and respective contact information for the Domain Names as TMS and ICS Inc., both of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom and having the same contact, administrative and technical information. The Center sent an email to the Complainant on January 21, 2016 providing this new registrant and contact information disclosed by the Registrar and inviting the Complainant to amend the Complaint based on this new information regarding the actual Respondents. The Complainant filed an Amendment to the Complaint on January 22, 2016, which included a request for consolidation to add TMS and ICS, Inc., together as the Respondents in this proceeding even though the registration information for the Domain Names listed different corporate entities. On January 28, 2016, the Center send an email to the Complainant indicating that prima facie grounds for consolidation had been made and that the additional named parties would be tentatively added to the Complaint for the remainder of the proceeding pending a final decision by the appointed Panel.
The Center verified that the Complaint together with the Amendment to 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 the Respondents of the Complaint and the proceeding commenced on January 29, 2016. In accordance with the Rules, paragraph 5, the due date for filing a Response was February 18, 2016. The Respondents did not submit a response. Accordingly, the Center notified the parties of the Respondents' default on February 19, 2016.
The Center appointed Marylee Jenkins as the sole panelist in this matter on March 10, 2016. The Panel approves of and grants the Complainant's request for addition and consolidation of the Respondents in this proceeding and finds that the proceeding has been properly constituted. The Panel has further 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
Based on the review of the uncontested evidence submitted by the Complainant, the Panel determines that the Complainant is the owner of Canadian Trademark Registration No. TMDA50134 and National Trademark Registration No. TMA603018 for the word mark ELECTROLUX, registered on August 9, 1930 and February 24, 2004, respectively, and United Kingdom Registration Nos. UK00000469786, UK0000476992A and UK00000723498 for the word mark ELECTROLUX, registered in 1926, 1927 and 1953, respectively, in at least classes 7, 9, 11, 12, 16, 21 and 28 (individually and collectively "Complainant's Marks"). The Complainant also owns multiple domain name registrations that incorporate the Complainant's Marks including (registered on April 30, 1996) and (registered on October 8, 2007), which are used by the Complainant to market products and services under its Electrolux brand and are both directed to accessible websites.
The Domain Name was registered on September 11, 2008 and the Domain Name was registered on June 6, 2008. The Domain Names currently direct visitors to separate parked web pages containing pay-per-click advertising links related to the Complainant's products. Evidence has been presented that shows that the Domain Names also redirected visitors to a web page advertising an online brokerage site identified as the "Millionaire's Society". 5. Parties' Contentions A. Complainant
The Complainant states that it is a global leader in home and professional appliances, with a strong presence in the areas of kitchen appliances and equipment, cleaning products and floor care products. In support of this claim, the Complainant reports sales of SEK 112 billion and employs approximately 60,000 people as of 2014. The Complainant further asserts that its Electrolux brand is the Complainant's flagship brand for kitchen and cleaning appliances for both consumers and professional users.
The Complainant states that it commands a strong position in appliances and vacuum cleaners in the North American market and that its appliances are predominantly sold in the mass-market segment under the Frigidaire brand, with vacuum cleaners sold under the Eureka brand. The Complainant has indicated that the Electrolux brand is positioned within the premium segment for appliances and vacuum cleaners.
The Complainant states that it is the owner of all rights in and to the Complainant's Marks. In addition to the Complainant's Marks, the Complainant states that it owns registrations to ELECTROLUX as a word and figure mark in several classes in more than 150 countries and that these marks are well known and distinctive. The Complainant has further noted that the Complainant's Marks are registered in Canada and the United Kingdom, with the United Kingdom trademark registrations also covering the Cayman Islands.
The Complainant states that it also owns multiple domain name registrations that incorporate the Complainant's Marks, including (registered on April 30, 1996) and (registered on October 8, 2007), which are used by the Complainant to market products and services under its Electrolux brand. Both domain names were registered prior to the Respondents' registrations of the Domain Names in this proceeding.
The Complainant alleges that the Domain Names represent typo variants of its well-known ELECTROLUX mark that incorporate an additional "L" or "T" in the second level of the Domain Names. The Complainant further asserts that the addition of the generic Top-Level Domain (gTLD) ".com" does not add any distinctiveness to the Domain Names. In view of these allegations, the Complainant alleges that the Domain Names are therefore virtually identical and/or confusingly similar to the Complainant's Marks and that the Respondents' registrations of the Domain Names in association with parked pages containing advertising is typical of "typosquatting".
The Complainant asserts that the Respondents have no rights or legitimate interests in the Domain Names. The Complainant has provided evidence that the Domain Names were registered more than eighty years after the earliest date of commercial use associated with the Complainant's Marks and over a decade after the Complainant's registration of a domain name incorporating the Complainant's Marks (i.e., ). The Complainant states that it has not found any evidence that the Respondents are commonly known by the Domain Names and that there is no evidence that the Respondents have a history of using or preparing to use the Domain Names in connection with a bona fide offering of goods or services. The Complainant urges that the Respondents' use of the Domain Names to host parked pages containing pay-per-click advertising websites cannot be considered a legitimate use. The Complainant has also provided evidence that the Domain Names redirected to an online brokerage site that has no connection to the Complainant when visited using certain browsers. The Complainant asserts that there is no evidence that the Respondents have engaged in any activities that might give rise to legitimate rights in the Domain Names.
The Complainant further asserts that the Domain Names were registered and are being used in bad faith. The Complainant alleges that the Respondents were aware of the Complainant's Marks at the time of registration. To support this assertion, the Complainant has cited to the fact that the Complainant's Marks were registered more than seventy years prior to the Domain Names and that it has a strong business presence in Canada and the United Kingdom. The Complainant has also alleged that the Respondents' decision to hide their identities using a third party privacy protection service and their failure to respond to multiple attempts to contact them qualify as evidence of registration in bad faith. With respect to evidence of use in bad faith, the Complainant reasserts that use of the Domain Names to host pay-per-click websites using advertisements with the Complainant's Marks cannot represent a bona fide offering of goods or services or a legitimate noncommercial or fair use. B. Respondents
No response was filed by the Respondents with respect to this proceeding. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondents' default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above elements are present. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's Marks.
A review of each of the second-level domains of the Domain Names shows that each incorporates the Complainant's Marks (i.e., ELECTROLUX) in their entirety but includes an additional letter (i.e., "L" or "T"). Such additions do not prevent the Domain Names in issue from being considered confusingly similar to the Complainant's Marks. Based on the submitted evidence and uncontested assertions made by the Complainant, the Panel finds that the Domain Names are confusingly similar to the Complainant's Marks in which the Complainant has rights and that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the panel to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder's rights to or legitimate interests in a domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder's 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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.
No evidence has been presented that, before any notice to the Respondents of this dispute, the Respondents were using or were making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services or that the Respondents have been commonly known, as an individual, business or otherwise, by the Domain Names. In addition, no evidence has been presented to suggest that the Complainant has ever allowed or permitted the Respondents to register or use a domain name incorporating the Complainant's Marks in any fashion. Rather it is apparent that the Complainant had long time and well-established rights in the Complainant's Marks in numerous countries, including Canada and the United Kingdom, at the time of the Respondents' registrations of the Domain Names and that the Respondents nevertheless registered the Domain Names. Directing the Domain Names to parked web pages of the Registrar with pay-per-click links to other third party websites does not in the circumstances of the present case create any rights or legitimate interests in these Domain Names on the part of the Respondents. The Panel therefore finds that the Respondents do not have any rights or legitimate interests in the Domain Names and that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 the complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder's website or location.
No evidence has been presented that the Respondents are commonly known by either of the Domain Names or that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondents to register or use the Complainant's Marks. Further, no evidence has been presented that, before any notice to the Respondents of this dispute, the Respondents had been using or were making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services. Rather, the Respondents direct the Domain Names to parked web pages of their Registrar with pay-per-click links to third party websites. As the uncontested evidence shows, the Respondents were not making any legitimate noncommercial or fair use of either of the Domain Names and clearly had knowledge of the Complainant and the Complainant's Marks based on their misspellings of the Complainant's Marks in these Domain Names. Moreover, the Complainant has provided evidence that the Complainant's Marks are well known and used extensively around the world. This conclusion is further bolstered by the Complainant's registrations of domain names incorporating the Complainant's Marks more than a decade prior to the Respondents' registrations of the Domain Names in dispute. Based on the above, the Panel finds that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their parked web pages so as to create a likelihood of confusion with the Complainant's Marks as to the source, sponsorship, affiliation or endorsement thereof. The Panel therefore concludes that the Respondents have registered and are using the Domain Names in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Date March 31, 2016
Full & Egal Universal Law Academy