The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Nguyen Van Dien of Hai Duong, Viet Nam. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with OnlineNic, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 2, 2016. On September 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 5, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 3, 2016.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 10, 2016. 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 Complainant, AB Electrolux, is a Swedish joint stock company founded in 1901. The Complainant is one of the world's leading producers of appliances and equipment for kitchen and cleaning products and floor care products, who is selling many home and professional appliances to customers in 150 countries every year, including Viet Nam. In 2014, Electrolux had sales of SEK 112 billion and about 60,000 employees.
The Complainant is the owner of a number of international registered trademarks ELECTROLUX, both in word and figurative forms, alone and in combination with other elements, in several classes in more than 150 countries all over the world. The Complainant further evidenced that it owns Vietnamese Trademark Registration No. 13319 dated September 14, 1994, and International Trademark Registration No. 836605 registered in 2004, both of these trademarks predate the registration of the Disputed Domain Name.
The Complainant also owns numerous domain names under generic Top-level Domains ("gTLDs") and country-code Top-level Domains ("ccTLDs") containing the term "electrolux", one of which is the domain name created on June 1, 2006.
Finally, through its extensive use, the Complainant has gained over the years substantial reputation internationally for its Electrolux products.
The Respondent registered the Disputed Domain Name on June 3, 2014. The website under the Disputed Domain Name has been under operation for promotion of the Respondent's services in repairing Electrolux's refrigerators.
As indicated in the case file, the Complainant's attorneys sent to the Respondent a cease-and-desist letter on March 31, 2016 and a reminder on April 20, 2016, in which they asked for, amongst others, a voluntary transfer of the Disputed Domain Name. However, the Respondent did not reply. 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:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the Complainant is and has been for many years the right holder of the trademark ELECTROLUX in several classes in numerous countries worldwide, including in Viet Nam. The Electrolux brand is the Complainant's flagship brand for kitchen and cleaning appliances for both consumers and professional users. The ELECTROLUX trademark well predates the Respondent's registration of the Disputed Domain Name.
The Complainant further contends that the Disputed Domain Name is confusingly similar to the Complainant's trademark, as it comprises the term "electrolux", which is identical to the trademark in its entirety, and the addition of the prefix does not materially change the confusingly similar conclusion. On the other hand, the additional generic terms added underscore an attempt to connect to the trademark of the Complainant.
Finally, the Complainant submits that the addition of the gTLD ".com" in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the Respondent is using the Disputed Domain Name incorporating the Complainant's trademark to attract Internet users to its website where it offers repair services, by arguing that (i) the Complainant has an agreement with all its authorized partners that it is strictly forbidden for the licensees/distributors of the Complainant to register domain names incorporating the Complainant's trademark; (ii) the Respondent's prominent use of the Complainant's outdated stylized ELECTROLUX logo on the Disputed Domain Name leads to the belief that the Disputed Domain Name is in a connection with the Complainant; and (iii) the use of the word "electrolux" by the Respondent strongly suggests that the Respondent has some official or authorized link with the Complainant for the purposes of the repair services in Viet Nam.
Further, the Complainant refers to the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data") and submits that the Respondent's conduct does not meet the Oki Data criteria on three elements: (i) the Respondent does not publish a disclaimer on the page at the Disputed Domain Name; (ii) the Respondent is depriving the Complainant of reflecting its own mark in the Disputed Domain Name; and (iii) the Respondent presents themselves as the trademark owner by displaying the ELECTROLUX logo-typed trademark on the website.
Finally, the Complainant submits that the Respondent's use of the Disputed Domain Name cannot be considered as legitimate use by arguing that (i) the Respondent was aware of the Complainant's trademark prior to the acquisition of the Disputed Domain Name and the establishment of the Respondent's website; and (ii) the Respondent is not known by the Disputed Domain Name, nor does the Respondent claim to have made legitimate, noncommercial use of the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant contends that the Complainant first tried to contact the Respondent on March 31, 2016 through a cease-and-desist letter, in which the Complainant requested, amongst others, a voluntary transfer of the Disputed Domain Name. Despite the Complainant's reminder on April 20, 2016, the Respondent did not reply, which can be considered relevant for a finding of bad faith.
The Complainant further argues that the Respondent has never been granted permission to register the Disputed Domain Name and the 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. In addition, the Respondent does not disclose on the website at the Disputed Domain Name the non-existing relationship between it and the Complainant. Consequently, the Respondent is using the Disputed Domain Name to intentionally attempt to attract visitors to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or a product or service on the Respondent's website or location.
The Complainant also submits that the Respondent's bad faith registration and use of the Disputed Domain Name is inferred by arguing that (i) it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the Disputed Domain Name registration; (ii) the Respondent never replied to the Complainant's cease-and-desist letter, and (iii) the Respondent represents itself as the trademark owner by displaying the Complainant's logo multiple times on the website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent's default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements is 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;
(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. 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.
Firstly, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to ELECTROLUX, well before the Disputed Domain Name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer kitchen and cleaning appliances for both consumers and professional users worldwide.
Secondly, the Disputed Domain Name comprises the Complainant's distinctive and widely-known ELECTROLUX mark in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the ELECTROLUX trademark is the addition of the prefix "baohanhtulanh", which can be written with accent marks as "bảo hành tủ lạnh" in Vietnamese and means "maintenance of refrigerators" in English. Despite the fact that "baohanhtulanh" itself has no meaning in English, Vietnamese customers are likely to perceive it as "bảo hành tủ lạnh" ("maintenance of refrigerators" in English). Thus, this prefix should be considered as a descriptive term. The Panel finds that "Electrolux" remains the dominant element in the Disputed Domain Name. It is well established that the addition of descriptive terms (such as "baohanhtulanh") to a trademark does not prevent confusing similarity, thus, in the Panel's view, the addition of the said prefix does nothing to distinguish the Disputed Domain Name from the trademark, nor to dispel the confusing similarity, as it was found in previous UDRP decisions (see, e.g., Aktiebolaget Electrolux v. ibp,WIPO Case No. D2013-0795; AB Electrolux v. Ong Bui Trung Kien,WIPO Case No. D2012-2320; AB Electrolux v. Ong Nguyen Duy Luat,WIPO Case No. D2016-0685).
Thirdly, the Panel finds, similarly to other prior UDRP panels, that the addition of the gTLD ".com" to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's ELECTROLUX trademark, and the first element under paragraph 4(a)(i) of the Policy is established. 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."
The Panel finds, in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the trademark ELECTROLUX.
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have rights or legitimate interests in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, supra:
- 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.
The Panel finds, similarly to other prior UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller, such as it is the case in this dispute (see, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524).
However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria. On the website under the Disputed Domain Name, the Respondent does not place any statement or disclaimer disclosing the lack of relationship with the Complainant, but a misleading statement that it is a "Maintenance Center for Electrolux Refrigerators" at the header of the web page under the Disputed Domain Name, and a copyright notice that "Copyright 2010 Center for warranty repairs Electrolux refrigerator in Hanoi All rights reserved", while it is not an authorized service provider of the Complainant, and also it secures no right over the "Electrolux" word and device. Further, the use of the Complainant's logo-typed trademark (although outdated) on the website is further evidence of the Respondent's intention to create an impression of a false association with the Complainant. For all foregoing reasons, the Panel finds the Respondent's use of the Disputed Domain Name cannot be considered to be a bona fide offering of goods or services.
Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name. The 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, as it appears following the Complainant's assertions and evidence with regard to the Respondent's registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark and had an intention to gain profit by riding on the good reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established. 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 the 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".
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant's contentions and, therefore, has not refuted the Complainant's contentions.
The Panel has considered the Complainant's assertions and evidence with regard to the Respondent's registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant's ELECTROLUX trademark has been registered on a worldwide basis. The Complainant's ELECTROLUX trademark has been in use in, among other countries, Viet Nam where the Respondent resides.
The Disputed Domain Name comprises the ELECTROLUX trademark in its entirety, adding only the prefix "baohanhtulanh", which is a descriptive term for "maintenance of refrigerators" in Vietnamese. "Electrolux" is being used in the Complainant's ELECTROLUX trademark, trade name, and domain names , , which all well predate the registration of the Disputed Domain Name.
Also, the Panel finds that given the fact that the Complainant's ELECTROLUX trademark, which is a coined word, without any dictionary meaning, is not descriptive of anything and devoid of meaning other than the products of the Complainant, it is very unlikely that the Respondent would have registered the Disputed Domain Name incorporating the trademark without knowledge of the trademark (see in the same way Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240; Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534) and that it defies common sense to believe that the Respondent coincidentally selected this precise domain name without any knowledge of the Complainant and its trademark (see in the same way Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Volkswagen AG v. Swiss Recruitment, supra.).
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. Given the use of the Disputed Domain Name, the Respondent obviously knew of the Complainant and its ELECTROLUX trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant's goodwill, and this conduct constitutes bad faith registration.
Further, the Panel finds that on the date of this Decision the Disputed Domain Name resolves to an inactive website. However, it is well proved and evidenced by the Complainant that by the date on which the Complaint was filed, the website under the Disputed Domain Name had been used for promoting the repair and maintenance services for Electrolux refrigerators.
In this regard, the Panel also finds that in addition to the adoption of the Complainant's trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant's logo-typed trademark on the website and placed, instead of statements on the lack of its relationship with the Complainant, several misleading statements or notices implicating on an association with the Complainant, while such an association does not exist in reality.
With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent's actual use of the Disputed Domain Name appears to mislead consumers into thinking that the website is associated, fostered or recommended by the Complainant. Such misleading behaviour is indicative of bad faith use within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent (see in the same way Aktiebolaget Electrolux v. Jose Manuel,WIPO Case No. D2010-2031).
In addition, the Panel notes the fact that the Respondent received a cease-and-desist letter from the Complainant and did not respond to it. Instead, the Respondent continued to use the Disputed Domain Name as an Internet address for an active website until the date it was notified of the commencement of the UDRP proceeding. This is further indication of the Respondent's bad faith and its intent to capitalize on the reputation and goodwill of the Complainant's trademark even after the Respondent was informed by the Complainant under the cease-and-desist letter of such behavior.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy is established. 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.
Pham Nghiem Xuan Bac
Sole Panelist
Date: October 20, 2016
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