The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Refrigeracao Willistrup Ltda - Me, Maria Valderez hora of Curitiba, Paraná, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2016. On September 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 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 Richard G. Lyon as the sole panelist in this matter on October 7, 2016. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his 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 is a Swedish producer and seller of appliances and equipment for kitchen and cleaning products and floor care products. It has sold white goods, particularly vacuum cleaners, in Sweden and abroad since early in the twentieth century. Its flagship brand remains ELECTROLUX, for which the Complainant holds many trademarks around the world. It holds a trademark for ELECTROLUX duly registered in Brazil in 1930 and has done substantial business in that country through a corporate subsidiary. The Complainant also holds (and has held since 1996) several domain names that employ the country code Top-Level Domain (ccTLD) for Brazil, “.br”, that are used to market the Complainant’s products in Brazil.
The Respondent registered the disputed domain name in January 27, 2015. When the Panel first accessed the disputed domain name he found an active website in Portuguese offering sales on and service of Electrolux products and competing products, as alleged (and evidenced with a screen shot) in the Complaint. Subsequently the text changed to a notification, also in Portuguese, that translates roughly to “Our shop is in maintenance at this time. We hope to see you again soon!. RW Electrolux.” On both occasions the website included the Complainant’s stylized trademark and name. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
1. The disputed domain name has as its dominant feature the Complainant’s ELECTROLUX mark, and is thus confusingly similar to a trademark in which the Complainant holds registered rights around the world, including in Brazil. Addition of the generic Top-Level Domain (gTLD) “.com” and the Respondent’s initials RW [for Refrigeraçåo Willistrup] does not obviate confusion.
2. The Complainant has never authorized the Respondent to use its marks, in a domain name or otherwise. The Respondent does not meet the standards set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903,1 for an unauthorized reseller’s use of the manufacturer’s mark in a domain name, among other reasons, because the website has no disclaimer of affiliation with the Complainant and the Respondent is not selling the Complainant’s products exclusively. The Respondent therefore lacks rights or legitimate interests in the disputed domain name.
3. The Respondent clearly knew of the Complainant and its marks at the time of registration, as demonstrated by its inclusion of the Complainant’s logo and mark on its website, and because the ELECTROLUX mark is a well-known consumer brand in Brazil. The Respondent’s use of the mark to compete with the Complainant falls squarely within the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy, that “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.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Standard of Proof in a Default Case.
Unlike civil litigation in the United States, the Respondent’s default does not automatically result in a decision for the Complainant or constitute an admission of any factual matters pleaded in the Complaint. See WIPO Overview 2.0, paragraph 4.6. Each Policy element must still be proven, not just alleged. The Complainant’s proof here is thorough and complete, making out a textbook case of cybersquatting. B. Scope of the Policy.
The Panel deems it appropriate to emphasize that the sole matter to be decided in this proceeding is the Respondent’s entitlement or not to use the Complainant’s mark in the disputed domain name. Not at issue are questions of whether the Respondent may provide the Complainant’s products (or service on those products), or whether the Respondent’s use of the Complainant’s marks in its name and business constitute trademark infringement. Those issues would raise questions of Brazilian law far outside this Panel’s limited brief. The Complainant, properly and to its credit, asks for no such determination. C. Identical or Confusingly Similar.
For the reasons advanced by the Complainant in Section 5.A.1 above, the Panel finds that this Policy element has been established. D. Rights or Legitimate Interests.
This Panel, though occasionally applying the Oki Data standards to unauthorized resellers,2 has expressed skepticism at using that test in all cases involving them. This case demonstrates one reason underlying that skepticism. The Complainant’s evidence includes a copy of its contract with authorized resellers, under which the distributors are prohibited from registering domain names that include the Complainant’s trademarks. Should the Respondent pass the Oki Data test and be permitted to retain the disputed domain name, it would thus secure a privilege unavailable to authorized resellers – clearly something the Policy ought not allow. To this Panel’s thinking any contractual restriction on authorized dealers that an unauthorized dealer does not adhere to should bar an Oki Data defense.
The foregoing is not strictly necessary for resolution of this case, for the Complainant has amply demonstrated that the Respondent has not cleared at least two hurdles set out in Oki Data. The Respondent does not use the disputed domain name to sell only Complainant’s products. And far from “accurately and prominently disclosing the registrant’s relationship with the trademark holder,” WIPO Overview 2.0, paragraph 2.3, by using the Complainant’s trademark and logo on a standalone basis and without a disclaimer the Respondent almost certainly intended to “creat[e] a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.” Policy, paragraph 4(b)(iv). E. Registered and Used in Bad Faith.
Use of the Complainant’s mark and logo similarly betrays that the Respondent both knew of and intended to prey upon the value of the Complainant’s trademark when it registered and used the disputed domain name. That conclusion is all the more apparent given the distinctive nature and renown of the Complainant’s mark. The Complainant has demonstrated bad faith. 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.
Richard G. Lyon
Sole Panelist
Date: October 11, 2016
1 As summarized in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3, the Oki Data criteria are “These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to ‘corner the market’ in domain names that reflect the trademark.”
2 See, e.g., BSH Home Appliances Corporation v. Michael Stanley / Michael Sipo,WIPO Case No. D2014-1433.
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