The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Washington Souza Goncalves of Belo Horizonte, Minas Gerais, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, 2017. On February 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2017, 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 March 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2017.
The Center appointed David J.A. Cairns as the sole panelist in this matter on April 6, 2017. 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 is a Swedish joint stock corporation, dedicated to the production and sale of appliances, kitchen equipment and cleaning and floor care products.
The Complainant is the registered owner of numerous ELECTROLUX trademarks. Among these registrations are the Brazilian trademark registrations number 002521261 and number 002625920 for the word mark ELECTROLUX granted on August 30, 1970, and August 30, 1949, respectively, and last renewed on August 30, 2010.
The Complainant also holds several domain names registrations worldwide containing the ELECTROLUX mark with country code Top-Level Domains (“ccTLDs”), including , registered on August 23, 1996, and renewed on November 25, 2015, and , registered on January 2, 2012, and renewed on December 5, 2016.
The disputed domain name was registered on September 4, 2015. The Panel entered the disputed domain name in its web browser on April 7, 2017, and April 11, 2017. The Panel found that the landing page at the disputed domain name contains at its top left corner a blue logo and the word “Electrolux”. Beneath, there is a grey subscript that reads “Assistência Técnica Autorizada e Especializada” (Specialized and authorized technical assistance). The website also shows pictures of kitchen and other home appliances at the center of the page. When clicking on the heading “Empresa” (“Company”), the first sentence of the landing page reads: “A WCE – Service é una empresa que presta serviço técnico autorizado e qualificado na manutenção de diversos equipamentos da marca Electrolux”, (WCE Services is a company that provides technical, authorized and qualified services for the maintenance of various Electrolux appliances). The heading “Serviços” (“Services”) directs to a different landing page that reads: “Veja abaixo os diversos tipos de equipamentos da marca Electrolux que prestamos assistência técnica autorizada e especializada” (See below the different types of Electrolux appliances for which we provide technical, specialized and authorized assistance). The Panel concludes that the disputed domain name is used to host a website offering maintenance and other services in relation to ELECTROLUX products.
The Complainant sent a cease and desist letter to the Respondent on November 30, 2016, requiring the Respondent to “stop definitely to use the trademark Electrolux and/or logo, stop to use the terms ‘authorized’, ‘specialized’, ‘certified’ or similar at the website or any other communication, changing the ones already out in order to guarantee Electrolux rights of exclusive use of its name and logo.” There was no response to the Complainant’s letter. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. The Complainant states that the disputed domain name incorporates the Complainant’s trademark ELECTROLUX in its entirety and only differs from the Complainant’s ELECTROLUX trademark in the addition of the Portuguese generic term “autorizada”, which means “authorized” in English.
The Complainant states that the addition of a generic term such as “autorizada” does not differentiate the disputed domain name from its ELECTROLUX registered mark. Further, the addition of the generic Top‑Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain name from its well-known trademark.
The Complainant states that the Respondent has no rights or legitimate interests in respect to the disputed domain name. It asserts that there is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain name in relation to a bona fide offering of goods and services. The Complainant states that the Respondent is purporting to be an authorized service centre, which it is not. It states that it has received complaints in this regard.
The Complainant states that the Respondent is taking advantage of the good reputation of the Complainant’s ELECTROLUX trademark and is causing confusion among the Complainant’s clients. The Complainant asserts that the incorporation of the ELECTROLUX trademark in the disputed domain name and the Respondent’s use of an old ELECTROLUX logo at the top left of the landing page in connection with the Complainant’s products strongly suggest that the Respondent’s business is connected to the Complainant for the purposes of repairs or services within Brazil.
The Complainant cites the decision in Oki Data Americas, Inc. v. ADS, Inc.,WIPO Case No. D2001-0903 (“Oki Data”) to lay out the conditions under which an authorized or non-authorized third party is to be considered as to be making a bona fide offering of goods and services within the meaning of the Policy. The Complainant asserts that the Respondent fails to meet these requirements.
The Complainant states that it is undeniable that the Respondent knew of the existence of the Complainant’s trademark before registering the disputed domain name.
The Complainant avers that the Respondent has had several opportunities to submit arguments in relation to its rights to register the disputed domain name but has never done so.
The Complainant states that the disputed domain name was registered and is being used in bad faith. The fact that the ELECTROLUX trademark registrations predate that of the disputed domain name suggests that the Respondent was not unaware of the existence of the ELECTROLUX trademark when registering the disputed domain name.
The Complainant states that the Respondent is taking advantage of the Complainant’s ELECTROLUX trademark’s reputation to attract visitors to its own site for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant states that the Respondent’s failure to respond to a cease and desist letter shall be considered as an additional sign of use of the disputed domain name in bad faith, citing News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; and AB Electrolux v. Darcivan Petrucci, ,WIPO Case No. D2015-2258.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is required to decide on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate (paragraph 15(a) of the Rules).
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant owns the trademark registrations for the word mark ELECTROLUX referred to above.
The disputed domain name is not identical to the Complainant’s ELECTROLUX trademark. The disputed domain name incorporates the Complainant’s trademark entirely and adds the suffix “autorizada”.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), states that “the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms [...] typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
Paragraph 1.9 of the WIPO Overview 2.0 states that “the addition of merely generic, descriptive or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP”. The term “autorizada”, meaning “authorized” in Portuguese, is descriptive as it describes a characteristic of the services offered on the website at the disputed domain name.
In the present case, the Panel considers that on a visual comparison the disputed domain name is confusingly similar to the Complainant’s ELECTROLUX trademark for the following reasons: (i) ELECTROLUX is a distinctive trademark; (ii) the disputed domain name incorporates the ELECTROLUX mark in its entirety; (iii) the ELECTROLUX trademark remains easily recognizable in the disputed domain name; (iv) “autorizada” is a descriptive term which does not distinguish the disputed domain name from the Complainant’s ELECTROLUX trademark; (v) in fact, “autorizada” enhances the confusing similarity with the ELECTROLUX trademark by suggesting that the Respondent has been authorized to provide services in relation to ELECTROLUX products.
For the above reasons, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s ELECTROLUX trademark. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered trademark corresponding to the disputed domain name; (ii) there is no evidence that the Respondent has been authorized or licensed by the Complainant to use the ELECTROLUX trademark or to use or register the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent’s use does not satisfy the Oki Data criteria for use of a trademark by a third party in the bona fide offering of services as the Respondent does not accurately disclose its relationship with the trademark owner and instead falsely represents that it is authorized by the Complainant.
Paragraph 4(c) of the Policy refers to three circumstances, any of which is sufficient to evidence that the Respondent has rights or legitimate interests in the disputed domain name. In this case, there is no evidence of any legitimate noncommercial or fair use of the domain name. In fact, the Respondent is using the Complainant’s ELECTROLUX trademark for the purposes of offering maintenance and other services in relation to ELECTROLUX products. The Respondent is taking advantage of the goodwill and reputation of the Complainant’s trademark to mislead the Internet users for a commercial purpose. This is clearly not a bona fide nor legitimate use of the disputed domain name within the meaning of paragraph 4(c)(i) or (iii) of the Policy.
Furthermore, the lack of response to the Complainant’s cease-and-desist letter or to these proceedings is additional evidence that the Respondent has no rights or legitimate interests in the disputed domain name.
For the above reasons, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that a disputed domain name was registered in bad faith and also that it is being used in bad faith. Paragraph 4(b) of the Policy sets out four circumstances “in particular but without limitation” which, if found to be present by the Panel, shall be evidence of the registration and use of a domain name in bad faith.
The Panel finds that bad faith within the meaning of paragraph 4(b)(iv) of the Policy is established in the present case as the Respondent registered and is using the disputed domain name to attract, for commercial gain, Internet users to its own website in the belief that its website has some connection with the Complainant’s trademark as to its source, sponsorship, affiliation or endorsement, when in fact there is no such connection. The following circumstances support this conclusion: (i) the Respondent is using the disputed domain name for a commercial purpose, namely to offer maintenance and other services in respect of ELECTROLUX products; (ii) the Panel finds from the evidence presented that the Respondent’s linkage of the descriptive term “autorizada” and “Electrolux” was not coincidental but deliberate and in full knowledge of the Complainant’s ELECTROLUX trademark and chosen precisely because the fame and goodwill of the ELECTROLUX trademark in Brazil would attract Internet users to the website associated with the disputed domain name; (iii) the disputed domain name suggests that the Respondent has been authorized by the Complainant to provide services in relation to ELECTROLUX products, which is false; (iv) there are features of the Respondent’s website that deliberately enhance the false impression that the Respondent is authorized by the Complainant including the use of a logo previously associated with the Complainant, the transcript “Asistencia autorizada e especializada” (“authorized and specialized assistance”), and the assertion on the website that the Respondent provides technical, authorized and qualified services for the maintenance of various Electrolux appliances.
The Panel also finds that the Respondent’s lack of response to the cease-and-desist letter and its continuation to use of the disputed domain name in full knowledge of the Complainant’s objection is further evidence of its bad faith.
For these reasons, the Panel finds that the Respondent has registered and used the disputed domain name in 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.
David J.A. Cairns
Sole Panelist
Date: April 12, 2017
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