The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Tran Thanh Phong of Ho Chi Minh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 16, 2017. On May 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 26, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 1, 2017.
On May 26, 2017, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On May 28, 2017, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
The Center verified that the Complaint together with the amended 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 in English and Japanese of the Complaint, and the proceedings commenced on June 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2017. A third party sent an email communication to the Center on June 2, 2017. The Respondent did not, however, submit any formal response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on June 28, 2017.
The Center appointed Haig Oghigian, F.C.I.Arb. as the sole panelist in this matter on July 12, 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
As there is no submission from the Respondent, the facts are taken from the Complaint and generally are accepted as true.
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. In 2016, Electrolux had sales of SEK 121 billion and about 55,000 employees.
The Complainant is the owner of a number of internationally registered trademarks for ELECTROLUX, both in word and figurative forms, alone and in combination with other elements, in several classes in more than 150 jurisdictions all over the world. The Complainant further evidenced that it holds International trademark registration No. 836605 registered on March 17, 2004, for goods and services in Classes 3, 7-9, 11-12, 21, 25, 35, 37 and 39, and International trademark registrations designating Viet Nam including International trademark No. 1260775 registered on January 27, 2015, for goods and services in Classes 7-9, 11, 21, 26, 35, and 37 and International trademark No. 1126087 registered on July 18, 2012, for goods in Class 7.
The Complainant also owns numerous domain names under generic Top-level Domains ("gTLD") and country-code Top-level Domains ("ccTLD") containing its trademark ELECTROLUX, among which are the domain names and .
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 September 9, 2015. The website at the disputed domain name has been under operation for promotion of the Respondent's services in repairing Electrolux's washing machines. 5. Parties' Contentions A. Complainant
The Complainant requests transfer of the disputed domain name.
(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 rights holder of the trademark ELECTROLUX (the "trademark") 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 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 word "electrolux", which is identical to the trademark, and the addition of the generic and descriptive Vietnamese words "maygiat" (which means "washing machine" in English) does not materially change the confusingly similar conclusion.
Finally, the Complainant submits that the addition of the gTLD ".net" 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 intention of the Respondent in registering the disputed domain name is to take advantage of the Internet traffic generated due to the incorporation of the well-known ELECTROLUX trademark in the disputed domain name by arguing that: (i) the Respondent is not commonly known by the disputed domain name; and (ii) there is no evidence that the Respondent has a history of using, or preparing to use the disputed domain name in connection with a bona fide offering of goods and services.
The Complainant further 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 and maintenance services for ELECTROLUX products by arguing that: (i) the Complainant has no agreement with the Respondent and granted neither license nor authorization of any other kind to the Respondent for the registration and use of the disputed domain name incorporating the Complainant's trademark; (ii) the Respondent's prominent use of the Complainant's trademark and logo on the top section of the website at the disputed domain name strongly suggests that the disputed domain name is used in connection with the Complainant in some way or the Respondent has some official or authorized relationship with the Complainant for the purposes of 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 website; (ii) the Respondent is depriving the Complainant of reflecting its own mark in the disputed domain name; and (iii) the Respondent presents itself as the trademark owner by using the Complainant's official ELECTROLUX trademark and logo in its 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; and (iii) the Respondent failed to present some compelling arguments that it has rights in the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith.
First, the Complainant submits that the disputed domain name is registered in bad faith by arguing that: (i) the Respondent was aware of the existence of the Complainant's trademark and unlawfulness of the registration of the disputed domain name as the Complainant's trademark registration predates the registration of the disputed domain name; (ii) the Respondent has failed to respond to any communication attempts made by the Complainant, which can be considered relevant for a finding of bad faith registration.
Second, the Complainant submits that the disputed domain name is being used in bad faith.
The Complainant contends that the Complainant first tried to contact the Respondent on November 9, 2016, through a cease-and-desist letter, and sent reminders on November 24, 2016 and January 1, 2017, in which the Complainant requested, amongst others, a voluntary transfer of the disputed domain name. However, the Respondent has not yet replied and simply disregarded all communication attempts and notices given by the Complainant, which can be considered relevant in 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 as a repair center.
In addition, the Respondent does not disclose on 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, for commercial gain, Internet users to the website under the disputed domain name, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or a product or service on the Respondent's website.
The Complainant further submits that the Respondent has also registered a number of other domain names consisting of other well-known trademarks, which is argued by the Complainant to be taken into account as an indication of bad faith.
Therefore, the Complainant contends that the Respondent should be considered to have registered and to be using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Although the language of the Registration Agreement for the disputed domain name is Japanese, the Complainant requests that the administrative proceeding be conducted in English.
Paragraph 11(a) of the Rules provides that in principle the language of the administrative proceeding shall be the language of the Registration Agreement, "subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". There are a number of rulings by UDRP panels that paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition.
See, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334 and SWX Swiss Exchange v. SWX Financial LTD,WIPO Case No. D2008-0400.
Despite the Center's notification to the Respondent in both Japanese and English on May 26, 2017, the Respondent made no objection regarding the language of the proceeding, nor did it submit any Response by the due date. The Panel notes that the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known its preference, but it did not provide any response in this regard.
The Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Japanese, and further that English is a neutral language for both of the Parties and would not give the Complainant unfair advantage over the Respondent.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English. 6.2. Substantive Matters
Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
(ii) The respondent 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. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In line with such provision, the Complainant must prove that it enjoys the trademark right and that the disputed domain name is identical with or confusingly similar to its trademark or service mark.
It is established that the addition of other descriptive terms does not mitigate the confusing similarity between the disputed domain name and the complainant's trademark. See, e.g., Cantor Fitzgerald Securities, Cantor Index Limited v. Mark Mark, Chen Xian Sheng/Whois Protect,WIPO Case No. D2014-0125 and J. Choo Limited v. Weng Huangteng, WIPO Case No. D2010-0126.
Further, it is recognized that the incorporation of a trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,WIPO Case No. D2005-1105.
The Panel notes that the Complainant owns trademark rights to the ELECTROLUX mark in many countries (including Viet Nam). The Panel further finds that the disputed domain name reproduces the Complainant's trademark ELECTROLUX in its entirety, with the addition of the element "maygiat", and the gTLD ".net".
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Respondent in order to demonstrate its rights or legitimate interests. Such circumstances include:
(i) Use of or demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
(iii) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, therefore the burden of production shifts to the Respondent to put forward evidence in support of its rights or legitimate interests in the disputed domain name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174.
No evidence has been submitted that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name, the ELECTROLUX mark, or any mark confusingly similar thereto. There is no evidence to suggest that the Respondent is or has been commonly known by the disputed domain name. There is no evidence to suggest that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to the dispute. In this regard, the Panel finds that the Respondent's lack of any disclaimer on the website to which the disputed domain name resolves creates a misleading impression of association between the Complainant and the Respondent, when no such association exists. The Respondent has failed to rebut the Complainant's prima facie showing.
Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel notes that the ELECTROLUX mark has acquired extensive international reputation in connection with home and professional appliances offered by the Complainant, and that the ELECTROLUX mark's reputation indicates that the Respondent was or should have been aware of the ELECTROLUX trademarks prior to registering the disputed domain name. See Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517 and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113.
Further, given that the Respondent has never been authorized by the Complainant to use the ELECTROLUX mark, the fact that the Respondent has registered the disputed domain name incorporating the ELECTROLUX mark establishes bad faith registration. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562. Moreover, the Panel finds that the Respondent has registered the disputed domain name in order to trade off the goodwill associated with the Complainant's ELECTROLUX trademark by holding itself out as an authorized repair service provider. Such conduct falls squarely within paragraph 4(b)(iv) of the Policy.
Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use of the disputed domain name as required by paragraph 4(a)(iii) 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 the Complainant.
Haig Oghigian, F.C.I.Arb
Sole Panelist
Date: July 26, 2017
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