The Complainant is AB Electrolux of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Caio Cesar Vianna Julio of Sao Paulo, Brazil. 2. The Domain Names and Registrars
The disputed domain name is registered with eNom, Inc. The disputed domain names and are registered with PDR Ltd. d/b/a PublicDomainR (together the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2018. On September 18, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the contact details. On September 19, 2018, the Registrar PDR Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain names and 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 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2018.
The Center appointed Anna Carabelli as the sole panelist in this matter on October 26, 2018. 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.
On October 26, 2018 the Respondent sent an informal email communication to the Center, which was forwarded to the Panel for consideration. 4. Factual Background
The Complainant is AB Electrolux, a Swedish joint stock company, founded in 1901, well known in several countries for its home and professional appliances and equipment for kitchen and cleaning products and floor care products.
The Complainant owns the registered trademark ELECTROLUX, as a word and figure mark in several classes and countries, including Brazil where the trademark (registration No. 002521261) ELECTROLUX has been registered since August 30, 1930. In Brazil, the Complainant operates through its wholly owned subsidiary, Electrolux do Brazil S.A. and through its official licensing partners and service desks.
Through its subsidiaries, the Complainant registered a number of domain names under the country code Top-Level Domain (“ccTLD”) containing the term “electrolux”, such as which was registered in 1996. These domain names resolve to the Complainant’s official website(s) displaying information on the Complainant’s marks, products and services.
The Respondent registered the disputed domain names between January 19, 2017 and February 21, 2018. The disputed domain names resolve to websites in Portuguese that offer technical assistance for products of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
1. The disputed domain names are confusingly similar to the ELECTROLUX trademark owned by the Complainant, since they incorporate it in its entirety. The addition of the words “assitencia tecnica” (the Portuguese words for “technical assistance”) does not diminish the likelihood of confusion;
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant states that there is no evidence that the Respondent is commonly known by the disputed domain names and has used them in connection with a bona fide offering of goods and services. On the contrary, the Respondent is purporting to be an authorized service center, which he is not, by using the Complainant’s official name “Electrolux” as well as the ELECTROLUX trademark and logo on the websites, as shown in Annex 10 to the Complaint. The Complainant reports that all of the Complainant’s licensees/distributors are requested to sign an agreement that clearly states that they are not entitled to register domain names incorporating the Complainant’s trademark ELECTROLUX. The Complainant refers to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and concludes that the Respondent does not meet all the Oki Data criteria.
3. The disputed domain names were registered by the Respondent in 2017 and in 2018, which makes highly unlikely that the Respondent was not aware of the Complainant’s trademark ELECTROLUX. Therefore, the registration of the disputed domain names was in bad faith.
4. The Respondent’s use of the disputed domain names suggests the intention of attracting visitors to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark ELECTROLUX as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or a product or service on the Respondent’s websites or location. B. Respondent
The Respondent did not reply to the Complainant’s contentions. The Respondent’s email received by the Center on October 28, 2018 is in Portuguese and, consists of a single line essentially denying the use of the disputed domain names. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registrations for the mark ELECTROLUX in several countries including Brazil.
The disputed domain names are confusingly similar to the Complainant’s trademarks, as they entirely incorporate ELECTROLUX with the addition of the term “assistencia tecnica” (the Portuguese words for “technical assistance”). It is a well-established principle that the addition of descriptive terms to a trademark does not avoid confusing similarity of domain names and trademarks (GA Modefine SA v. Riccardo Bin Kara-Mat,WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219; Toshiba Corporation v. Distribution Purchasing & Logistics Corp,WIPO Case No. D2000-0464; eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307).
The addition of the applicable Top-Level Domains (e.g., “.com”, “.site”, “.net”) is for registration purposes only, being a technical requirement of registration of a domain name, and may be disregarded purposes of comparison under paragraph 4(a)(i) of the Policy. (Sonae SGPS, S.A. v. Luso Digital - Web Hosting Services,WIPO Case No. D2008-1907; AB Electrolux v. Darcivan Petrucci.WIPO Case No. D2015-2258).
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark ELECTROLUX.
The Complainant asserts that the Respondent is not commonly known by the disputed domain names and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain names, particularly because the Respondent is using them to create an overall impression that the Respondent is, or is affiliated with, the Complainant. Indeed, the Respondent’s website give the misleading impression that they are operated by the Complainant. This does not confer any rights or legitimate interests in the disputed domain names on the Respondent for the purposes of paragraph 4(c)(i) of the Policy.
The Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683; OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP.,WIPO Case No. D2015-1149).
In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In the Panel’s view, it is not plausible that the Respondent was not aware of the Complainant’s trademark when registering the disputed domain names, considering: (i) that ELECTROLUX is a widely-known trademark with a strong presence in Brazil’s market, and (ii) the nature of the Respondent’s business as indicated in the Respondent’s websites offering specific services of repair of the Complainant’s products and displaying the Complainant’s trademark and logo.
The Respondent is using his websites at the disputed domain names to promote his business. This indicates an attempt to benefit from the reputation of the Complainant’s trademark and to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the services offered on the Respondent’s websites. The confusion is strengthened by: (i) the improper use of the Complainant’s official name “Electrolux” as well as of ELECTROLUX trademark and logo (as resulting from Annex 10 to the Complaint) without any disclaimer of association with the Complainant and (ii) the advertising of specific repair services for Electrolux products on the Respondent’s websites. The words “technical assistance” refer to a service commonly associated to the Complainant’s products and services, actually strengthening the likelihood of confusion between the disputed domain names and the Complainant’s trademark (AB Electrolux v. Darcivan Petrucci,WIPO Case No. D2015-2258).
Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith and that also element 4(a)(iii) of the Policy has been satisfied. 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 names , and be transferred to the Complainant.
Anna Carabelli
Sole Panelist
Date: November 6, 2018
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