Complainant is AB Electrolux, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Cimpress Schweiz GmbH, Switzerland. / VistaPrint Technologies Ltd , Bermuda. 2. The Domain Names and Registrars
The disputed domain names and are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2019. On May 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. On May 21, 2019, the Center sent an email communication to Complainant providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On May 26, 2019, Complainant filed an amendment to the Complaint, in which it requested a consolidation of Respondents. On June 5, 2019, the Center applying the principles and preliminary provider assessment stipulated in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, noted that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2019.
The Center appointed Roberto Bianchi as the sole panelist in this matter on July 5, 2019. 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.
As stated at section 6.A. below, the Panel granted the consolidation requested by Complainant in the amendment to the Complaint. 4. Factual Background
Complainant is a Swedish company founded in 1901, a leading producer of appliances and equipment for kitchen and cleaning products and floor care products. In 2016, Electrolux had about 55,000 employees and sales of SEK 121 billion.
Complainant owns, inter alia, the following trademark registrations:
TRADEMARK
JURISDICTION
REGISTRATION NO.
REG. DATE
INTERNATIONAL CLASSES
ELECTROLUX
International Trademark
836605
March 17, 2004
3; 7-9; 11-12; 21; 25; 35; 37; 39
ELECTROLUX SERVICE
International Trademark
854121
October 8, 2004
7; 11; 16; 21; 35; 37; 39
ELECTROLUX
International Trademark
1182758
October 10, 2013
28
ELECTROLUX
International Trademark
1260775
January 27, 2015
7-9; 11; 21; 26; 35; 37
In these registrations, the designations under the Madrid Protocol include Switzerland.
Complainant also owns the domain names , registered on April 30, 1996, , registered on July 14, 2013, and , registered on August 30, 1996.
The disputed domain name was registered on November 8, 2018. The disputed domain name was registered on November 10, 2018.
The disputed domain names do not resolve to an active website. In both cases, the browser returns an error message stating that it is having problems in finding the website, and that it cannot connect with the corresponding server. 5. Parties’ Contentions A. Complainant
Complainant contends as follows:
The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant owns the well-known word and figure mark ELECTROLUX in several classes in more than 150 countries including in Switzerland. Complainant, through its business unit in Zurich, its official licensing partners and service desks and its website “www.”, has a strong business presence in Switzerland, where Respondent is located according to the WhoIs record for the disputed domain names.
The disputed domain names entirely incorporate Complainant’s well-known registered trademark ELECTROLUX. The disputed domain names also contain the generic words “group” and “groups”. The mere addition of a generic term does not differentiate a domain name from the registered trademark. See WIPO Overview 3.0, sections 1.8 and 1.11.
Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant has not found that Respondent is commonly known by the disputed domain names. There is no evidence that Respondent has a history of using, or preparing to use, the disputed domain names in connection with a bona fide offering of goods and services. Instead, the disputed domain name resolves to a file-sharing website and redirects to “”. It has been established in previous UDRP cases that such use cannot constitute a right or a legitimate interest in the domain name. This has not been proved with evidence but has been confirmed by Complainant.
The disputed domain name does not resolve to an active website and Respondent has not been authorized by Complainant to use the ELECTROLUX trademark in this disputed domain name.
The intention of the registration of the disputed domain names is to take advantage of the incorporation of the well-known ELECTROLUX trademark and their similarity to the official domain name , since the only difference between the disputed domain name and Complainant’s domain name is the addition of the letter “s” and the Top-Level Domain “.net”.
Respondent has made no claims to have any relevant prior rights to the term “Electrolux” of its own. There is norelationship between Respondent and Complainant that would allow Respondent to register and use domain names incorporating Complainant’s trademark, and even ifthere had been any sort of business relationship between the parties, Complainant has an agreement with all its authorized partners stating that it is strictly forbidden to register domain names incorporating Complainant’s trademarks. Such an agreement would have been in place also with Respondent if they were a licensee or distributor, in which case the registration and use of the disputed domain names would constitute a breach of said agreement.
The disputed domain names were registered and are being used in bad faith. Complainant’s trademark registrations predate the registration of the disputed domain names and it is highly unlikely that Respondent was not aware of the existence of Complainant‘s trademark and the unlawfulness of the registration of the disputed domain names.
The disputed domain names are being used in bad faith. They do not resolve to an active website and Respondent has never been granted permission to register them. Respondent takes advantage of the ELECTROLUX trademark by using the disputed domain names, portraying itself to be Complainant by the mere registration of the disputed domain names. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue: Consolidation
According to the relevant WhoIs information received by the Center from the Registrar, the registrant of the disputed domain name is VistaPrint Technologies Ltd of Hamilton, Bermuda, while the registrant of the disputed domain name is Cimpress Schweiz GmbH of Zurich, Switzerland. The Center then invited Complainant to reflect this by amending the Complaint. On May 26, 2019, Complainant sent an email to the Center, amending the Complaint and requesting consolidation of Respondents. Complainant requested this consolidation because Vista Print Technologies Ltd had changed its name to Cimpress, and that both disputed domain name registrations share the same contact email address, showing that they are under common control.
Since the link provided by Complainant does not seem to be active, the Panel was able to confirm by a quick web search that Vista Print Technologies Ltd is a subsidiary of Cimpress. The Panel is moreover satisfied that the registrations of the (almost identical) disputed domain names are under common control because they share the same contact email address, and were registered almost simultaneously with the same Registrar, on November 8 and 10, 2018. In the view of the Panel, this coincidence strongly suggests that the disputed domain names are registered by the same domain name holder, as required by Rules paragraph 3(c) for a consolidation. B. Identical or Confusingly Similar
Complainant has submitted printouts taken from the Madrid Monitor database showing to the satisfaction of the Panel that it has trademark rights in the ELECTROLUX mark. See section 4 above.
The Panel notes that in the disputed domain names the ELECTROLUX mark is incorporated in its entirety, with the addition of the dictionary terms “group” and “groups” and the Top Level Domain “.net”. It is well established that the addition of a dictionary term to a mark is inapt to distinguish one identifier from the other. See WIPO Overview 3.0., section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on the assessment of the second and third elements.”)
Because it is a technical requirement for the registration of a domain name, the addition of the Top-Level Domain typically is disregarded when assessing whether the first requirement of the Policy is met.
The Panel concludes that the disputed domain names are confusingly similar to Complainant’s mark. C. Rights or Legitimate Interests
Complainant contends that Respondent is not commonly known by the disputed domain names, and the Panel does not see any evidence showing otherwise. The Panel notes that according to the relevant WhoIs data, Respondent is “Cimpress Schweiz GmbH / VistaPrint Technologies Ltd”, which discards the application of Policy paragraph 4(c)(ii). Complainant also says there is norelationship between Respondent and Complainant that would allow Respondent to register and use domain names incorporating Complainant’s trademark. There is no evidence pointing to the contrary.
Complainant further contends that Respondent is using the disputed domain names as a torrent/file-sharing site, which, says Complainant, “has not been proved with evidence but has been confirmed by Complainant and appears to be the case according to the website attached, (see Annex 8).” In this regard, the Panel notes that Annex 8 to the Complaint is a screenshot of the website at the disputed domain name, displaying a legend in Swedish stating that the website cannot be reached, and that the IP address at the server of “www.” could not be found. In the view of the Panel, this is no evidence that Respondent is using the disputed domain name in a file-sharing website. However, it does show that the disputed domain name was inactive at the time. Nor are the disputed domain names presently being used in any way. See section 4 above, in fine.
Considering this lack of use, the Panel accepts Complainant‘s contention that the disputed domain names are not being used either bona fide under Policy paragraph 4(c)(i) or in a fair or legitimate noncommercial manner under Policy paragraph 4 (c)(iii). The Panel agrees with prior UDRP panels that the ELECTROLUX trademark is well-known 1 , Since the disputed domain names are almost identical to Complainant‘s domain name, it is reasonable to conclude that the disputed domain names were registered to illegitimately take advantage of the ELECTROLUX trademark.
Thus, Complainant succeeded in raising a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names. Since Respondent failed to provide any explanation for its registration and lack of use of the disputed domain names, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain names. See WIPO Overview 3.0, section 2.1
(“…Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”)
The second requirement of the Policy is met. D. Registered and Used in Bad Faith
The Panel notes that Respondent registered the disputed domain names well after the registration of the ELECTROLUX mark, including in Switzerland, where Respondent apparently resides. In addition, Complainant’s mark ELECTROLUX is well known internationally. Lastly, the disputed domain names closely resemble Complainant’s domain name at which Complainant operates its corporate official website, “www.”. This means that Respondent was fully aware of Complainant and its mark ELECTROLUX, and that it was targeting them at the time of registering the disputed domain names. The Panel infers that these registrations were made to either impersonate Complainant or to otherwise take advantage of the confusion with Complainant’s corporate website and trademark, i.e., for bad faith purposes.
With regard to the complete lack of use of the disputed domain names, several relevant facts indicate that the doctrine of passive holding in bad faith is applicable. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. First, as seen above, Complainant’s mark ELECTROLUX is well known. Second, the disputed domain names are identical or closely similar to Complainant’s official corporate website “www.”, differing only by the Top Level Domain (“.net” in lieu of “.com”). Third, Respondent completely failed to submit in this proceeding any explanation for its registrations and use (or lack of use) of the disputed domain names. In particular, Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain names. As stated in Telstra, taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain names by Respondent that would not be illegitimate.
The Panel concludes that the disputed domain names were registered and are being used 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 names and be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: July 18, 2019
1 To take a few examples, Complainant’s mark ELECTROLUX was held to be “well-known” in AB Electrolux v. Unleaded,WIPO Case No. D2008-1431, “renowned and with widespread knowledge” in Aktiebolaget Electrolux v. Hungary,WIPO Case No. D2012-1135, “very well-known” and “world-famous” in Aktiebolaget Electrolux v. Registration Private, Domains By Proxy, LLC, DomainsByP and Kriengsak Vadpanich,WIPO Case No. D2012-1132, and “famous and/or well-known” in Aktiebolaget Electrolux v. xing zhi wei, Case No. D2013-1239.
Full & Egal Universal Law Academy