The Complainant is AB Electrolux, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Whois Privacy Protection Service by onamae.com, Japan / Cong ty TNHH Chi Cuong, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2019, 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 September 20, 2019, 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 amendment to the Complaint in English on September 23, 2019. On September 20, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On September 23, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 the Respondent of the Complaint, and the proceedings commenced on October 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2019. The Center appointed Keiji Kondo as the sole panelist in this matter on October 31, 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. On November 4, 2019, the Center received an email communication in Vietnamese from the Respondent. The Center brought this to the Panel’s attention on the same day. 4. Factual Background The Complainant is a Swedish joint stock company with its company recordation created in 1910, and a producer of appliances and equipment for kitchen and cleaning products and floor care products. The Complainant is a global enterprise marketing home and professional appliances worldwide. The ELECTROLUX brand is the Complainant’s brand for kitchen and cleaning appliances for both consumers and professional users. The Complainant is the owner of the registered trademark ELECTROLUX as a word and device mark in several classes in many countries all over the world including Viet Nam, in which the Respondent’s address is located. The Complainant has a business presence in Viet Nam. Among the Complainant’s other trademark registrations, the following trademark registration includes Viet Nam as a designated country: - International Registration Number 1260775 (hereinafter referred to as the “775 Registration”) The Complainant also has another registered trademark as follows: - International Registration Number 836605 (hereinafter referred to as the “605 Registration”) This trademark registration does not include Viet Nam as a designated country, and “Electrolux” is written in a slightly different font from the 775 Registration. The disputed domain name The disputed domain name The Complainant has not found that the Respondent is commonly known by the disputed domain name and 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 or services. The Respondent is using the disputed domain name to attract Internet users to its website where it offers repair and maintenance services for the Complainant’s products marketed under the trademark ELECTROLUX. The Complainant has an agreement with all its authorized partners where it is stated that registering domain names incorporating the Complainant’s trademarks is strictly forbidden. The agreements that are signed between the Complainant and its licensees/distributors clearly stipulate that they are not entitled to register domain names incorporating the Complainant’s trademark. The Respondent’s layout of its website, including the ELECTROLUX logo appearing prominently in the top and middle section in connection with the Complainant’s products strongly suggests that there is a connection to the Complainant and that there is some official or authorized relationship with the Complainant for the purposes of repairs and services within Viet Nam. Furthermore, no disclaimer can be found on the website. In the light of the Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903, the Respondent’s use of the disputed domain name in such a manner should not be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c) of the Policy. The Respondent fails at least the following elements of the tests under the Oki Data criteria, namely: - First, the Respondent does not publish a disclaimer on the website at the disputed domain name at all; The disputed domain name was registered in bad faith. It has to be noted that the Complainant’s trademark registrations predate the registration of the disputed domain name. It seems highly unlikely that the Respondent was not aware of the existence of the trademark and the unlawfulness of the registration of the dispute domain name. The disputed domain name is being used in bad faith. The Respondent must have known of the Complainant’s trademark when it registered the disputed domain name. The Respondent takes advantage of the Complainant’s trademark by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or a product or service offered on the Respondent’s website. The Complainant’s trademark ELECTROLUX is globally well known in the home appliance industry. The Respondent should have been aware of the Complainant’s trademark and its value at the point of the registration. The Respondent displays the Complainant’s logo on the website, offering a wide range of services relating to home appliances. The Respondent represents themselves as the trademark owner by using the Complainant’s trademark without a distinctive disclaimer. Consequently, the Respondent should be considered to have registered and used the disputed domain name in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On November 4, 2019, the Center received an email communication in Vietnamese from the Respondent, which appears to indicate that the website at the disputed domain name has been shut down according to Google Translate. 6. Discussion and Findings 6.1 Language of the Proceeding In its email transmitted to the Center on September 20, 2019, the Registrar reported that the language of the Registration Agreement is Japanese. The Complainant requested that English be the language of the proceeding in the Complaint, and confirmed its request in the communication to the Center on September 23, 2019. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding: - The Complaint was filed in English; - The Complainant is a Swedish entity; - The Respondent’s address is in Viet Nam; - On September 20, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding, but the Respondent did not comment on the language of the proceeding; - The Respondent did not reply to the Complainant’s contentions in any way; and - Ordering the translation of the Complaint would only result in extra delay and cost for the Complainant. 6.2 Substantive Issues A. Identical or Confusingly Similar The Complainant’s trademarks consist of a logo and the word “Electrolux”. The 775 Registration shows that the word part of the trademark is stylized, but the degree of stylization is very little. The 605 Registration shows that the word part of the trademark is written in a standard font. “Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element.” See section1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Therefore, any observer of the Complainant’s trademark would easily recognize the Complainant’s trademark in the dispute domain name. The disputed domain name consists of “electrolux”, “shope” and “.com”. Since “shope” is a generic term meaning “shop” in Vietnamese, and “.com” is a gTLD, any observer of the disputed domain name would easily recognize the Complainant’s trademark in the disputed domain name. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests As discussed in the next section “Registered and Used in Bad Faith”, the Panel finds that the Respondent’s use of the disputed domain name is in bad faith. Therefore, the Panel finds that the Respondent had not been using, or had not prepared to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice was given to the Respondent. Since the Respondent’s name is not similar to, or otherwise related to, the disputed domain name, and the Respondent has provided no background to explain why the Respondent registered the disputed domain name, the Panel finds that the Respondent has not been commonly known by the disputed domain name. It is clear that the Respondent has used the disputed domain name to attract customers and lead them to the Respondent’s website where services or goods are commercially offered. Therefore, the Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Respondent uses the disputed domain name to lead the Internet users to the Respondent’s website. The website offers not only the Complainant’s goods or related services, but also goods or services related to other brands owned by competitors of the Complainant. At the top of the Respondent website, a combination of the Complainant’s logo, “Electrolux” and “Shope” is used as a header. The layout of the combination is shown below. The font used for “Electrolux” is slightly different from that of the 775 Registration and almost the same as the 605 Registration. Regardless of which font is used, an average observer would not easily notice the difference, and even if the difference is noticed, anyone would naturally regard it as related to the Complainant. There is no disclaimer that notifies the observer of the website that the Respondent is not related to the Complainant. Therefore, the observer of the website would be misled to believe that the website is sponsored or endorsed by, or otherwise related to, the Complainant. However, the Complainant has not granted a license to, or otherwise permitted, the Respondent to use the Complainant’s trademark. The Complainant would never grant a license to use the Complainant’s trademark in a domain name to lead Internet users to a website where its competitors’ services or goods are offered. Accordingly, the Panel finds that the Respondent has used the disputed domain name to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent is using the disputed domain name in bad faith. Since the Respondent has been in the business dealing with home and industry appliances, the Panel finds that the Respondent should have been aware of ELECTROLUX trademark before the Respondent registered the disputed domain name. As discussed above, the Respondent is using the disputed domain name in bad faith. Combining these two facts, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith; that is, the Respondent registered the disputed domain name to take advantage of the reputation of the Complainant’s trademark ELECTROLUX for commercial gain. Although the Respondent’s communication after notification of default, which was in Vietnamese without English or Japanese translation, appears to indicate that the Respondent’s website was shut down, it would not prevent a finding of bad faith use. Accordingly, 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 Keiji Kondo
- Classes 7, 8, 9, 11, 21, 26, 35, and 37
- Date of Registration: January 27, 2015
- Trademark:
- Classes 3, 7, 8, 9, 11, 12, 21, 25, 35, 37, and 39
- Date of Registration: March 17, 2004
- Trademark:
- Further, the Respondent is depriving the Complainant of reflecting its own mark in a domain name;
- The Respondent promotes additional brands on its site in direct competition to the Complainant; and
- Lastly, the Respondent presents itself as the trademark owner by using the Complainant`s official ELECTROLUX trademark and logo on its website.
Sole Panelist
Date: November 14, 2019
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