The Complainant is AB Electrolux, Sweden, represented by Silka AB, Sweden.
The Respondents are Dao Van Tien and Nguyen The Dat, Viet Nam. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2020. On March 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 7, 2020, 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 Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on March 18, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a request for consolidation of the Respondents to the Center on March 20, 2020. The Center sent an email communication to the parties on March 18, 2020 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the Disputed Domain Names is Vietnamese. On March 20, 2020, the Complainant submitted that the Complainant has already requested for English to be the language of the proceeding in the original Complaint, hence, the Complainant added nothing further to it. The Respondents 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 Respondents of the Complaint, and the proceedings commenced on March 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on April 22, 2020. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 30, 2020. 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, AB Electrolux, is a Swedish company founded in 1910. The Complainant is one of the world’s leading producers of kitchen and cleaning appliances for both consumers and professional users. The Complainant also has strong business presence in Viet Nam through its business unit, official licensing partners and service desks. The trademark ELECTROLUX has been registered for goods and services in many classes in a variety of countries, including in Viet Nam, where the Respondents reside, under International Registrations No. 1126087, registered on July 18, 2012 and 1260775, registered on January 27, 2015. The Complainant also owns numerous domain names under generic Top-level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”) containing its trademark ELECTROLUX, among which are the domain names The Respondents registered two Disputed Domain Names The Complainant sent a cease and desist letter on January 21, 2020 to the Respondents, requesting for a transfer of the Disputed Domain Names The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Names are 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 well-known ELECTROLUX trademark in numerous countries worldwide, including in Viet Nam. The ELECTROLUX trademarks predate the Respondents’ registrations of the Disputed Domain Names. The Complainant further contends that the Disputed Domain Names directly and entirely incorporates the Complainant’s well-known registered trademark ELECTROLUX. Thus, the Disputed Domain Names are either identical to the trademark ELECTROLUX or typo-variations of the trademark ELECTROLUX. Finally, the Complainant submits that the addition of the new gTLDs such as “.online”, “.store”, etc. in the Disputed Domain Names does not add any distinctiveness to the Disputed Domain Names. (ii) The Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant submits that the intention of the Respondents in registering the Disputed Domain Names is to take advantage of the Internet traffic generated due to the incorporation of the well-known ELECTROLUX trademark in the Disputed Domain Names by arguing that: (i) the Respondents are not commonly known by the Disputed Domain Names; and (ii) there is no evidence that the Respondents have a history of using, or preparing to use the Disputed Domain Names in connection with a bona fide offering of goods and services. The Complainant further submits that the Respondents are using the Disputed Domain Names incorporating the Complainant’s trademark to attract Internet users to their website where they offer repair and maintenance services for ELECTROLUX products by arguing that: (i) the Complainant has no agreement with the Respondents and granted neither license nor authorization of any other kind to the Respondents for the registrations and uses of the Disputed Domain Names incorporating the Complainant’s trademark; (ii) the Respondents’ prominent use of the Complainant’s trademark and logo on the top section of the websites at the Disputed Domain Names strongly suggest that the Disputed Domain Names are in a connection with the Complainant in some ways or the Respondents have 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 Respondents’ conduct does not meet the Oki Data criteria on three elements: (i) the Respondents do not publish a disclaimer on the websites; (ii) the Respondents are depriving the Complainant of reflecting its own mark in the Disputed Domain Names; and (iii) the Respondents present themselves as the trademark owner by using the Complainant’s official ELECTROLUX trademark and logo on its websites. Finally, the Complainant submits that the Respondents’ use of the Disputed Domain Names cannot be considered as legitimate use by arguing that: (i) the Respondents were aware of the Complainant’s trademark prior to the acquisition of the Disputed Domain Names and the establishment of the Respondents’ website; and (ii) the Respondents are not known by the Disputed Domain Names, nor do the Respondents claim to have made legitimate, noncommercial use of the Disputed Domain Names; and (iii) the Respondents failed to present some compelling arguments that they have rights in the Disputed Domain Names. (iii) The Disputed Domain Names were registered and are being used in bad faith. First, the Complainant submits that the Disputed Domain Names are registered in bad faith by arguing that: (i) the Respondents were aware of the existence of the Complainant’s trademark and unlawfulness of the registrations of the Disputed Domain Names as the Complainant’s trademark registration predates the registrations of the Disputed Domain Names; (ii) the Respondents have 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 Names are being used in bad faith. The Complainant contends that the Complainant first tried to contact the Respondents on January 21, 2020 through a cease and desist letter, under which the Complainant requested, amongst others, a voluntary transfer of the Disputed Domain Names The Complainant further argues that the Respondents have never been granted permission to register the Disputed Domain Names and the Respondents intentionally chose the Disputed Domain Names based on a registered and well-known trademark in order to generate more traffic to their own business as a repair center. In addition, the Respondents do not disclose on the websites under Disputed Domain Names the non-existing relationship between them and the Complainant. Consequently, the Respondents are using the Disputed Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the websites under the Disputed Domain Names, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondents’ websites or a service on the Respondents’ websites. Therefore, the Complainant contends that the Respondents should be considered to have registered and to be using the Disputed Domain Names in bad faith. Consequently, the Complainant contends that the three elements under the Policy have been established and requests for a transfer of the Disputed Domain Names to the Complainant. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural issues (i) Language of the proceeding The Complaint was filed in English on March 5, 2020. On March 7, 2020, the Registrar informed the Center that the language of the Registration Agreements is Vietnamese, and on March 18, 2020, the Center invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondents to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding; and invited the Respondents to comment on the language of the proceeding. On March 20, 2020, the Complainant sent the Center an email that the Complainant has already requested for English to be the language of the proceeding in the original Complaint. The Respondents did not give any comment on this issue. According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the 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. Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) of the Rules is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, a Swedish business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the Disputed Domain Names contain English words i.e., “store”, “online”, “best”, etc. as well as the fact that the websites under the Disputed Domain Names contain English contents, these suggest that the Respondents have knowledge of the English language and will be able to communicate in English; (iii) the Respondents did not object for English to be the language of the proceeding and did not submit a response in neither English nor Vietnamese. Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. (ii) Consolidation of multiple Respondents Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. The consolidation of complaints against multiple respondents is further guided under section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”). In light of these regulations, the Panel finds that, in the present case, the Respondents share the same contact information, including the email addresses and phone numbers as shown in the websites corresponding the Disputed Domain Names; the content and layout of the websites under the Disputed Domain Names are substantially the same; all Disputed Domain Names are constructed in the same way by comprising the entirety of the ELECTROLUX trademarks or its slight misspellings with the addition of new gTLDs; the gTLDs selected by the two Respondents are almost the same; all Disputed Domain Names are registered with the same Registrar, and all but two are registered on the same date; and the Respondents did not refute the Complainant’s contentions. Hence, the Panel finds that the Complainant has established that it is more likely than not that the Disputed Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Disputed Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. (iii) The Respondents’ failure to respond The Respondents’ failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondents’ default. B. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Names are identical or confusingly similar to its trademark. Firstly, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to ELECTROLUX. Also, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer kitchen and cleaning appliances for both consumers and professional users worldwide. Secondly, the Panel finds that the ELECTROLUX mark remains clearly recognizable in the Disputed Domain Names: - Nine Disputed Domain Names - Meanwhile, for the seven remaining Disputed Domain Names Thirdly, the Panel finds, similarly to other prior UDRP panels, that the addition of the new gTLDs “.asia”, “.best”, “.fun”, “.monster”, “.online”, “.store”, “.top”, and “.website” to the Disputed Domain Names does not prevent a finding of confusing similarity, because they are viewed as a standard registration requirement and as such are disregarded under the first element confusing similarity test (see, e.g., Sanofi v. Francisco Sánchez Fernández, inserious,WIPO Case No. D2019-0169; Skyscanner Limited v. WhoIsGuard Inc. / Rafat El Shawaf,WIPO Case No. D2019-2789; Accenture Global Services Limited v. Domain Administrator, See PrivacyGuardian.org / Tu Do, Nguyen Thi Ha Linh,WIPO Case No. D2020-0164). On the basis of the foregoing findings, the Panel finds that all 16 Disputed Domain Names are confusingly similar to the Complainant’s ELECTROLUX mark, and the first element under paragraph 4(a)(i) of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondents’ rights or legitimate interests in the Disputed Domain Names for the purposes of paragraph 4(a)(ii) of the Policy, including: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Noting the facts and arguments set out above, the Panel finds that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Names. The Respondents did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The consensus of previous UDRP panels is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the disputed domain name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondents have failed to meet that burden since no response was submitted for evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondents. There is no evidence available that the Respondents hold any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondents have no rights in the trademark ELECTROLUX. A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the Oki Data case, including: - the respondent must actually be offering the goods or services at issue; - the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); - the site itself must accurately disclose the respondent’s relationship with the trademark owner; and - the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. In this particular case, it is well proved and evidenced by the Complainant that the Disputed Domain Names used to resolve to the online shops of the Respondents, as shown in Annex 8 of the Complaint. On such websites, the Panel finds the Respondents did not place any statement or disclaimer disclosing accurately their relationship with the Complainant. Further, the websites under the Disputed Domain Names also displayed prominently the mark ELECTROLUX, with a device. In addition, the websites under the Disputed Domain Names comprise a proclamation about “Dịch vụ bảo hành chính hãng” (in English “Authorized maintenance services”). This indication may mislead consumers into believing in a connection or association between the Respondents and the Complainant, where such connection or association does not exist in reality. With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy. Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondents, as individuals, business, or other organization, have been commonly known by the Disputed Domain Names, or that the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondents’ registration of the Disputed Domain Names, the Respondents had full knowledge of the ELECTROLUX trademark and had an intention to gain profit by riding on the goodwill and reputation of the Complainant. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names, and the second element, paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. The Panel finds that the Complainant has put forth sufficient evidence that the Respondents have registered and used the Disputed Domain Names in bad faith. The Respondents did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The Panel further finds that the Complainant’s ELECTROLUX mark has been registered in many jurisdictions throughout the world and enjoys significant reputation. The Complainant’s ELECTROLUX mark has been registered and used in, among others, Viet Nam where the Respondents reside. In this respect, the Panel believes that the Respondents must have known and be aware of the rights in the prior well-known ELECTROLUX mark and the associated products by the time of the registrations of the Disputed Domain Names. On the date of this Decision, the Panel finds that except the Disputed Domain Names With the said facts, the Panel finds that the Respondents intentionally registered and used the Disputed Domain Names for commercial gain and that the Respondents’ actual use of the Disputed Domain Names appears to mislead consumers and confuse them by making them believe that the websites are associated, fostered or recommended by the Complainant. Such misleading behavior is an indication of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondents. In light of the foregoing, the Panel finds that the Disputed Domain Names were registered and used by the Respondents in bad faith, and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Pham Nghiem Xuan Bac
Sole Panelist
Date: May 14, 2020
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