Complainant is AB Electrolux, Sweden, represented by SILKA AB, Sweden.
Respondent is Gilberto Vitor Da Silva, Brazil.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant on August 13, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on August 19, 2021.
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 August 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 20, 2021.
The Center appointed Phillip V. Marano as the sole panelist in this matter on September 29, 2021. 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 BackgroundEstablished in 1901, Complainant is a Swedish producer of kitchen, cleaning, and floor care appliances, equipment, and products. Complainant owns valid and subsisting registrations for the ELECTROLUX trademark in numerous countries, including in Brazil (where registration data for the disputed domain name indicates Respondent is located) dating back to April 28, 1992 (trademark registration No. 815852681).
Respondent registered the disputed domain name on June 23, 2021. At the time of this Complaint, the disputed domain name resolved to a website that purports to sell Complainant’s products, using Complainant’s ELECTROLUX design trademark, and the same layout and color scheme as Complainant’s official website. The disputed domain name currently resolves to a 404-error placeholder website that reads, “It looks like you’re lost… The page you are looking for is not found.”
5. Parties’ Contentions A. ComplainantComplainant asserts ownership of the ELECTROLUX trademark in over 150 countries all over the world and has adduced evidence of trademark registration in Brazil, where Respondent is allegedly located, with earliest priority dating back to April 28, 1992. Complainant began producing vacuum cleaners and floor polishers in Sao Paulo, Brazil in 1950, and Complainant has grown to become one of the most profitable companies in consumer electronics in Brazil. The disputed domain name is confusingly similar to Complainant’s ELECTROLUX trademark, according to Complainant, because it entirely incorporates Complainant’s ELECTROLUX trademark along with the generic term “microondas”, which means “microwave” in Portuguese.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: Respondent’s use of the disputed domain name in connection with a consumer-facing website and online storefront that reproduces Complainant’s ELECTROLUX design trademark and the same layout and color scheme as Complainant’s official website; Respondent’s failure to use any notice or disclaimer of affiliation with Complainant; and Respondent’s use of a proxy registration service to avoid being identified or contacted.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: Respondent’s awareness of Complainant’s rights in the ELECTROLUX trademark; Respondent’s use of the disputed domain name in connection with a consumer-facing website and online storefront that intentionally creates a misleading impression of association between Complainant and Respondent; Respondent’s intentional selection of the disputed domain name containing Complainant’s well-known ELECTROLUX trademark in order to generate more traffic to Respondent’s website; and Respondent’s improper website use of Complainant’s ELECTROLUX design trademark.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. UDRP panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. Complainant must still prove each of the three elements required by Policy paragraph 4(a)”).
A. Identical or Confusingly SimilarOwnership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, section 1.2.1. Complainant submitted evidence that the ELECTROLUX trademark has been registered in Brazil with priority dating back to April 28, 1992, nearly 30 years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the ELECTROLUX trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s ELECTROLUX trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s ELECTROLUX trademark because, disregarding the “.com” generic Top-Level Domain (“gTLD”), the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). GTLDs, such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
The confusing similarity is not dispelled by combination with the term “microondas”, which translates to “microwave” in Portuguese. WIPO Overview 3.0, section 1.8 (Additional terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name); see also AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 (“Each of the domain names in dispute comprises a portion identical to [the ATT trademark] in which the Complainant has rights, together with a portion comprising a geographic qualifier, which is insufficient to prevent the composite domain name from being confusingly similar to Complainant’s [ATT trademark]”) OSRAM GmbH v. Cong Ty Co Phan Dau Tu Xay Dung Va Cong Nghe Viet Nam,WIPO Case No. D2017-1583 (“[T]he addition of the letters ‘hbg’ to the trademark OSRAM does not prevent a finding of confusing similarity between the Disputed Domain Name and the said trademark.”).
In view of Complainant’s registration of the ELECTROLUX trademark, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
B. Rights or Legitimate InterestsComplainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests.
Resellers, distributors, and service providers using a domain name containing Complainant’s trademark (usually in conjunction with descriptive terms like “parts”, “repairs”, or a geographic location) to undertake sales or repairs related to Complainant’s products may be making a bona fide offering of goods and services and thus may have a legitimate interest in the disputed domain name. WIPO Overview 3.0, section 2.8.1. Panels apply the fact-specific “Oki Data Test” to determine whether rights or legitimate interests in the disputed domain name are present in cases where all the following elements are met:
i. Respondent must actually offer the goods or services at issue;
ii. Respondent must use the site to sell only the trademarked goods or services;
iii. The site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
iv. Respondent must not try to “corner the market” in domain names that reflect the trademark.
See, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (November 6, 2001).
In this Complaint, no evidence has been submitted from which the Panel might determine whether Respondent’s website actually offered (before it began resolving to a 404-error placeholder website) the products at issue. The screengrabs of Respondent’s website that were provided by Complainant appear to contain information about Complainant’s microwave products and features a tab stating, “Comprar agora” (“buy now”), but no evidence has been provided as to where the tab may redirect Internet users. No evidence has been submitted from which the Panel might determine whether such products are authentic or legitimate, or whether Respondent is an authorized reseller or distributor of Complainant’s products. Moreover, while the screengrabs do not depict any third-party or competing products or services, they also do not appear to contain any disclaimers (prominent or otherwise) of affiliation between Complainant and Respondent. The dearth of evidence and disclaimers notwithstanding, the Panel concurs with Complainant that Respondent’s unauthorized website use of Complainant’s design trademark and Complainant’s website trade dress, creates a misleading impression of association between Complainant and Respondent. Put another way, Respondent’s use extends well beyond the bounds of nominative trademark use, which constrain Respondent to using Complainant’s ELECTROLUX trademark only to the extent necessary to identify Respondents goods and services.
Ultimately where, as here, Respondent fails to come forward with any relevant evidence whatsoever to demonstrate legitimate interests, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1. Moreover, it is evident that Respondent, identified by registration data for the disputed domain name as “Gilberto Vitor Da Silva”, is not commonly known by the disputed domain name or Complainant’s ELECTROLUX trademark.
In view of the absence of any evidence supporting any Respondent rights or legitimate interests, and Respondent’s unauthorized use of Complainant’s design trademark and website trade dress to create a likelihood of confusion between Respondent and Complainant, the Panel concludes that Complainant has established the second element of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Use of a domain name incorporating Complainant’s trademark to redirect Internet users to Respondent’s website is strong evidence of bad faith under paragraph 4(b)(iv) of the Policy. WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: … seeking to cause confusion for respondent’s commercial benefit, even if unsuccessful … the lack of a respondent’s own rights to or legitimate interests in a domain name [or] redirecting the domain name to a different respondent-owned website….”). Here, the disputed domain name contains Complainant’s ELECTROLUX trademark and resolves to Respondent’s website that misappropriates Complainant’s ELECTROLUX design trademark and the trade dress of Complainant’s website in an ostensible attempt to sell Complainant’s products. Accordingly, the Panel finds that use of the disputed domain name will divert potential customers from Complainant’s business to the website under the disputed domain name by attracting Internet users who mistakenly believe that the disputed domain name is affiliated with Complainant, and which may further mistakenly believe that the products offered on this website are authentic products offered by Complainant, or by an entity affiliated to the Complainant. This Complaint is a textbook illustration of the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy, given that Respondent has from the start used the disputed domain name in an ostensible attempt to sell Complainant’s products, there is no question of its knowledge of Complainant, its products, and its trademarks. Bad faith may readily be inferred from that knowledge and attempted sales targeting the value of Complainant’s ELECTROLUX trademark.
In view of Respondent’s use of the disputed domain name in connection with an ostensible online storefront for Complainant’s products, misappropriating Complainant’s ELECTROLUX design trademark and official website trade dress, the Panel concludes that Complainant has established the third element of the Policy.
7. DecisionFor 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
Phillip V. Marano
Sole Panelist
Date: October 11, 2021