Complainant is AB Electrolux, Sweden, represented by SILKA AB, Sweden.
Respondent is Contact Privacy Inc. Customer 0162354394, Canada / Jose Eduardo, Utensilios E, 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 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 27, 2021, 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 30, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 2, 2021.
The Center verified that the Complaint together with the amended 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 September 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2021. Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 8, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on November 3, 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 BackgroundComplainant, together with its subsidiary and affiliated companies (collectively “Complainant”) is a multinational company based in Sweden. Having operated for over 100 years, Complainant is one of a major global supplier of appliances and equipment for kitchen, along with related household products, which Complainant offers under its ELECTROLUX mark. Complainant has several registered trademarks for these marks around the world, including in Brazil, where Respondent lists an address of record. These include Brazil Registration Nos. 815852681 (registered on April 28, 1992) and 826212077 (registered on March 5, 2014).
Complainant also owns the registration for several domain names that incorporate its ELECTROLUX mark. These includes
The disputed domain name
Complainant contends that the (i) disputed domain name
In particular, Complainant contends that it owns the mark ELECTROLUX, for which it has established a “high degree of renown around the world, including in Brazil”, where Respondent lists an address of record. Complainant contends that Respondent has merely added a plural of the dictionary term “utensilio”, which is the Portuguese translation of the English word “utensil”.
Complainant contends that Respondent has used the disputed domain name to set up a website meant to lure in customers looking for Complainant and its kitchen and other products offered under the ELECTROLUX mark. Complainant further contends that Respondent has no rights or legitimate interests in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in registering the disputed domain name and in setting up a website, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not file a reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThis Panel must first determine whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered ELECTROLUX mark, with the addition of the Portuguese term “utensilio/utensilios”.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with an added term(s) does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter-Ikea Systems B.V. v. Polanski,WIPO Case No. D2000-1614 (transferring
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to Complainant’s contentions. Thus, Respondent did not allege or otherwise provide any information that would support a finding that Respondent has rights or legitimate interests in the disputed domain name. The disputed domain name consists of Complainant’s trademark along with a term descriptive of the goods provided under Complainant’s trademark. UDRP panels have held that where a domain name consists of a trademark plus an additional term (at the second- or top-level), such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 2.5.1. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad FaithThere are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, although the disputed domain name now appears to resolve to an inactive link, Respondent has used the URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, with reference to various appliances listed under the ELECTROLUX mark.
Furthermore, it is well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. See WIPO Overview 3.0, section 3.3. Rather, a panel must examine “the totality of the circumstances”, including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity, and/or replies to the complaint. Respondent here did not formally respond to the Complaint, nor to prior correspondence from Complainant. Furthermore, Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world, including in Brazil, where Respondent lists an address of record. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. See also AB Electrolux v. Darcivan Petrucci,WIPO Case No. D2015-2258; AB Electrolux v. Marcelo Aquilini Spadini,WIPO Case No. DBR2015-0006; AB Electrolux v. Caio Cesar,WIPO Case No. DBR2016-0003; and AB Electrolux v. Contact Privacy Inc. Customer 0161631641 / Edisom Mivaldo, Varejo Electrolux Cozinhas,WIPO Case No. D2021-1526.
The Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
7. DecisionFor all 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
Lorelei Ritchie
Sole Panelist
Dated: November 17, 2021