The Complainant is AB Electrolux, Sweden, represented by SILKA AB, Sweden.
The Respondent is Privacy Protection, Hosting Ukraine LLC, Ukraine / Матьола Артем Ігорович (Mat’ola Artem Іgorovich).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 10 and 25, 2021, the Registrar transmitted by email to the Center its verification response and clarifications to it, 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 November 25, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Center sent a document to the Parties in respect of the language of proceedings. On November 26, 2021, the Complainant filed an amendment to the Complaint and submitted a request the proceeding to be held in English. On November 29, 2021, the Respondent requested that the language of the proceeding be Russian.
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 in both English and Russian, and the proceedings commenced on December 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2021. The Respondent did not submit any formal Response within the due date. Accordingly, the Center notified the Parties about the commencement of the Panel appointment process on January 11, 2022. On January 11, 2022, the Respondent requested an extension of the due date for Response until January 26, 2022. On January 13, 2022, the Center informed the Respondent that its request will be brought to the attention of the Panel, when appointed, because the specified due date for submission of a Response had already passed.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 26, 2022. 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 BackgroundThe Complainant is a Swedish joint stock company founded in 1901. It is one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products. In 2019, the Complainant’s sales amounted to SEK 119 billion in over 120 markets worldwide. ELECTROLUX is the Complainant’s flagship brand for kitchen and cleaning appliances for consumers and professional users.
The Complainant is the owner of the following trademark registrations for the sign “ELECTROLUX” (the “ELECTROLUX trademark”):
− the International trademark ELECTROLUX with registration No. 836605, registered on March 17, 2004 with priority as of October 13, 2003, for various jurisdictions, including Ukraine, for goods and services in International Classes 3, 7, 8, 9, 11, 12, 21, 25, 35, 37 and 39; and
− the International trademark ELECTROLUX with registration No. 1260775, registered on January 27, 2015 with priority as of December 22, 2014, for various jurisdictions, including Ukraine, for goods and services in International Classes 7, 8, 9, 11, 21, 26, 35 and 37.
The Complainant is also the owner of the domain names
The disputed domain name was registered on January 26, 2019. According to the evidence submitted with the Complaint, it resolved to a website offering products of the Complainant and products from competing brands. The disputed domain name is currently inactive.
5. Parties’ Contentions A. ComplainantThe Complainant maintains that the disputed domain name is confusingly similar to its ELECTROLUX trademark, because it incorporates this trademark entirely, and the addition of the generic Top-Level Domain (gTLD) “.store” does not eliminate the confusing similarity between the ELECTROLUX trademark and the disputed domain name.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as it is not commonly-known by it and has no relevant prior rights in it. The Respondent has made no bona fide use or a legitimate noncommercial or fair use of the disputed domain name, which targets the Complainant and trades off the goodwill of the ELECTROLUX trademark by creating a misleading impression that it is affiliated with the Complainant. According to the Complainant, the Respondent’s conduct does not meet the Oki Data criteria. The Respondent has used the disputed domain name to attract internet users to the associated website that had the appearance of an Electrolux online store and was offering products from competing brands, but did not contain any disclaimer for the lack of relationship with the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The well-known ELECTROLUX trademark predates the registration of the disputed domain name and the Respondent was aware of its existence when it registered the disputed domain name, as the Respondent’s website offers the Complainant’s products for sale. The Complainant notes that the Respondent has never been granted permission to register the disputed domain name, and the Respondent takes advantage of the ELECTROLUX trademark by intentionally attempting to attract visitors to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the products offered on it. The Complainant notes that the Respondent has not published a disclaimer on the website at the disputed domain name for the lack of relationship between the Parties, and its website is an online store for products offered by direct competitors of the Complainant.
The Complainant notes that on October 28, 2021, it sent cease-and-desist letter to the Respondent, after which the Respondent deactivated its website, but did not respond to the letter and the disputed domain name remained registered.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Procedural issue – Language of the proceedingAccording to the information provided by the Registrar, the language of the Registration Agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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.
The Complainant requests that the language of the present proceeding be English. In support of this request, the Complainant points out that the disputed domain name includes the Complainant’s ELECTROLUX trademark in its entirety coupled with the “.store” gTLD, which reflects an English word, while the Respondent’s website is also operated in English language. According to the Complainant, these circumstances show that the Respondent is familiar with the English language. The Complainant adds that if the proceeding is to be conducted in Russian, that would delay the procedure and place an undue burden on the Complainant.
The Center has sent all its communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has requested that the proceedings be held in Russian, but has not disputed the arguments of the Complainant or its knowledge of English.
The above satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English, and that using the English language in this proceeding would be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. At the same time, the Panel will take into account any statements and evidence in the case that have been presented in Russian.
6.2. Procedural issue – request of the Respondent for extension of the due date for the ResponseOn January 11, 2022, the Respondent requested an extension of the due date for its Response until January 26, 2022.
Paragraph 5(e) of the Rules provides that “At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response.” Paragraph 10(c) of the Rules requires that “The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
The Respondent request for an extension of the due date for its Response was made “in relation to the current COVID-19 conditions”, and wassubmitted 19 days after the expiration of the due date under paragraph 5 of the Rules, which was December 23, 2021. The Respondent has provided no explanation why the current COVID-19 conditions represent an exceptional situation with direct negative effect on the ability of the Respondent to present its case before the Panel, and why it could not have submitted its request prior to the expiration of the due date for Response. The Panel is also not aware of any reason why this proceeding should be regarded as exceptional case.
Therefore, the Panel sees no justification for granting the extension of the due date for Response in this proceeding, requested by the Respondent.
6.3. Substantive issuesPursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
A. Identical or Confusingly SimilarThe Complainant has provided evidence that it is the owner of the ELECTROLUX trademark and has thus established its rights in this trademark for the purposes of the present proceeding.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.store” gTLD section of the disputed domain name.
The disputed domain name incorporates the ELECTROLUX trademark in its entirety without the addition of any other elements. This satisfies the Panel finds that the disputed domain name is identical to the ELECTROLUX trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it is not commonly-known by it and has no relevant prior rights in it, and has made no bona fide use or a legitimate noncommercial or fair use of the disputed domain name, which targets the Complainant and trades off the goodwill of the ELECTROLUX trademark by creating a misleading impression that it is affiliated with the Complainant. According to the Complainant, the Respondent’s website resolved to a website that offers for sale products of the Complainant’s competitors, but did not include any disclaimer of affiliation with the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a formal Response in this proceeding and has not disputed the allegations of the Complainant or the evidence submitted by it.
As discussed in section 2.8 of the WIPO Overview 3.0, Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the 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) the respondent must not try to “corner the market” in domain names that reflect the trademark.
Cases applying the Oki Data test usually involve a domain name comprising a trademark plus a descriptive term (e.g., “parts”, “repairs”, or “location”), whether at the second-level or the top-level. At the same time, the risk of misrepresentation has led panels to find that a respondent lacks rights or legitimate interests in cases involving a domain name identical to the complainant’s trademark.
The Panel finds that the cumulative requirements of the Oki Data test are not complied with in this case. As discussed in the previous subsection of this decision, the disputed domain name is identical to the ELECTROLUX trademark of the Complainant. It also includes the “.store” gTLD, and the combination of its elements is likely to create the impression that the disputed domain name leads to an official webstore of the Complainant for its products. According to the evidence submitted by the Complainant, the associated website indeed represented an online store which offered not only products of the Complainant, but also products of its competitors, and which did not include a disclaimer for the lack of relationship between the Parties.
All the above leads the Panel to the conclusion that it is more likely than not that the Respondent, being well aware of the goodwill of the Complainant’s ELECTROLUX trademark, has registered the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s commercial website by misleading them that it belongs to the Complainant, and to offer to them products of various manufacturers which are competitors of the Complainant. The Panel does not consider that this conduct of the Respondent is legitimate and gives rise to rights and legitimate interests in the disputed domain name.
The fact that the website was deactivated after the Complainant sent a cease-and-desist letter to the Respondent does not change the above analysis, but rather creates an appearance that the Respondent did not have any counter arguments to oppose, which the lack of formal Response only confirms further.
For these reasons, the Panel finds that the Respondent does not have rights and legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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.”
As discussed above, the disputed domain name is identical to the ELECTROLUX trademark and is registered in the “.store” gTLD, which creates the false impression that it denotes an official webstore of the Complainant. The associated website offered for sale products of the Complainant alongside products of its competitors, and did not include any disclaimer for the lack of relationship with the Complainant.
Taking the above into account, the Panel accepts that it is more likely than not that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the ELECTROLUX trademark in an attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the ELECTROLUX trademark as to the affiliation or endorsement of its website and of the products offered on it.
It again bears mentioning that the fact that the website was deactivated after the Complainant sent a cease-and-desist letter to the Respondent does not change the above analysis, but rather creates an appearance that the Respondent did not have any justification for its actions.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.
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
Assen Alexiev
Sole Panelist
Date: February 9, 2022