The Complainant is Whirlpool EMEA Spa, Italy, represented by Marbre Srl, Italy.
The Respondent is ye tian, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2021. On December 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 8, 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 the Complainant on December 9, 2021, 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 on December 14, 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 the Respondent of the Complaint, and the proceedings commenced on January 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2022. The Respondent did not submit any response by the specified due date. Accordingly, the Center notified the Respondent’s default on January 26, 2022. The Respondent later submitted an email communication to the Center on January 27, 2022.
The Center appointed Lynda M. Braun as the sole panelist in this matter on February 3, 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 an Italian company and is part of Whirlpool Corporation which is a well-known multinational manufacturer and marketer of home appliances. Founded in 1911, Whirlpool Corporation is one of the largest worldwide companies operating in the home appliances sector. The Complainant has approximately 19,000 employees worldwide and operates 11 manufacturing and technology research centers in five countries.
The Complainant owns the following international trademark registrations, including, but not limited to: ARISTON, International Trademark Registration No. 1395967, registered on February 20, 2017, in international classes 7, 11, and 21; ARISTON, International Trademark Registration No. 938153A, registered on June 28, 2007, in international classes 7, 9, 11 and 37; and ARISTON, International Trademark Registration No. 254242B, registered on March 31, 1962, in international classes 7, 9, and 11. The foregoing trademarks will hereinafter collectively be referred to as the “ARISTON Mark”.
The Complainant also uses the domain name
The Disputed Domain Name was registered on January 15, 2019, resolving to the Respondent’s website in Chinese which bears the ARISTON Mark prominently throughout the website. The website provides information about the Ariston-branded products, and offers maintenance and repairing services for these products.
5. Parties’ Contentions A. ComplainantThe following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the Complainant’s ARISTON Mark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
B. RespondentThe Respondent did not submit a formal Response to the Complaint but sent an email communication to the Center on January 27, 2022 that stated: “The relevant information confirms that I am the qualified owner of this domain name. Don’t understand why this happens.” For the sake of completion of the case and to ensure each Party is given a fair opportunity to present its case, the Panel has accepted the Respondent’s email communication which was sent two days after the due date for Response.
6. Discussion and FindingsIn order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the ARISTON Mark as set forth below.
It is uncontroverted that the Complainant has established rights in the ARISTON Mark based on its years of use plus its registered international trademarks for the ARISTON Mark in numerous jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the ARISTON Mark.
The Disputed Domain Name consists of the ARISTON Mark in its entirety followed by the dictionary or descriptive term “home”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of another term. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Thus, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive term to a disputed domain name does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s ARISTON Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, given the facts as set out above, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any relevant arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ARISTON Mark. The Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name or that the Respondent has made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Based on the use made of the Disputed Domain Name to resolve to a Chinese language website, using the ARISTON Mark prominently, and that passes itself off as the Complainant or appears to be sponsored by the Complainant by indicating “ARISTON中国” (“ARISTONChina”) on the bottom of the website, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Respondent has intentionally chosen a domain name based on a well-known registered trademark in order to generate traffic and income through a commercial website.
Finally, the composition of the Disputed Domain Name, comprising the entirety of the ARISTON Mark plus an additional term “home” related to the Complainant’s area of business, which (especially in the absence of an explanation from the Respondent) does not seem to be a mere coincidence, carries a risk of implied affiliation and cannot constitute fair use here, as it may effectively suggest sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThis Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b)(iv) of the Policy.
First, the registration of a domain name that is confusingly similar to a widely-known trademark by an entity that has no relationship to that mark can itself create a presumption of bad faith. Based on the circumstances here, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s ARISTON Mark.
Second, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ARISTON Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving website. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its ARISTON Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).
Third, the Panel finds that the Respondent had actual knowledge of the Complainant’s ARISTON Mark and targeted the Complainant when he registered the Disputed Domain Name, demonstrating the Respondent’s bad faith. Based on the use made by the Complainant of the ARISTON Mark worldwide, it strains credulity to believe that the Respondent had not known of the Complainant or its ARISTON Mark when registering the Disputed Domain Name. The Respondent’s awareness of the Complainant and its ARISTON Mark additionally suggests that the Respondent’s decision to register the Disputed Domain Name was intended to cause confusion with the Complainant’s ARISTON Mark and its
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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
Lynda M. Braun
Sole Panelist
Date: February 17, 2022