ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION AB Electrolux v. Pietra Elisa Marina Peixoto, Pietra Elisa Marina Peixoto Case No. D2024-1055 1. The Parties The Complainant is AB Electrolux, Sweden, represented by SILKA AB, Sweden. The Respondent is Pietra Elisa Marina Peixoto, Pietra Elisa Marina Peixoto, Brazil. 2. The Domain Name and Registrar The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2024. On March 11, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 11, 2024, 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 (REDACTED FOR PRIVACY), and contact information in the Complaint. The Center sent an email communication to the Complainant on March 13, 2024, 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 March 14, 2024. 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 March 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2024. The Center appointed Roger Staub as the sole panelist in this matter on May 3, 2024. 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.
page 2 4. Factual Background The Complainant is a Swedish joint stock company and a world leading producer of appliances and equipment for the kitchen, cleaning products, and floor care products. The Complainant submits that its flagship brand for kitchen and cleaning appliances is ELECTROLUX. According to the Complainant’s website “www.electroluxgroup.com”, the Complainant has been on the market for more than 100 years. It sells household products in around 120 markets. In 2023, Electrolux Group had sales of SEK 134 billion and employed 45,000 people around the world. It can further be taken from the Complainant’s website that its group has approx. 8,400 employees in Latin America with Brazil, which is where the Respondent is located, as the largest appliance market in the region. The Complainant owns various trademark registrations consisting of, or containing, the word “ELECTROLUX” in various jurisdictions. The Complainant’s portfolio of ELECTROLUX trademark registrations includes, inter alia, the following trademark registrations: - International trademark No. 836605 ELECTROLUX, registered on March 17, 2004, in Classes 3, 7, 8, 9, 11, 12, 21, 25, 35, 37, and 39, covering more than 45 jurisdictions, including Australia, China, Morocco, Republic of Korea, Russia, Switzerland and Türkiye; - Brazilian trademark No. 002625920 ELECTORLUX, registered on August 30, 1949, for, inter alia, household products; - European Union Trademark No. 000077925 ELECTROLUX, registered on September 16, 1998, in Classes 3, 7, 8, 9, 11, 16, 20, 21, 35, and 37. The Complainant has registered, and is using, various domain names containing the element “electrolux”. By way of example, the Complainant’s main international website is “www.electrolux.com”. One of the Complainant’s subsidiaries uses the website “www.electrolux.com.br” to advertise its offerings to Internet users in Brazil. The disputed domain name was registered on March 5, 2024. At the time the Complaint was filed, the disputed domain name resolved to an active website. That website contained prominently the Complainant’s word-/device mark ELECTROLUX. “Electrolux” is depicted at various places of that website. It is the same logo, which the Complainant uses on its own websites accessible under “www.electrolux.com” or “www.electroluxgroup.com”. The website offers significantly discounted Electrolux products (discounts of 80 to 85%). At the bottom of the page, there is a copyright notice “© 2024 Electrolux / Todos os direitos reservados”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. First, the disputed domain name is confusingly similar to a trademark or service mark, in which the Complainant has rights. The Complainant holds many trademark registrations for ELECTROLUX. The disputed domain name encompasses the Complainant’s ELECTROLUX mark in full, only preceded by the term ‘lojas’ (Portuguese for ‘shops’). The ELECTROLUX mark forms the dominant and distinctive feature of the disputed domain name; the addition of ‘lojas’ does not prevent a finding of confusing similarity. The “.com” extension has to be disregarded, as this forms a standard registration requirement.
page 3 Second, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not known, nor has it ever been known by the ELECTROLUX mark, the term “lojaselectrolux” nor by anything similar. To the best of the Complainant’s knowledge, the Respondent does not have trademark rights (registered or unregistered) in any term matching or similar to “lojaselectrolux”. The Respondent is not connected to nor affiliated with the Complainant and has not received license or consent to use the ELECTROLUX mark in any way. The Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services, nor some legitimate noncommercial or fair use. The disputed domain name has been used to resolve to a site which prominently brandished the ELECTROLUX mark and logo and purported to offer discounted goods. The resolving site adopted the same look and feel as that of the Complainant’s official sites and failed to disclaim its lack of connection with the Complainant. The Respondent has clearly attempted to impersonate the Complainant or one of the Complainant’s subsidiaries. The disputed domain name’s composition, by combining the distinctive ELECTROLUX mark with the term ‘lojas’ (‘shops’ in Portuguese), creates a high risk of implied affiliation. The risk of implied affiliation is further apparent given the disputed domain name’s similarity to the domain name used by one of the Complainant’s subsidiaries. Third, the disputed domain name was registered and is being used in bad faith. The Complainant has accrued substantial goodwill and recognition in the ELECTROLUX brand, which was first registered as a trademark more than 90 years ago. The Complainant’s trademarks cover numerous jurisdictions; this includes Brazil, where the Respondent appears to be situated. The renown and recognition of the Complainant’s ELECTROLUX mark has been noted by panels in numerous domain dispute decisions. The top results of a basic Google search of the Complainant’s mark clearly pertain to its offerings. The Respondent’s decision to register a domain name juxtaposing the ELECTROLUX mark with the commercial term ‘lojas’ (translating to ‘shops’) constitutes further evidence that the Respondent was aware of, and had plans from the outset to capitalize on, the ELECTROLUX mark in bad faith. The Respondent has used the disputed domain name to attract users familiar with the Complainant’s ELECTROLUX offerings to a site which impersonates such. Further, the Respondent’s attempt to capitalize on the likelihood of Internet-user confusion is evidenced by the repeatedly brandishing of the Complainant’s ELECTROLUX mark and logo, by reproducing similar colors and design elements from the Complainant’s official sites and by failing to sufficiently disclaim the resolving site’s lack of connection to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to the Policy, to qualify for a cancellation or transfer, the Complainant must prove each of the following: First, the disputed domain name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights. Second, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Third, the disputed domain name has been registered and is being used in bad faith. Since the Respondent did not submit a reply, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy that is sufficient to order the transfer of the disputed domain name (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292).
page 4 A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here: “lojas”) may bear on the assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds 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 rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The fact that the website accessible via the disputed domain name contains elements contributable to the Complainant and its products (e.g., the Complainant’s logo and products bearing that logo) does not change this finding. To the contrary, there are various indications that speak against a bona fide offering of goods or services. By way of example, the use of a copyright notice with the Complainant’s name Electrolux, without authorization from the Complainant, suggests that the website was set up for other purposes than bona fide offerings. The Panel is inclined to assume that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name. This is supported by the fact that the Respondent uses the Complainant’s logo on the website accessible under the disputed domain name without the Complainant’s authorization. Panels have held that the use of a domain name for illegal activity (here, claimed impersonation) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established.
page 5 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity (here, claimed impersonation) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The disputed domain name incorporates the Complainant’s trademark, which has a high reputation. The Complainant is known under this trademark and name in many countries worldwide (also in the Respondent’s reported country, where the Complainant has a presence). This reputed trademark has been combined with a descriptive term (the Portuguese word for “shops”) suggesting that the disputed domain name is the Internet address of the Complainant’s local web presence in that country. On the website, which is accessible under the disputed domain name, consumers can see the Complainant’s well-known logo and a copyright notice with the Complainant’s name although there is no legal and commercial connection between the Respondent and the Complainant. The website further uses similar colors as the Complainant’s websites and creates a very similar look-and-feel. All this creates a likelihood of confusion. There are no plausible indications at all for a possible good faith use of the disputed domain name by the Respondent. To the contrary, the unusually high “discounts” on Electroluxproducts of between 80 and 85% rather suggest that the products offered on that website may be counterfeits. The Respondent failed to submit a response and, thus, any evidence of an actual or contemplated good faith use. A further relevant element supporting this finding is the use of a proxy service, which in the present case, due to the lack of any explanation from the Respondent, seems to serve the mere purpose of avoiding being notified of a UDRP proceeding (see section 3.6 of the WIPO Overview 3.0). The Panel finds that the Complainant has established the third element of the Policy. 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 name, , be transferred to the Complainant. /Roger Staub/ Roger Staub Sole Panelist Date: May 17, 2024
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