The Complainant is AB Electrolux of Sweden, represented by SILKA AB, Sweden.
The Respondent is Дмитро Слисаренко, ТОВАРИСТВО З ОБМЕЖЕНОЮ ВІДПОВІДАЛЬНІСТЮ “ЕЙР КЛІМАТ” of Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 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 May 7, 2021 providing the registrant with the Respondent’s contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 11, 2021. On May 7, 2021, the Center sent an email communication to the Parties indicating the registration agreement for the disputed domain name is Ukrainian, and inviting the Parties to submit their preference as to the language of the proceeding. On May 11, 2021, the Complainant submitted its request that English be the language of the proceeding. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of .UA Domain Name Dispute Resolution Policy (the “.UA Policy”), the Rules for .UA Domain Name Dispute Resolution Policy (the “.UA Rules”), and the WIPO Supplemental Rules for .UA Domain Name Dispute Resolution Policy (the “WIPO Supplemental Rules”). In accordance with the .UA Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Ukrainian, and the proceedings commenced on May 18, 2021. In accordance with the .UA Rules, paragraph 5(a), the due date for Response was June 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of panel appointment on June 9, 2021. The Center appointed Ganna Prokhorova as the sole panelist in this matter on June 14, 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 .UA Rules, paragraph 7. 4. Factual Background The Complainant is AB Electrolux, a Swedish joint stock company founded in 1901 and one of the world’s leading producers of appliances and equipment for kitchen and cleaning products and floor care products. The ELECTROLUX brand is the Complainant’s flagship brand for kitchen and cleaning appliances for both consumers and professional users. The Complainant is the owner of the registered trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world including in Ukraine, at least IR 854121, 1126087, 1260775, which predate the registration of the disputed domain name. The Complainant has registered The disputed domain name The Respondent is a Ukrainian legal entity. The website under the disputed domain name offers for sale ELECTROLUX branded goods without any disclaimer on affiliation ties (their absence) with the Complainant. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant owns numerous ELECTROLUX trademark registrations in many jurisdictions throughout the world including in Ukraine and is well-known. The Complainant’s trademark acquired protection significantly prior to registration of the disputed domain name. The domain name The Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent is not commonly known by the disputed domain name, the Respondent is not using the disputed domain name, and the Respondent is not preparing to use it in connection with a bona fide offering of goods and services. The intention of the registration of the disputed domain name is to take advantage of the well-known ELECTROLUX trademark. The Respondent was aware of the right that the Complainant has in the trademark and the value of said trademark, when the disputed domain name was registered. Inference of bad faith registration and use of the disputed domain name is also given by the fact that the Respondent never replied to the Complainant’s cease and desist letter. It is reasonable to assume that if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded. Lastly, the Respondent does not meet the Oki Data principles on all elements, namely lack of a distinctive disclaimer and Respondent represent itself as the trademark owner by displaying the Complainant’s logos on the website and offering a wide range of services relating to home appliances. From the Complainant’s point of view, the Respondent intentionally chose the disputed domain name based on the registered and well-known ELECTROLUX trademark in order to generate more traffic to its own business. The Respondent has not published a disclaimer anywhere on the website on the disputed domain name to explain that there is no existing relationship between itself and the Complainant. The disputed domain name is currently used for an online store for ELECTROLUX products and the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. This conduct has been considered as bad faith. The Complainant seeks a decision that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Issue: Language of Proceedings Paragraph 11(a) of the .UA Rules provides that “unless otherwise agreed by the Parties, the language of the administrative proceeding shall be the language of the Registration Agreement (which shall be in English, Russian or Ukrainian), subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The language of the Registration Agreement for the disputed domain name is Ukrainian. The Panel is proficient in both Ukrainian and English. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties. The Complainant has filed the Complaint in English and requested English to be the language of this proceeding based on the Respondent’s registration of a domain name including an English-language trademark and wide use of the international name Electrolux on the website. The Panel also notes that the website associated with the disputed domain name contains English wording, as well as a description of the ELECTROLUX products in Ukrainian. In addition, the Complainant is located in Sweden, where the Ukrainian language is not normally used. The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint and its annexes had to be translated into Ukrainian. As it was earlier found by other panels, while applying the provision on the language of the proceeding the Panel considers that it should be also ensured that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (See Facebook Inc. v. Private Registration / Denis Khakimov,WIPO Case No. DUA2019-0002). The Respondent has not provided any arguments or supporting materials as to why the proceedings should not be conducted in English. This was despite the Center notifying the Respondent in Ukrainian and English that the Respondent was invited to present his objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known his preference but did not do so. Whilst there is a language requirement in paragraph 11(a) of the .UA Rules, the Panel has to balance that against the other considerations of ensuring that the proceeding takes place with due expedition and that the parties are treated fairly and given a fair opportunity to present their case. The Panel is of the view that the language requirement should not cause any undue burden on the parties or undue delay (see Michael Kors (Switzerland) International GmbH. v. Minakova Maria,WIPO Case No. DUA2020-0002; Chewy Inc. v. Rostislav Karyi/Ростислав Карый,WIPO Case No. DUA2020-0007). Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English. 6.2. Substantive Issues In accordance with paragraph 4(a) of the .UA Policy, the Complainant must prove: (i) that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered or is being used in bad faith. The Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. However, even if the Respondent has not replied to the Complainant’s contentions, the Complainant still bears the burden of proving that all these requirements are fulfilled. Concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that due to the similarities between the .UA Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. A. Identical or Confusingly Similar According to paragraph 4(a)(i) of the .UA Policy it should be established that the disputed domain name is identical or confusingly similar to a mark in which the complainant has rights. The Complainant has proved that it has established rights in the ELECTROLUX trademark well before the disputed domain name was registered. The Panel finds that the domain name Therefore, the disputed domain name is confusingly similar to the registered trademark ELECTROLUX in which the Complainant has rights. Therefore, the Panel finds that the Complainant has satisfied the first element of the .UA Policy. B. Rights or Legitimate Interests In accordance with the paragraph 4(a)(ii) of the .UA Policy the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. According to the complaint and annexes thereto, the incorporation of the trademark in its entirety in the disputed domain name and the Respondent’s layout, including the ELECTROLUX logos appearing prominently and frequently throughout the websites in connection with the Complainant’s products, strongly suggests that there is a connection to the Complainant and that here is some official or authorized relationship with the Complainant for the purposes of repairs and services within Ukraine. And the Panel agrees. Finally, no disclaimer can be found on any page on the website where information is given about the Respondent and its services. According to the consensus view in UDRP panel decisions (WIPO Overview 3.0, section 2.8), a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods or services, and the site’s accurate and prominent disclosure of the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such so-called Oki Data principles (cf., e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481; Red Pocket Inc. v. American Wireless LLC,WIPO Case No. D2013-0318). Nonetheless, the Oki Data test can provide certain guidance for the case at hand. While it was developed in connection with an authorized reseller, the test is regularly also applied in cases of unauthorized resellers. Under the Oki Data principles (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, - a respondent must actually be offering the goods or services at issue; Applying the Oki Data principles to the fact pattern of the present case, the Panel finds that the Respondent failed to satisfy at least the third above requirement and did not in any way disclose its actual relationship with the Complainant, and thus failed to pass the above test (See AB Electrolux v. Serg Lux,WIPO Case No. DUA2020-0019). The Respondent’s use of the disputed domain name misleads consumers into thinking that the website is operated by or affiliated with the Complainant. As such, the Respondent’s use of the disputed domain name cannot be considered bona fide (See DECATHLON v. Artem Pedchenko,WIPO Case No. DUA2020-0026). According to the Panel, it is undeniable that the Respondent was aware of the Complainant’s mark prior to the registration of the disputed domain name and the establishment of the Respondent’s website for a print out of the Respondent’s website. The Respondent has made no claims to neither having any relevant prior rights of its own, nor to having become commonly known by the disputed domain name. Clearly, the Respondent is not known by the disputed domain name, nor have the Respondent made legitimate, non-commercial fair use of the disputed domain name. Furthermore, the Panel also finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the element under paragraph 4(a)(ii) of the Policy has been established. C. Registered or Used in Bad Faith The third element of paragraph 4(a) refers to the question of whether the disputed domain name has been registered and is being used in bad faith by the Respondent. The disputed domain names resolves to commercial website which uses the Complainant’s (logostyle) trademark and so make a false suggestion of an association or affiliation with the Complainant. While the Panel notes that the Respondent appears to be selling the Complainant’s products, there is no disclaimer disclosing the relationship between the Respondent and the Complainant. In the result, there is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services. The Complainant tried to contact the Respondent through a cease and desist letter, but received no reply. The Panel is convinced that the Respondent must have known of ELECTROLUX mark when registered the disputed domain name. This is in particular likely as the disputed domain name has been registered well after the Complainant’s trademark ELECTROLUX has become recognized in the world. It rather appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant, in particular with its products and services. Not only the disputed domain name but also the content and the design of the websites linked to the disputed domain name gives the impression that the Respondent intended to mislead Internet users who may search for official website of the Complainant. The Panel therefore concludes that the disputed domain name was registered and is used in bad faith. The continuing use of the disputed domain name is clearly confusing to online users who will be attracted by the inclusion of the word ELECTROLX in the disputed domain name, and who will therefore believe that they are accessing a website that is in some way associated with or authorized by the Complainant. This is not the case, and the consumer confusion is further strengthened by the fact that there are services for Electrolux products advertised on the Respondent’s website without any disclaimer of association with the Respondent. According to the Panel’s view based on analysis of all the circumstances of the present case, the Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and well-known trademark, which confirms the bad faith (See MichaelKors (Switzerland) International GmbH v. Minakova Maria,WIPO Case No. DUA2020-0002). The Panel also finds that in the present case by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product on its website or location. Such use of the disputed domain name is considered as bad faith according to paragraph 4(b)(iv) of the .UA Policy. The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name. Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the .UA Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the .UA Policy and 15 of the .UA Rules, the Panel orders that the disputed domain name Ganna Prokhorova
- a respondent must use the website to sell only the trademarked goods or services;
- a respondent must take steps to prevent confusion e.g., by making clear on the corresponding website that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner;
- a respondent does not corner the market in such domain names depriving the trademark owner of reflecting its own mark in a domain name.
Sole Panelist
Date: June 28, 2021
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