WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux (AB) v. Craig Hendrix
Case No. D2008-0827
1. The Parties
Complainant is Aktiebolaget Electrolux (AB), of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
Respondent is Craig Hendrix, of Arkansas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <frigidairefilters.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2008. On May 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 30, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2008. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on June 27, 2008.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on July 2, 2008. 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 Background
According to the documentary evidence and contentions submitted, Complainant is a Swedish company founded in 1901 and registered as of 1910, and is one of the world’s largest producers of home appliances and equipment for kitchen, cleaning and outdoor use and of similar equipment for professional uses. According to the contentions submitted, Complainant has leading market positions both in Europe and North America.
The trademark upon which the Complaint is based is FRIGIDAIRE. According to the documentary evidence and contentions submitted, there are a number of trademark registrations for the FRIGIDAIRE trademark around the world and particularly in the United States of America. The FRIGIDAIRE trademark is currently registered in the United States of America under Nos. 2990084 as of August 30, 2005, and 2712131 as of September 18, 2003. The Panel accepts Complainant’s contentions that the FRIGIDAIRE trademark is a well known trademark in the field of appliances and equipment for home and kitchen.
The Panel notes that the actual owner of the FRIGIDAIRE trademarks is Electrolux Home Products, Inc., which is a company within the Electrolux Group. Complainant has submitted an affidavit from the actual trademark owner confirming that Complainant is authorized to proceed with the required legal measures in connection with the disputed domain name and authorizing the transfer of the domain name at issue to Complainant. In light of such facts and also of previous WIPO UDRP decisions, the Panel considers that the Policy should be interpreted as permitting a parent company to make a complaint on behalf of its group. See Miele Inc v Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756; HSBC Holdings Plc v. Iain Rayner, WIPO Case No. DTV2001-0021; Grupo Televisa SA v. Party Night Inc, WIPO Case No. D2003-0796; PartyGaming Plc v. Kriss Vance, WIPO Case No. D2006-0456.
According to the documentary evidence and contentions submitted, Complainant has registered various domain names containing the FRIGIDAIRE trademark plus a word which is descriptive of its products, such as <frigidaireappliances.com>, and <frigidairekitchens.com>, including <frigidaire.com>.
The disputed domain name <frigidairefilters.com> was registered on January 13, 2006. According to the documentary evidence and contentions submitted, the disputed domain name originally resolved to a website at “www.waterfiltersfast.com”, but has been parked since on or after May 26, 2008. Complainant sent cease and desist letters to Respondent by regular mail and email. Complainant states that no response was ever received.
5. Parties’ Contentions
Complainant argues that Respondent’s domain name is confusingly similar to the trademark in which Complainant has rights because it comprises the words “frigidaire” and “filters”, and creates an obvious association with the FRIGIDAIRE trademark. Complainant also contends that the addition of the generic term “filters” does not distinguish a company, and that the addition of the top-level domain “.com” does not change the likelihood of confusion.
Complainant further contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) Respondent has no trademark or tradename rights in the disputed domain name; (ii) there is no license or authorization from Complainant for Respondent to use the FRIGIDAIRE trademark; (iii) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and (iv) the disputed domain name is currently parked by the registrar.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) Respondent knew the existence of the FRIGIDAIRE trademark, (ii) by registering a domain name corresponding to a well known trademark Respondent intentionally intended to generate more traffic to his own website at “www.waterfiltersfast.com”, and (iii) Respondent parked his domain name after receiving the cease and desist letters from Complainant because he was aware that the registration and use of the disputed domain name are a trademark infringement.
Respondent did not timely reply to the Complainant’s contentions.
6. Discussion and Findings
A. Late Response
The first issue to be addressed is to what extent the Panel should take into account the late defense submitted by the Respondent.
On July 2, 2008, Respondent sent an email to the Center alleging that Respondent had been out of office and unable to reply to the documentation he had received, and that he was still out of office. Respondent expressly acknowledged that he had timely received the materials attached to WIPO Notification of Complaint and Commencement of Administrative Proceeding. Respondent’s email was sent on the day he received WIPO Notification of Appointment of Administrative Panel, 8 days after the deadline of June 24, 2008 for submission of a Response, five days after he had received WIPO Notification of Respondent Default, and almost a month after he had received WIPO Notification of Complaint and Commencement of Administrative Proceeding. Respondent did not request an extension of the period of time for the filing of a late response due to exceptional circumstances as defined under paragraph 10(c) of the Rules, and did not submit a complete Response. Respondent claimed he only had “a couple of points in [his] defense that [he] would like to quickly make for the record”.
In the event of a late response, the panel’s course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the complaint. However, the panel may, in its discretion, consider the response if “exceptional circumstances” exist.
As indicated in AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485, responses that were submitted late were taken into account by the panels in cases in which (i) the response was filed before commencement of the decision-making process by the panel (J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035); (ii) respondent was able to rely on a medical emergency (See Khoral Research, Inc. v. Alexy V. Khrabrov, National Arbitration Forum Case No. FA 94269); (iii) response was late only by one day (Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 and Arthur Guinness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell, WIPO Case No. D2000-1710), or (iv) failure to take into account would have led to a “miscarriage of justice” (see Collegetown Relocation, L.L.C. v John Mamminga, National Arbitration Forum Case No. FA 95003). Responses submitted after the expiry of the deadline were dismissed by the panel where the period set was exceeded by two weeks, since the respondent could have applied for an extension and was represented by counsel (Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Respondent has not requested an extension of the deadline for submission of his Response and has not given any proof of the facts which could be regarded as constituting exceptional circumstances that could justify the late filing. In fact, absence of Respondent’s office and any difficulties in replying to the documentation do not amount to “exceptional circumstances” given (i) the period of time which has elapsed since he first received the WIPO Notification of Complaint and Commencement of Administrative Proceeding, and (ii) the absence of any communication with the Center prior to expiration of the deadline or upon receipt of the WIPO Notification of Respondent Default.
The Panel therefore finds that Respondent has not complied with paragraph 5 of the Rules. The Panel also notes that the late defense, if considered, would not have had in any way changed the reasoning and the outcome of the Panel’s decision.
B. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
Therefore, the Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The FRIGIDAIRE trademark is distinctive and the domain name <frigidairefilters.com> incorporates such mark in its entirety. In this type of combination it is clear that the FRIGIDAIRE trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. The Panel concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. That is particularly true where the disputed domain name incorporates a widely known trademark, as in the instant case.
The addition of the descriptive term “filters” does not affect a finding that the disputed domain name is confusingly similar to the FRIGIDAIRE trademark. It has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the trademark. See, e.g., Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253. Complainant argues that the term “filters” is a generic term. In the Panel’s view, the term “filters” is descriptive because it is used to describe a product, and its association with the FRIGIDAIRE brand is intended to identify “filters for FRIGIDAIRE products”, as expressly acknowledged by Respondent in his email (“I have a website that I do sell Frigidaire Filters in ‘good faith’….”).
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the <frigidairefilters.com> domain name is clearly confusingly similar to the FRIGIDAIRE trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
D. Rights or Legitimate Interests
The Panel finds as reasonable Complainant’s contentions that (i) Respondent does not have any affiliation with Complainant and has not been authorized by Complainant to register and use the disputed domain name or the FRIGIDAIRE trademark; and (ii) Respondent has no trademark rights in the term “frigidairefilters”.
This Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-441.
The Panel also concurs with the understanding of the majority view in the WIPO URDP Panel decisions that “a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements”. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.3). However, these requirements should be strictly construed. In fact, as stated in other WIPO panel decisions, “[r]espondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods”. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903. See also Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095.
As evidenced by Annex 11 of the Complaint, the disputed domain name resolved to the website “www.waterfiltersfast.com” where different products with different brands are also offered, including products of competitors to the Complainant. Therefore, Respondent’s statement that he does not sell competing products is not warranted.
Also, an independent investigation was conducted by the Panel by visiting the website at “www.frigidairefilters.com” (access on July 12, 2008). The Panel notes that the domain name at issue is being parked by GoDaddy.com, Inc.. This is an additional complicating factor against Respondent’s statement that he is acting in “good faith” because it places doubts on the sincerity of that statement.
Accordingly, the Panel is convinced by the evidence produced in this case that Respondent has no legitimate interests in the disputed domain name since he is not making a bona fide offering of goods or services.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
E. Registered and Used in Bad Faith
Respondent acknowledged in his statement that he is fully aware of the well know FRIGIDAIRE trademark and of its reputation in the field of appliances and equipment for home and kitchen. The fact that Respondent has chosen as domain name a widely known trademark is per se a clear indication that registration of the disputed domain name was made in bad faith. The Panel accepts as reasonable Complainant’s contention that Respondent intended to free ride on Complainant’s reputation and goodwill for commercial gain.
In fact, a consumer encountering any website accessed via Respondent’s <frigidairefilters.com> domain name would be likely to be confused as to the source, sponsorship, or approval of the content. The mere fact of diverting users in this misleading manner is evidence of bad faith. See The Gap, Inc. v. YongHoon Lee, SofTech, WIPO Case No. D2007-0386.
In the case of a domain name so obviously connected to a widely known mark and product, its use by someone with no legitimate interest in respect of the registered domain name constitutes what has been called as “opportunistic bad faith”. See SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Perfumes Christian Dior v. Javier Garcia Quintas and Christian Dior. net, WIPO Case No. D2000-0226; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
The Panel found before, for the purpose of determining whether or not Respondent has a legitimate interest, that Respondent’s change of the redirection function for the disputed domain name was an indication that he was not acting in good faith. That finding reinforces the conclusion that Respondent, not only registered, but is using the disputed domain name in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <frigidairefilters.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Dated: July 16, 2008