WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Najam Hasan, Domains By Proxy Inc.
Case No. D2008-0833
1. The Parties
The Complainant is Aktiebolaget Electrolux, of Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Najam Hasan, of United States of America; Domains By Proxy Inc., of United States of America.
2. The Domain Name and Registrar
The disputed domain name <electrolux-appliances.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 29, 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 disclosing underlying registrant and contact information for the disputed domain name which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 2008 providing the underlying 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 June 9, 2008 confirming Najam Hasan as the Respondent and ratifying the Complaint. 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”), 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 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2008.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on July 9, 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, the 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, the Complainant has leading market positions both in Europe and North America.
The trademark upon which the Complaint is based is ELECTROLUX. The Panel notes that the Complainant has produced a list of all trademark registrations around the world owned by the Complainant but has not produced a copy of any trademark registration as it would be advisable under Rule 3(b)(xv). However, the Panel notes that the Complainant’s ownership of the ELECTROLUX trademarks has been confirmed in at least one previous WIPO UDRP decision. See Aktiebolaget Electrolux v. 2220 Internet Coordinator, WIPO Case No. D2005-1184 (where the panel found that “[t]he Complainant’s rights in the two trademarks ELECTROLUX and KELVINATOR are uncontestable.”). In addition, a search of the online register of the United States Patent and Trademarks Office conducted by the Panel on July 15, 2008 shows that Complainant is the actual owner of a number of U.S. trademark registrations for ELECTROLUX.
The Panel accepts the Complainant’s contentions that Aktiebolaget Electrolux is a well known company worldwide in the field of kitchen, cleaning and outdoor appliances and that the ELECTROLUX trademark is a notorious trademark worldwide.
According to the documentary evidence and contentions submitted, the Complainant has registered various domain names containing the ELECTROLUX trademark plus a word which is descriptive of its products, such as <electroluxappliances.com>, <electrolux-at-home.com>, <electrolux-kitchen.com>, <electrolux-majorappliances.com>, and <electrolux-vacuum.com>, including <electrolux.com>.
The domain name <electrolux-appliances.com> was registered on August 5, 2007. According to the documentary evidence and contentions submitted, the disputed domain name resolves to a website with sponsored links. The Complainant sent cease and desist letters to the Respondent (both Domains By Proxy Inc. and Najam Hasan), by regular mail and email. The Complainant states that no response was ever received.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights because it comprises the word “electrolux” and creates an obvious association with the ELECTROLUX trademark. The Complainant also contends that the addition of the top-level domain “.com” does not change the likelihood of confusion.
The Complainant further contends that the Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) the Respondent has no trademark or tradename rights in the disputed domain name; (ii) there is no connection with or cooperation between the Complainant and the Respondent; and (iii) the Respondent has intentionally chosen a domain name based on a registered trademark to generate more traffic to its website and generate income for itself.
Finally, the Complainant contends that the Respondent registered the disputed domain name in bad faith because (i) the ELECTROLUX trademark is well known worldwide, (ii) the Respondent’s failure to respond to the Complainant’s contact provide strong support for a determination of bad faith and use, and (iii) use of the ELECTROLUX trademark is an “opportunistic bad faith”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Legal Status of the Respondent
When the Complainant sent a cease and desist letter to Domains by Proxy, Inc., that entity disclosed by email the underlying registrant and contact information. However, when the Complaint was filed, the disputed domain name was still registered in the name of “Domains by Proxy, Inc.”, which is a proxy service to enable the “real” owner of a domain name to conceal identity. By the time the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification, the registrant had been changed to “Najam Hasan”. Both the proxy service and Najam Hasan have been served with copies of the Complaint and the amendment to the Complaint, and neither has responded. The Panel sees no reason to distinguish between the two. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642.
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.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant from these facts. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether the Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The ELECTROLUX trademark in which the Complainant has rights is distinctive and the domain name <electrolux-appliances.com> incorporates such mark in its entirety. In this type of combination it is clear that the ELECTROLUX 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. In this Panel’s view that is particularly true where the disputed domain name incorporates a famous trademark, as in the instant case.
The addition of the descriptive term “appliances” does not affect a finding that the disputed domain name is confusingly similar to Complainant’s registered trademarks. 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., Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.
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. Matthew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the <electrolux-appliances.com> domain name is clearly confusingly similar to Complainants’ ELECTROLUX 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 the Complainant’s contentions that (i) the Respondent does not have any affiliation with the Complainant and has not been authorized by the Complainant to register and use the disputed domain name or the ELECTROLUX trademark; and (ii) the Respondent has no trademark rights in the term “electrolux-appliances”.
The Panel concurs with the prior WIPO UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a website containing sponsored links. In Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819, the panel held that respondent’s use of the domain name for a commercial website with links to competitors of the complainant cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy. That panel relied on Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809, where the panel held that bona fide use does not exist when the intended use is a deliberate infringement of another’s rights.
As a result of an independent research made on July 15, 2008 by accessing the website to which the domain name at issue resolves, the Panel noted that the website at “www.electrolux-appliances.com” is a simple sponsored link page related to the field of kitchen, cleaning and outdoor appliances, which is the core business of the Complainant, and is parked free at GoDaddy.com, Inc.
Finally, the Panel finds that the Complainant has satisfied its burden of providing sufficient evidence to show that the Respondent lacks rights to or legitimate interests in the disputed domain name. It has been established by previous WIPO UDRP decisions that, “while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing lack of rights and legitimate interests of the respondent to the disputed domain name”. Caixa DŽEstalvis i Pensions de Barcelona (“La Caixa”) v. Young N, WIPO Case No. D2006-0406; Croatia Airlines d.d. v. Modern Empires Internet Ltd., WIPO Case No. D2003-0455.
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
In light of the reputation of the ELECTROLUX trademark, the reproduction by the Respondent of this trademarks in its entirety, and the combination of this trademark with a descriptive term, it is clear that the Respondent in all likelihood knew of the existence of the Complainant’s trademark and of its relevance in the United States market. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa DŽEstalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464. See also Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
Also, as indicated in another Policy case, “it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with Complainant and its products”. BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325.
The Panel concurs with the understanding of several other WIPO UDRP panels that the use of a domain name to point to a website that offers sponsored links to complainant’s competitors or other websites is evidence of bad faith. Mudd, (USA) LLC v. Unasi, Inc. (MUDDPRODUCTS-COM-DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.
Finally, the Panel also finds that another factor that weighs in the Complainant’s favour on the issue of bad faith is the use by the Respondent of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest. See Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., WIPO Case No. D2008-0321; Canadian Tire Corporation Limited v. CK Aspen, WIPO Case No. DTV2007-0015; Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696.
Therefore, 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 <electrolux-appliances.com> be transferred to the Complainant.
Manoel J. Pereira dos Santos
Dated: July 23, 2008