The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is I D S of Florida, United States of America.
The disputed domain name <electrolux-trilobite.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2008. On September 22, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On September 22, 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 September 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2008.
The Center appointed Francine Tan as the sole panelist in this matter on November 3, 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.
In the course of reviewing the Complaint and evidence submitted, the Panel noted a few deficiencies therein and issued Procedural Order No. 1 on November 10, 2008, requesting the provision of additional information and documents. The deficiencies were addressed and rectified on November 11 and 18, 2008.
The Complainant is a Swedish joint stock company founded in 1901. It is one of the world's largest producer of appliances and equipment for kitchen, cleaning and outdoor use with sales of SEK105 billion. It is also one of the largest producers in the world of similar products for professional use. The Complainant has leading market positions in floor-care products in both Europe and North America.
The Complaint is based on the Complainant's ownership of and rights in the trade marks ELECTROLUX and TRIBOLITE. The ELECTROLUX mark has been registered in respect of appliances and equipment for kitchen, cleaning and outdoor products in several classes in more than 150 countries. ELECTROLUX has also been registered by the Complainant as a domain name in about 300 gTLDs and ccTLDs. The TRILOBITE trade mark has also been registered as a trade mark around the world including the United States of America and the European Union.
The Complainant first became aware of the Respondent's domain name registration in March 2008. The Respondent's website at the disputed domain name provides sponsored links to other websites.
The Complaint is based on the following grounds:
1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The disputed domain name comprises the Complainant's trade marks ELECTROLUX and TRIBOLITE, and confusion is thereby created. It diverts Internet users looking for the Complainant's website to the website of the Respondent and those of the sponsored links. Anyone who sees the disputed domain name is bound to mistake it as being one of the Complainant's or otherwise associated with the Complainant. The addition of the top-level domain extension “.com” does not have any impact on the overall impression of the dominant portion of the domain name and is, therefore, irrelevant to the issue of whether there is confusing similarity with the Complainant's marks.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name, and this is supported by the following facts:
(a) The disputed domain name was registered on June 1, 2007, which date is subsequent to when the vast majority of the Complainant's ELECTROLUX and TRILOBITE trade marks were registered.
(b) There is no evidence that the Respondent has rights in marks or trade names corresponding to the domain name.
(c) There is no connection or relationship between the Complainant and the Respondent. Neither has the Complainant licensed or authorized the Respondent to use the trade marks ELECTROLUX or TRIBOLITE in a domain name or in any other connection.
(d) The Respondent is not using the domain name in connection with a bona fide offering of goods or services. Instead, the Respondent appears to have intentionally chosen a domain name based on registered trade marks in order to generate traffic to the website and thereby generate income through sponsored links.
3. The disputed domain name was registered and is being used in bad faith.
The ELECTROLUX is a well-established and reputed mark throughout the world. The considerable goodwill and value of the mark cannot have been unknown to the Respondent. The fact that the Respondent chose to combine the word ELECTROLUX with another trade mark of the Complainant is further indicative of the fact that the domain name was registered in bad faith. The use of the domain name has been in bad faith as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent did not reply to the Complainant's contentions.
In accordance with paragraph 4(a) of the Policy, the Complainant has to prove that each of the three following elements is satisfied:
1. The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The disputed domain name in this case consists of a combination of the registered marks of the Complainant. Whilst there is no evidence that the combination of the signs ELECTROLUX and TRIBOLITE has been registered or used as a trade mark, the Panel is of the view that the disputed domain name is undoubtedly confusingly similar to the Complainant's marks. This finding is consistent with the principle established in previous cases such as Saab Automobile AB et al. v. Joakim Nordberg, WIPO Case No. D2000-1761; Société des Produits Nestlé SA v. Stuart Cook, WIPO Case No. D2002-0118; A.P. Møller v. Web Society, WIPO Case No. D2000-0135. Further, the addition of the generic top level domain extension “.com” does not eliminate the confusion, and this principle has been well established in numerous UDRP decisions.
The Panel, therefore, finds that the first element in paragraph 4(a) of the Policy has been satisfied.
Under the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name (see paragraph 4(a)(ii) of the Policy). Paragraph 4(c) of the Policy provides that the Respondent can seek to establish its rights or legitimate interests in a domain name by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Respondent in this case did not respond to the Complaint and since there are no “exceptional circumstances” for the default, the Panel is entitled to draw “such inferences therefrom as it considers appropriate” (Rule 14(b)). Further, pursuant to Rule 14(a), the Panel has to make a finding based on what has been proffered by the Complainant.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Firstly, there is no evidence which would show that the Respondent has been known by the domain name or that it has acquired rights to the use of the trade marks ELECTROLUX and TRIBOLITE. Secondly, there is no evidence that the Complainant has authorized the Respondent to use the Complainant's trade marks or to register the domain name. Neither has the Respondent shown legitimate noncommercial or fair use of the domain name, but rather, the sponsored links on the Respondent's website indicate that the Respondent is, for commercial gain, misleadingly diverting consumers to its website and those of other service providers. The Panel also infers from the Respondent's failure to respond to the Complaint that the Respondent indeed would have been unable to assert any rights or legitimate interests in the domain name, or to substantiate any such assertion.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy has been established.
Paragraph 4(b) of the Policy identifies four circumstances which would constitute evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.
The Panel finds that there has been bad faith registration and use in this case:
1. It is not plausible that the Respondent did not know of the existence of the Complainant and of its rights in the trade marks ELECTROLUX and TRIBOLITE. In particular, the Complainant's ELECTROLUX trade mark is long established and widely known. In fact, the specific combination of these two words making up the domain name is such that the Panel has no difficulty in concluding that registration of the domain name was made in bad faith.
2. The Panel also finds the Respondent's use of the domain name on its website constitutes bad faith. The sponsored links mentioned hereinbefore create a likelihood of confusion with the Complainant's trade marks. Internet users would legitimately expect, when entering the disputed domain name on the Internet or visiting a website bearing the said domain name, to be directed to the Complainant's website. Alternatively, they would have a reasonable expectation that the website that they are directed to is in some way sponsored by, affiliated to, or endorsed by the Complainant. The circumstances of this case appear to fall within the example set out in paragraph 4(b)(iv) of the Policy.
The Panel, therefore, finds that paragraph 4(a)(iii) has been established.
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-trilobite.com> be transferred to the Complainant.
Dated: December 3, 2008