WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor
Case No. D2010-1277
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor of London, United Kingdom of Great Britain and Northern Ireland, and Sao Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <assistenciatecnicaelectrolux.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On July 30, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On August 5, 2010, OnlineNic, Inc. d/b/a China-Channel.com 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 August 6, 2010 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 August 6, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2010.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on September 6, 2010. 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.
The administrative proceedings were conducted in English for this was the language of the disputed domain name’s Registration Agreement.
4. Factual Background
The Complainant is a publicly traded company that was incorporated in Sweden in 1919, and is now among the world’s top five manufacturers of household appliances, selling more than 40 million products to customers in more than 150 markets every year, with revenues exceeding SEK 105 billion in 2008 and a workforce of over 50,000 employees.
To identify and distinguish in the global marketplace its home and professional appliances including refrigerators, dishwashers, washing machines, vacuum cleaners and cookers, the Complainant has for long time used the mark ELECTROLUX that is registered in more than 150 countries.
The Complainant maintains its corporate website at “www.electrolux.com” in addition to owning more than 700 domain names comprising the mark ELECTROLUX.
For its part, the Respondent registered the disputed domain name on March 29, 2010. The disputed domain name is currently connected to a website in Portuguese offering repair and maintenance services on ELECTROLUX products to the Complainant’s customers throughout Brazil, while also displaying sponsored links.
On June 7, 2010, the Complainant sent the Respondent a Cease and Desist Letter demanding immediate relinquishment of the disputed domain name in exchange for the Complainant reimbursing the Respondent the registration fee as well as any attaining transfer costs.
After two unanswered reminders of its Cease and Desist Letter, the Complainant brought the instant proceedings.
5. Parties’ Contentions
The Complainant puts forward the following factual and legal submissions:
i. Due to the extensive and long-term use of the Complainant’s mark in relation to home appliances, as well as tremendous advertising costs for the brand ELECTROLUX, the latter has acquired the status of well-known trademark as confirmed in previous Policy decisions;
ii. Pursuant to the Paris Convention and the TRIPS Agreement, the Complainant is entitled, as the owner of a well-known mark, to prevent use of the word “Electrolux” in connection with goods or services other than those for which the trademark is well-known;
iii. The disputed domain name is confusingly similar to the Complainant’s mark since the dominant part of the former is the word ELECTROLUX, which in turn is identical to the Complainant’s well-known trademark;
iv. It is a long-established precedent that confusing similarity is warranted where well-known trademarks are paired up with different kind of generic prefixes and suffixes;
v. Neither the prefix “assistenciatecnica” nor the gTLD suffix “.com” are relevant and will not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, which is instantly recognizable as a world famous mark;
vi. There is considerable risk that the public will perceive the disputed domain name as either owned or affiliated with the Complainant;
vii. By using the ELECTROLUX mark in a domain name, the Respondent has been trading on the goodwill associated with the Complainant’s well-known mark, which may result in dilution of the ELECTROLUX trademark;
viii. The Respondent has been granted no license or permission to use the ELECTROLUX trademark, nor has it been found to hold any trademark registration or trade name corresponding to the disputed domain name, which precludes the Complainant from asserting any rights in the mark ELECTROLUX established through common usage;
ix. According to UDRP case law, in the absence of any license or permission from the Complainant to use its ELECTROLUX trademark, it is clear that no actual or contemplated bona fide or legitimate use of the disputed domain name could be claimed by the Respondent;
x. The Respondent has intentionally registered the Complainant’s well-known trademark as a domain name in order to generate traffic and income through sponsored links, which neither constitutes a bona fide offering of goods or services, nor can it give rise to legitimate rights or interests under the Policy;
xi. As in many other UDRP cases involving the Complainant’s well-known mark, it is the considerable value and goodwill of the mark ELECTROLUX what most likely made the Respondent register the disputed domain name here;
xii. Considering the notoriety and widespread use of the ELECTROLUX mark, it is highly unlikely that the Respondent was not aware of the Complainant’s rights in its ELECTROLUX trademark at the time of registering the disputed domain name;
xiii. In line with several precedents under the Policy, the Respondent’s failure to respond to the Complainant’s Cease and Desist Letter should weigh in favor of a finding of bad faith;
xiv. Because the disputed domain name is connected to a website with sponsored links, the bad faith use scenario described in paragraph 4(b)(iv) of the Policy comes into play.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to make out its case, the Complainant must demonstrate that the following three conditions are met:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
The Respondent’s default
Even though the Respondent’s default does not dispense the Complainant with the burden of establishing the three elements required by paragraph 4(a) of the Policy (see section 4.6 of the WIPO Overview of WIPO Panels Views on Selected UDRP Questions (“WIPO Overview”)), the Panel may accept all reasonable and supported allegations and inferences made in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint) and also Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent’s default allows all reasonable inferences of fact in the allegations of the complainant to be deemed true).
A. Identical or Confusingly Similar
As noted by the overwhelming majority of UDRP panels, the question under paragraph 4(a) of the Policy is whether the disputed domain name is confusingly similar to the Complainant’s mark, not whether the website to which the domain name resolves will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (A complainant need not establish actual confusion because the test is objective, not subjective).
Accordingly, from a side-by-side comparison between the disputed domain name <assistenciatecnicaelectrolux.com> and the Complainant’s mark ELECTROLUX, it becomes noticeable that the Complainant’s mark is wholly incorporated into the disputed domain name.
The authority is legion under the Policy that a finding of confusing similarity is warranted where the disputed domain name embodies the complainant’s mark in its entirety despite the addition of descriptive terms, and even more so where as here, the Complainant’s mark is widely known. See LEGO Juris A/S v. Mohamed Ouattara / Integral Assets Ltd, WIPO Case No. D2009-0564 (finding the domain name <legoeducation.info> to be confusingly similar as it included in full a widely known trademark like LEGO) and V&S Vin&Sprit AB v. Coreswood Limited, WIPO Case No. D2006-0594 (finding that the domain name <absolut-escort.com> was confusingly similar to the famous mark ABSOLUT, which is made up of a word in Swedish language).
In the instant case, the descriptive phrase in Portuguese language “assistenciatecnica” -which translates into English as “technical assistance”- rather than doing away with confusing similarity, in fact strengthens the connection between the disputed domain name and the Complainant’s highly distinctive and instantly recognizable mark as the Complainant’s customers would likely utilize technical assistance in connection with their ELECTROLUX products. See AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777 (Given that the Complainant’s mark ELECTROLUX is associated with white goods, the Panel finds that the addition of the Turkish term for white goods “beyazesya” to the Complainant’s mark simply increases the confusion that Internet users would experience).
As a result, this Panel finds that the Complainant has met the first threshold requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant warrants and represents that the Respondent holds no trademark registration or trade name corresponding to the disputed domain name, and also that the Respondent is not authorized in any way to use the Complainant’s mark.
It is therefore submitted that in the absence of any license or permission from the Complainant to incorporate its ELECTROLUX trademark into the disputed domain name, no actual or contemplated bona fide or legitimate use of the disputed domain name could be claimed by the Respondent.
Given the worldwide use and notoriety of the brand ELECTROLUX in the home appliances industry, the Panel has no difficulty in accepting here the Complainant’s submission that the Respondent is precluded from claiming any rights established by common usage which are likely to give rise to legitimate interests in the disputed domain name.
Indeed, the evidence on record suggests that the Respondent is not making a legitimate noncommercial or fair use of <assistenciatecnicaelectrolux.com> without intent for commercial gain to misleadingly divert consumers, nor is it using the disputed domain name in connection with a bona fide offering of goods or services as the resolving website actually deflects Internet traffic intended for the Complainant to a website appealing to the Complainant’s customers in Brazil by offering them, in Portuguese, repairing and maintenance services over their ELECTROLUX appliances. See Aktiebolaget Electrolux v. Marius Viorel Bonea, WIPO Case No. DES2010-0020 (rejecting Respondent’s defense of descriptive use of the domain names <electrolux-servicio-tecnico.com.es> and <servicio-tecnico-electrolux.com.es> giving rise to legitimate interests thereof, on the grounds that Internet users may misleadingly believe that the disputed domain names, on their face, are either associated or were approved by the Complainant, which is not the case).
Based on the foregoing considerations and in view of the Respondent’s default, the Panel concludes that none of the defenses set forth in 4(c) of the Policy is available to the Respondent.
Accordingly, the Complainant has demonstrated the second limb of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that at the time of registering the disputed domain name, the Respondent could not have been unaware of the ELECTROLUX trademark, which is well-known throughout the world.
In this regard, the Panel notes that “Electrolux” is not only an inherently distinctive term but also a worldwide known trademark that has been the subject of unauthorized registration as domain name time and again. See AB Electrolux v. Andre Felipe Andrade, WIPO Case No. D2010-0837 (Electrolux is indeed a “household word” and mark with such widespread notoriety that it would be nearly impossible for the Respondent not to have known this).
Consequently, and in keeping with a consistent line of authority, the misappropriation of a well-known trademark as domain name by itself constitutes bad faith registration in light of the Policy. See The Caravan Club v. Mrgsale, NAF Claim No. 95314 (registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark reveals bad faith).
Moreover, the evidence put forward by the Complainant shows that the disputed domain name has been associated with a website that advertises, in Portuguese, after-sale services on ELECTROLUX goods to the Complainant’s customers in Brazil. With this, this Panel finds it is demonstrated that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to <assistenciatecnicaelectrolux.com>, by creating a likelihood of confusion with the Complainant’s ELECTROLUX mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and competing services, thus falling under the bad faith scenario described in paragraph 4(b)(iv) of the Policy.
Under the above circumstances, the Panel is satisfied that the Complainant has discharged its burden as required by paragraph 4(a)(iii) of the Policy.
For all 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 <assistenciatecnicaelectrolux.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Dated: September 21, 2010