WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Rodney A. Hamilton
Case No. D2010-1298
1. The Parties
Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
Respondent is Rodney A. Hamilton of Los Angeles, California, United States of America.
2. The Domain Names and Registrar
The Domain Names <electroluxparts.net>, <electroluxparts.org>, <electroluxproduct.com>, <electroluxproducts.net>, and <electrolux1.com> are registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2010. On August 3, 2010, the Center transmitted by email to Register.com a request for registrar verification in connection with the Domain Names. On August 3, 2010, Register.com transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on August 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 27, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on September 7, 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.
4. Factual Background
Complainant is a world leading producer of appliances and equipment for kitchen and cleaning and one of the largest producers in the world of similar equipment for professional users. Complainant is the owner of trademark registrations consisting in the sign ELECTROLUX covering more than 150 countries in the world, including Community trademark No. 77925, registered on September 16, 1998, in classes 3, 7, 8, 9, 11, 16, 20, 21, 35 and 37, and United States trademark No. 0908002, registered on February 16, 1971, in class 21.
Complainant is also the owner of a number of domain names identical to or containing the sign ELECTORLUX, including <electrolux.com>, <electrolux.net>, <electrolux.info> and <electrolux.org> registered several years before the registration of the Domain Names by Respondent.
As confirmed by Register.com and the publicly available WhoIs, Respondent registered the Domain Names <electroluxparts.net>, <electroluxproduct.com>, <electroluxproducts.net>, and <electrolux1.com> on March 1, 2010, and <electroluxparts.org> on February 28, 2010.
5. Parties’ Contentions
Complainant points out that Aktiebolaget Electrolux is a Swedish joint stock company which was founded in 1901 and is nowadays a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers, in 150 countries, every year. Complainant states that, in view of the extensive and long-term use of ELECTROLUX trademark and of high costs incurred in connection with the production, distribution and advertising with respect to Complainant’s products and services, ELECTROLUX acquired the status of well-known trademark.
Complainant contends that the Domain Names are confusingly similar to trademarks and domain names in which Complainant has rights as they reproduce the well-known trademark ELECTROLUX in its entirety, with the mere addition of generic terms which does not prevent a finding of confusing similarity. Complainant emphasizes that Respondent exploits the goodwill and the image of ELECTROLUX trademark, which may result in dilution and other damage for Complainant’s trademark.
With reference to rights or legitimate interests in respect of the Domain Names, Complainant states that Respondent is not the owner of any registered trademarks or trade names corresponding to the Domain Names and that no license or authorization to use the trademark has been granted by Complainant to Respondent. Complainant also states that Respondent may not claim any rights established by common usage in respect of the Domain Names, since Respondent has not used the Doman Names in any way that would give him any legitimate rights in the name.
Complainant highlights that Respondent is not using the Domain Names in connection with a bona fide offering of goods or services since the Domain Name <electroluxproducts.net> is currently pointing to a web page displaying sponsored links, also related to ELECTROLUX trademark, and the other Domain Names are passively held.
Complainant concludes, with reference to the issue of the rights or legitimate interests, that Respondent has no rights or legitimate interests in respect of the Domain Names.
With reference to the circumstances evidencing bad faith, Complainant highlights that ELECTROLUX is a well-known trademark, with a substantial and widespread reputation throughout the world, and that Respondent registered the Domain Names to profit of the considerable value and goodwill of the trademark ELECTROLUX.
Complainant informs the Panel that a cease and desist letter was sent to Respondent on June 7, 2010, requesting a voluntary transfer of the Domain Names and offering compensation for the expenses of registration and transfer fees (not exceeding out of pocket expenses). Respondent replied to this letter stating that the Domain Names did not infringe on Complainant’s rights. Complainant, thus, informed Respondent of earlier successful UDRP cases based on ELECTROLUX trademark, and Respondent replied stating that the Domain Names were meant for representing “Electrol-UX products”, but did not provide any trademark registrations nor evidence supporting such statement.
As a circumstance evidencing bad faith in the use of the Domain Names, Complainant highlights that <electroluxproducts.net> is redirected to a web site displaying sponsored links, while the other Domain Names are passively held. Complainant contends that Respondent is, therefore, using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the web sites.
Complainant, therefore, concludes that the Domain Names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Domain Names registered by Respondent are identical or confusingly similar to a trademark or a service in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Domain Names are confusingly similar to the trademark ELECTROLUX owned by Complainant. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature. See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
Therefore, the mere addition of the words “parts”, “product(s)” and of the number “1” does not preclude a finding of confusing similarity between the Domain Names and Complainant’s trademark.
More in particular, the use of the words “parts” and “product(s)” is apt to increase the likelihood of confusion with Complainant’s trademark, since users may believe that the Domain Names are used by Complainant to provide its clients with ELECTROLUX parts and products.
See, along these lines, Stanworth Development Limited v. Michael Gordon, WIPO Case No. D2007-1227, where the panel found that “the Domain Name <riverbellecasiino.com> is almost identical, and is confusingly similar to Complainant’s mark, RIVER BELLE, adding only a misspelling of the generic term “casino,” which describes Complainant’s services. The result is a Domain Name that is distinctly suggestive of Complainant’s “casino” services, linked with Complainant’s RIVER BELLE mark.”
In view of the above, the Panel finds that Complainant has proven that the Domain Names are confusingly similar to the trademarks in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well-established under the UDRP that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of a domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that Complainant show a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names, in order to shift the burden of proof on Respondent. If Respondent fails to demonstrate rights or legitimate interests in the Domain Names in accordance with paragraph 4(c) of the Policy or on any other basis, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, by not submitting a Response, Respondent has not rebutted Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
Moreover, some panels have stated that, when a respondent does not avail himself of his right to respond to a complaint, it can be a further indication appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain names (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between Respondent and Complainant. Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant’s trademarks.
Furthermore, there is no indication before the Panel that Respondent is commonly known by the Domain Names, has made preparations to use the Domain Names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Names.
The Panel notes that the Domain Name <electroluxproducts.net> was at the time of filing the Complaint, and still is, redirected to a sponsored pay-per-click website. The Panel finds that the use of this Domain Name merely for a pay-per-click page which directs visitors to various third party commercial websites does not constitute a legitimate, noncommercial use of the Domain Name under the Policy, as found, among others, in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
Along the same lines were the decisions Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory [...]; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the panel stated that “[…] although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. [The Domain Name <bilfinger.com>] is only used as a link to a generic directory […] . There is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
See also inter alia Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the Domain Name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the Domain Name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
At the time the Complaint was filed, the Domain Names <electroluxparts.net>, <electroluxproduct.com>, <electrolux1.com> and <electroluxparts.org> were passively held. In view of Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where the panel found that “Absent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute “legitimate non-commercial or fair use. See Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195 (October 26, 2000) (noting that respondent was a passive holder of the Domain Name <crateandbarrel.org> in that “the Domain Name does not resolve to a site” and ruling that, “[g]iven that the Domain Name has been registered since mid-March, 2000, it is fair to infer that the Respondent has not made, nor taken any preparatory steps to make,” any legitimate use of the Domain Name); Netcentives, Inc. v. B.W. Brody Co., WIPO Case No. D2000-0672 (September 29, 2000) (finding that the complainant made the requisite showing under paragraph 4(a)(ii) where complainant argued that the Domain Name at issue had no value to the respondent apart from the goodwill and reputation associated with complainant’s mark).”
Thus, in light of the above, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel notes that, in light of the long use of the trademark ELECTROLUX in connection with its appliances for kitchen and cleaning and the amount of advertising and sales of Complainant’s products worldwide, the Respondent ought to be aware of Complainant’s trademark ELECTROLUX when it registered the Domain Names.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks, as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103. As stated, inter alia, in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868, “it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel finds paragraph 4(b)(ii) of the Policy applicable in this case, since Respondent has registered the Domain Names in order to prevent Complainant from using its trademark and has clearly engaged in a pattern of such conduct, since it has registered five domain names incorporating the registered trademark owned by Complainant. In fact, according to the consensus view of panels, a “pattern of conduct” as required in paragraph 4(b)(ii) of the Policy, typically involves multiple domain names directed against multiple complainants, but may involve multiple domain names directed against a single complainant (see, among others, Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 and Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602).
As described in the paragraphs above, the Domain Name <electroluxproducts.net> is pointed to a web page on which users can find several sponsored links redirecting to other commercial web sites. The Panel finds that, at least, Respondent is earning revenues from the pay-per-click links published on the web site corresponding to the Domain Name. Therefore, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its web site, according to paragraph 4(b)(iv) of the Policy (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435 and Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).
With reference to the issue of the non use of the other Domain Names by Respondent at the time the Complaint was filed, the Panel finds that given the circumstances of this case “passive holding” infers bad faith. As also established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response in this case; therefore, as stated in Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the Domain Names were registered and are being used in bad faith.
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 Names <electroluxparts.net>, <electroluxparts.org>, <electroluxproduct.com>, <electroluxproducts.net> and <electrolux1.com> be transferred to Complainant.
Dated: September 21, 2010