WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aktiebolaget Electrolux v. Angel Rodrigo Ramos Pintado
Case No. D2010-1309
1. The Parties
The Complainant is Aktiebolaget Electrolux of Stockholm, Sweden, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Angel Rodrigo Ramos Pintado of Valencia, Spain.
2. The Domain Name and Registrar
The disputed domain name <serviciotecnicovalenciaelectrolux.com> (the “Domain Name”) is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2010. On August 4, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On August 5, 2010, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on August 24, 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”).
On August 6, 2010, the Center informed both parties, in English and Spanish, that the language of the Registration Agreement in this case was Spanish. The Complainant was instructed to file its Complaint in Spanish, to present an agreement of the parties to proceed in English, or to file a Request to proceed in English. The Respondent was instructed that it could comment on this matter and that if the Complainant requested to proceed in English, the Respondent could object to that Request. On August 9, 2010, the Complainant reiterated its request contained in the Complaint that English be the language of the proceedings. The Respondent did not submit any comments relating to this matter.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint affording the Respondent the option to file a response in either English or Spanish, and the proceedings commenced on August 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 1, 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 Panel, after balancing the principles of fairness to the parties and procedural expediency, concludes that it is appropriate to proceed in the English language in this case. Indeed, the Respondent did not oppose the Complainant’s request that the language of the proceedings be English and was afforded the option to file a response in either English or Spanish but chose to do neither.
4. Factual Background
The Complainant, Aktiebolaget Electrolux, is a Swedish joint stock company founded in 1901 and registered as a Swedish company in 1919. The Complainant is a world leading producer of appliances and equipment for kitchen and cleaning. The Complainant is a global company and runs its business all over the world, including in Spain.
The Complainant is a global leader in home appliances and appliances for professional use, selling more than 40 million products to customers in 150 countries every year.
The Complainant has registered the trademark ELECTROLUX as a word and figure mark in several classes in more than 150 countries all over the world. The trademark ELECTROLUX was registered long before the registration of the Domain Name. The Complainant has also registered the trademark ELECTROLUX as a domain name under almost 700 gTLDs and ccTLDs worldwide, among these; <electrolux.com>, <electrolux.net>, <electrolux.info> and <electrolux.org>.
The Complainant’s mark ELECTROLUX is protected as trademark in a multitude of countries worldwide, including:
ELECTROLUX, Unites States of America, Registration N° 2759369;
ELECTROLUX, Spain, Registration N° 58767;
ELECTROLUX, United Kingdom of Great Britain and Northern Ireland, Registration N° 478769;
ELECTROLUX, Chile, Registration N° 658496;
ELECTROLUX, Colombia, Registration N° 23307;
ELECTROLUX, Brazil, Registration N° 2625920;
ELECTROLUX, France, Registration N° 1254910;
ELECTROLUX, Bolivarian Republic of Venezuela, Registration N° 62202;
ELECTROLUX, Mexico, Registration N° 252042.
The domain name was registered on April 14, 2010.
5. Parties’ Contentions
The Complainant alleges that the Domain Name is confusingly similar to the trademark ELECTROLUX and that the fame of the trademark has been confirmed in previous UDRP decisions.
The Compainant asserts that the addition of a the prefix “serviciotecnicovalencia” is not relevant and will not have any impact on the overall impression of the dominant part of the name, ELECTROLUX, instantly recognizable as a world famous trademark.
The Compainant adds that the first part of the prefix “serviciotecnico” is rather incorporated into the Domain Name to attract visitors and give the impression that the Domain Name is connected to one of the Complainant’s official repair centers. The Complainant alleges that the effect of incorporating a generic term to a trademark was discussed in Vodafone Group, Plc v. Phone-Express, WIPO Case No. D2004-0505 where the panel accepted the complainant’s allegations that the addition of a generic term to a trade or service mark is legally inconsequential and does not prevent a finding of confusing similarity under the Policy.
The Complainant asserts that the Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the Domain Name. The Complainant adds that no license or authorization of any other kind to use the trademark, has been given by the Complainant to the Respondent.
The Complainant alleges that the Respondent is today not using the Domain Name in connection with a bona fide offering of goods or services.
The Complainant asserts that the trademark ELECTROLUX belonging to the Complainant has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world.
The Complainant asserts that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant asserts that since the Respondent uses the brand and logotype of ELECTROLUX on the website of his company, it is obvious that he is well aware of the trademark ELECTROLUX.
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, a 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 interests in respect of the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
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
The Panel finds that the Complainant has established trademark rights in ELECTROLUX as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the Domain Name <serviciotecnicovalenciaelectrolux.com> is confusingly similar to the Complainant's trademark ELECTROLUX. The trademark ELECTROLUX is clearly the dominant element of the Domain Name. The Panel has had little difficulty in finding that the Domain Name is confusingly similar to the trademark ELECTROLUX, as the additional elements are, in a trademark sense, descriptive.
There is plenty as authority under the Policy to conclude that confusing similarity is warranted where the 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 and V&S Vin&Sprit AB v. Coreswood Limited, WIPO Case No. D2006-0594.
In the instant case, the descriptive phrase in Spanish language “serviciotecnico” - which translates into English as “technical service” strengthens the connection between the 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 and Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277.
In addition, the use of a geographic term like “Valencia” (a city of Spain) in the Domain Name may lead many Internet users to assume that the Domain Name has been registered by the Complainant or an affiliate of the Complainant to promote its business in Spain (Société des Produits Nestlé SA v. Peter Carrington, c/o Party Night Inc., WIPO Case No. D2002-0954).
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 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 Domain Name, no actual or contemplated bona fide or legitimate use of the Domain Name could be claimed by the Respondent.
Given the worldwide use and notoriety of the trademark 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 Domain Name (See Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277).
Indeed, the evidence on record suggests that the Respondent is not making a legitimate noncommercial or fair use of <serviciotecnicovalenciaelectrolux.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 Valencia, Spain by offering them, in Spanish language, repairing and maintenance services over their Electrolux appliances. See Aktiebolaget Electrolux v. Marius Viorel Bonea, WIPO Case No. DES2010-0020 and Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277.
The Panel further notes that the Respondent’s website operating at the Domain Name does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus conveying the false impression that the Respondent is an authorized repair center for the Complainant’s products.
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 agrees with previous decisions where it was stated 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 and Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277.
Consequently, and in keeping with a consistent line of authority, the misappropriation of a well-known trademark as domain name by itself may constitute an inference of 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 Domain Name has been associated with a website that advertises, in Spanish language, after-sale services on Electrolux goods to the Complainant’s customers in Valencia, Spain, conveying the false impression that the Respondent is an official repair center of the Complainant. With this, this Panel finds it is demonstrated that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to <serviciotecnicovalenciaelectrolux.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 domain name <serviciotecnicovalenciaelectrolux.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: October 15, 2010